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Utility §101 Outline

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This is an extract of our Utility §101 document, which we sell as part of our Patent Law Outlines collection written by the top tier of Harvard Law School students.

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Utility (SS 101) If you haven't shown utility in SS 101, ALSO fails SS 112 under disclosure because haven't disclosed a useful invention. Utility -- SS 101 - "New and useful"
? Dovetails with SS 112 Four different components to the Utility Requirement
? Beneficial Utility: Not Illegal in all 50 States. Ex/ Gambling technology used to be illegal except in Vegas. Can't patent nuclear technology. Can't patent human beings (AIA) --- stem cells?
?????"Practical Utility" o Specific Utility: Have a specific use for the invention
? How specific does it need to be? "Anti-tumor properties" not specific enough, but listing a specific cancer would be.
? Not enough to give a fake/throw-away utility. No paperweights. Basically, are you telling the truth?
? Fisher: If the asserted utility can be true for a vast class of inventions, not specific enough.
? Important in biotech/pharma, don't really know what they'll be good for necessarily. o Credible Utility:
? Do not generally have to prove a certain use. Burden of Proof on the PTO to show that the invention won't work for a certain purpose.
? BUT Life Sciences/Drugs/Diagnostics/etc.: Patentees need to provide some evidence, depending on the invention. Experiments: in vitro or in vivo. Not necessary to provide human experiments. o Substantial Utility:
? Invention needs to have immediate real-world benefits to the public.
? Cases that DON'T meet it: An invention that has no use but is the subject of an inquiry to find its use; a process for creating something that has no use as of yet;
? Research Tools are patentable; Objects of Research are not. (ESTs a weird in between, but not patentable because a very specific research tool, don't know what that thing is doing.)
? Fuzzy in the research tool/research intermediary space (Fisher)
** Utility requirement is about when you grant the patent
? Economic debates among academics come down to the vision of when patents should be granted. Beneficial Utility Need not be the BEST, just useful. Inventions that are UNIVERSALLY illegal and/or harmful are likely to fail usefulness showings.
? Lowell (D. Mass 1817) o Invention: New kind of pump

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