*This article is for non-practitioners seeking to familiarize themselves with the basics of patent types and patentability requirements. This article is Part II of a four part series. Parts III and IV will follow in biweekly installments, and will address Design Patents and Plant Patents, respectively.

Utility patents are the most common type of patent, and they're what laypersons are usually referring to when using the word "patent." For an invention to be patented, an item must fulfill three conditions: 1) it must possess utility, 2) it must be novel, and 3) it must be non-obvious. Thomas & Betts v. Panduit Corp. 138 F.3d 277, 283 (1998); see generally Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974). Those inventions meeting such conditions are granted patent protection, which gives the inventor a twenty year monopoly on the manufacture or exploitation of the device. Id.

The Utility Requirement:

Of the three requirements of patentability, the utility requirement is the lowest bar and is easily met. For the most part, utility is used to prevent the patenting of inoperative devices such as perpetual motion machines (i.e.: a machine that continues to move indefinitely without being driven or aided by an external source of energy). In making a rejection based on lack of utility, the examiner will, whenever possible, provide documentary evidence to support the finding. MPEP Section 2107(II)(C). If documentary evidence is not available, the examiner will explain with specificity the scientific basis for his or her factual conclusions. Id.

Specifically, the USPTO's Manuel of Patent Examining Procedure (the "MPEP") requires that a patent application express a specific and substantial utility. MPEP Section 2107(II)(B)(1)(i). This MPEP excludes "throw-away," "insubstantial," or "nonspecific" utilities. For instance, claiming that a complex invention is useful as landfill will not satisfy the utility requirement. Id. However, if the applicant asserts that the claimed invention is useful for any particular practical purpose (i.e.: that the claimed invention has a "specific and substantial utility"), and the assertion would be considered credible by a person of ordinary skill in the art, the examiner must find that the utility requirement has been met. MPEP Section 2107(II)(B)(1). Furthermore, even in the absence of such an assertion, if at any time during the examination it becomes readily apparent that the claimed invention has a well-established utility, the examiner must find that the utility requirement has been met. MPEP Section 2107(II)(A)(3). An invention has a well-established utility if (i) a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (e.g., properties or applications of a product or process), and (ii) the utility is specific, substantial, and credible. Id.

The Atomic Energy Act of 1954 explicitly excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon. 42 U.S.C. Section 2181(a).

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