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ArtI.S8.C8.4.1 Inventorship and Utility

Article I, Section 8, Clause 8:

[The Congress shall have Power . . . ] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

To be patentable, an invention must be new, nonobvious, useful, and directed at patent-eligible subject matter.1 Each of these four requirements are long-standing features of patent law, rooted in the Intellectual Property (IP) Clause.2

First, because only “Inventors” may secure patent rights under the IP Clause, a patent application cannot claim exclusive rights to an alleged discovery that is not novel. “Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available” to the public.3 In other words, if every element of the claimed invention is already disclosed in the “prior art” —that is, information known or available to the public—then the alleged inventor “has added nothing to the total stock of knowledge,” and no valid patent may issue to the individual.4

Second, a patentable invention, even if novel in the narrowest sense, cannot be obvious in light of the prior art. In 1851, Hotchkiss v. Greenwood articulated a standard of “invention” that required more than just novelty.5 The patent in Hotchkiss claimed an improvement in making door knobs, where the only new element was “the substitution of a knob of a different material” over the material previously employed in making the knob.6 The Supreme Court held this improvement too minor to be patentable; unless the discovery required “more ingenuity and skill” than that “possessed by an ordinary mechanic,” it was not the work of an inventor.7

In Graham v. John Deere Co. of Kansas City, the Court concluded that Congress had codified the holding of Hotchkiss and its progeny in the 1952 Patent Act’s “nonobviousness” requirement for patentability.8 Under this test, “the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.” 9 When an invention does no more than combine “familiar elements according to known methods,” yielding only “predictable results,” it is likely to be obvious.10

In addition to being novel and nonobvious, an invention must be useful to be patentable—that is, it must have a specific and substantial utility.11 The utility requirement derives from the IP Clause’s command that patent law serve to “promote the Progress of . . . useful Arts.” 12 Justice Joseph Story, in an oft-quoted 1817 decision, interpreted the utility requirement narrowly, stating that to be “useful” an invention need only “not be frivolous or injurious to the well-being, good policy, or sound morals of society.” 13 In 1966, the Supreme Court moved away from this standard in Brenner v. Manson, holding that the constitutional purpose of patent law requires a “benefit derived by the public from an invention with substantial utility,” where the “specific benefit exists in currently available form.” 14 Thus, in Brenner itself, a novel chemical process yielding a compound with no known use other than as “an object of scientific research” was not patentable because it lacked the requisite utility.15

35 U.S.C. §§ 101103. This essay focuses on utility patents, but protection for plants and ornamental design are also available under federal law with generally similar requirements. See 35 U.S.C. §§ 161164, 171173. back
See Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 5–6 (1966) (novelty and nonobviousness requirement); Brenner v. Manson, 383 U.S. 519, 534–35 (1966) (utility requirement); Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) (patent-eligible subject matter); Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248, 267 (1851) (nonobviousness requirement); see also Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 155 (1950) (Douglas, J., concurring) ( “The standard of patentability is a constitutional standard . . . .” ). Because these requirements (with the exception of nonobviousness) have been continuously part of patent law since 1790, it is difficult in some cases to determine the extent to which patentability standards articulated by the Supreme Court are required by the IP Clause, or are merely a construction of the patent statute. back
Graham, 383 U.S. at 6. back
Great Atl. & Pac. Tea Co., 340 U.S. at 153; see also 35 U.S.C. § 102. back
Hotchkiss, 52 U.S. (11 How.) at 265–67. back
Id. at 266. back
Id. at 266–67. back
Graham, 383 U.S. at 17. back
Id. In addition, such “secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” Id. at 17–18. The obviousness determination is an “expansive and flexible” approach that cannot be reduced to narrow, rigid tests. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–19 (2007). back
KSR, 550 U.S. at 416. back
Brenner v. Manson, 383 U.S. 519, 534–35 (1966); In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005). back
Stiftung v. Renishaw PLC, 945 F.2d 1173, 1180 (Fed. Cir. 1991) (citing Brenner, 383 U.S. at 528–29); see also Graham, 383 U.S. at 5–6. back
Lowell v. Lewis, 15 F. Cas. 1018, 1019 (C.C.D. Mass. 1817) (Story, J.). Whether the utility requirement prohibits patents on inventions that serve “immoral or illegal purposes” in modern times is an open question. See Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364, 1366–67 (Fed. Cir. 1999) ( “[T]he principle that inventions are invalid if they are principally designed to serve immoral or illegal purposes has not been applied broadly in recent years.” ). back
Brenner, 383 U.S. at 534–35. back
Id. at 535–36. Brenner did not define the terms “specific” and “substantial.” Subsequent lower court decisions have equated “substantial” with “practical utility,” that is, the invention must have some “significant and presently available benefit to the public.” In re Fisher, 421 F.3d at 1371. “Specific” utility requires only that the asserted use “is not so vague as to be meaningless.” Id. at 1372. back