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By J.D. Houvener
Patent Attorney and Founder

There is good news for anyone assessing the patent utility requirement as they work on protecting their IP. It’s actually harder to create something that doesn’t meet the standard. Utility simply means that your invention has to be useful—but that leaves a lot of room for flexibility.

Just as one man’s trash is another’s treasure, one person’s definition of “useful” could be a lot different from another. If it serves a purpose, no matter how silly, it’s an item that could be considered useful; even if not everyone agrees it’s necessary. That’s why most inventions easily meet this criterion when it comes time for a patent application.

Meeting the Patent Utility Requirement

When it comes to the patent utility requirement, the US Patent and Trademark Office has established guidelines for examiner assessment. While the section that covers it is extensive and challenging to read, it really breaks down to looking at three things in an invention: patent specificity, credibility, and substantiality.

Specific Credible Substantial
The patent has to have an application in solving a specific issue. It needs to connect to a subject matter, solve a problem or provide a purpose.

You couldn’t, for example, invent a new material and say, “this is for everyone who uses material”. You have to tie that need to a specific purpose.

You’re not required to submit a prototype for a patent, but you do have to prove your design is possible. The examiner must believe your idea can be created using modern technology.

So, you couldn’t patent an invisibility cloak that bends the laws of physics, for example.

This means that the invention has some sort of application in real-world use. This must be obvious and cannot require further research or justification to prove some sort of practical application.

As in the material example, you couldn’t create material that only you need with no usefulness to others. In that case, you’d be better off calling it a trade secret.

How to Prove Patent Utility

One good thing about patent utility is, if your application is denied for it, the burden of proof is on the patent office to prove your idea lacks usefulness. However, if the language on your application doesn’t adequately explain why your product is worthwhile, that’s what the US Patent and Trademark Office will use to defend its case. Make sure to prove utility from the get-go to avoid this issue.

The first thing to focus on is your summary or abstract. In this section, you should briefly state the purpose of your patent, who it is designed for, and how it is used. This information needs to be reiterated in far more detail in the description. If you complete it correctly, you should be able to prove both the specific and substantial components of patent utility.

Proving credibility is a bit more challenging, especially if your design is complex. Here, you’re trying to show that your idea is not purely theoretical. It is a possible, functional invention. The most obvious way to provide this is to include a prototype. However, prototype creation isn’t cheap, and you may not have the funds to invest in it without a guarantee of patent success. In that case, you can rely on invention blueprints or drawings.

In this, you create a detailed diagram that shows your product, its various parts, and how these parts cause the device to function. If the drawings are detailed, this will prove your idea is credible. While it’s not always required to have drawings in a patent application, it’s highly advisable.

The only exception to the rule requiring utility is for design patent applications. Design patents, unlike utility patents, rely solely on drawings to claim the invention. The invention need not be functionally beneficial. In other words, design patents only protect what is covered in the 2D drawings provided. The drawings provide the examiner with the shape, ornamentation, proportionality, and appearance needed to determine novelty and non-obviousness.

Overall, it’s relatively easy to meet the patent utility requirement as long as you are clear in your explanation. It is very likely your idea does meet the requirement; it’s just a matter of putting why into words. For that, you should consider working with an experienced patent attorney.

Bold Patents can help you create an application that will prove the patent utility requirement during the process. Contact us to learn more or call 800-849-1913 to schedule a consultation.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/