Volume 98 - No. 3 Minnesota Law Review

Making Patents Useful

It is axiomatic in patent law that an invention must be useful. The utility requirement has been a part of the statutory scheme since the Patent Act of 1790. But what does it mean to be useful? The abstract and imprecise nature of the term combined with the lack of objective criteria for assessing it make utility the most malleable patentability requirement. As the invention landscape has evolved over time, the Patent Office and the courts have exploited this malleability to create technologically specific utility standards—de minimis for some inventions, but considerably more stringent for others. This has led to a bias against granting patents for entire categories of inventions. But this bias has come at a price. The extant utility requirement disconnects patent law from many of the technical communities that it serves and frustrates fundamental goals of the patent system.

This Article calls for the elimination of a stand-alone utility requirement. It proposes a new theory of usefulness based on the normative premise that patent law should be less concerned with useful inventions and more concerned with ensuring that the public gets a useful disclosure. This objective is best obtained not through utility, but rather through compliance with enablement and nonobviousness—patentability requirements rooted in objective, technical factors. This is the first Article to both harshly criticize utility and—by seeking to eliminate it—urge a radical rethinking of what should be included in (or removed from) the patentability calculus. It will hopefully inform the ongoing debate over patent reform and spark further discussions about the extent to which basic patent doctrines actually promote technological progress.

:: View PDF

De Novo

  • Dan’s Flaw

    DAN’S [F]LAW: STATUTORY FAILURE TO ENFORCE ETHICAL BEHAVIOR IN CLINICAL DRUG TRIALS Noah Lewellen* I. INTRODUCTION Paul, a sophomore at the University of Minnesota, bursts into a lecture hall, loudly claims to see monsters sitting in the seats, and offers his services in slaying them. The police are called, and Paul is restrained and delivered […]

  • Case Comment: Bhogaita v. Altamonte

    EVERY DOG CAN HAVE HIS DAY IN COURT: THE USE OF ANIMALS AS DEMONSTRATIVE EXHIBITS Kyle R. Kroll, Volume 100, Online Managing Editor In Bhogaita v. Altamonte, the Eleventh Circuit recently decided whether to allow a dog in the courtroom as a demonstrative exhibit.[1] Although the case presented many serious issues regarding the Fair Housing […]

  • Revisiting Water Bankruptcy

    REVISITING WATER BANKRUPTCY IN CALIFORNIA’S FOURTH YEAR OF DROUGHT Olivia Moe, Volume 100, Managing Editor This spring, as “extreme” to “exceptional” drought stretched across most of California—indicating that a four-year streak of drought was not about to resolve itself[1]—Governor Jerry Brown issued an unprecedented order to reduce potable urban water usage by twenty-five percent.[2] In […]