Patents utility statement

Applicants and their attorneys prosecuting chemical and pharmaceutical applications will find the way less arduous and the likelihood of ultimate success greatly increased if they are able to build adequate records so as to obviate Section 101 and 112 issues. A definitive statement of the use (the patentable utility) of the invention, where not obvious, should be included in the specification. Uses for which only meager support can be mustered should not be included. The intended use having been carefully defined, there should be an adequate detailed disclosure of how to use the product, method, or process of the invention. 

Check patent applications to ensure use of utility statements that can be supported by early tests. Don t expect a 30-second, one-time test to support an application that states the purpose of the invention is to provide a longer-lived, more stable and durable material (5). 

This is known as the Langer test for utility and is based on the court statement As a matter of Patent Office practice, a specification which contains a disclosure of utility which corresponds in scope to the subject matter sought to be patented must be taken as sufficient to satisfy the utility requirement of 101 for die entire claimed subject matter unless there is a reason for one skilled in the art to question the objective truth of the statement of utility or its scope (emphasis in the original.) In re Langer, 503 F.2d 1380, 1391 (CCPA 1974). 

There are numerous decisions that hold product claims to chemical compounds as compositions of matter to be valid within the meaning of the patent statutes. With few exceptions there are no specific references to the rule that products of nature are unpatentable. The statements in the decisions are in sharp contrast with the thought that the rule was at all applicable. For example in the Kuehmsted case (tf), the pure chemical compound known generally as aspirin was held to be patentable because of its new utility. The court held that whatever may have been its antecedents chemically, aspirin in pure form was a new thing. The formerly known crude material was legally a different material in that it had no utility as a medicinal. The court held that aspirin was an article of manufacture within the meaning of the patent law. 

The use in this publication of registered names, trademarks, etc., and reference to patents or utility models, does not imply, even in the absence of a specific statement, that such names or information are exempt from the relevant protective laws and regulations and, therefore, free for general use, nor does mention of trade names of commercial products constitute endorsement or recommendation for use. 

An examiner demands a statement of relevant, credible utility in a patent application directed toward chemical compounds as drugs. The compounds claimed should demonstrate some ability—as indirect as may be—to detect, monitor, prevent, treat, or cure disease. That they can stop doors, weigh papers, or balance boats is irrelevant. However, the standard of acceptable evidence is minimal, a point that eludes some inventors for years. 

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