Stuart Freen is a JD candidate at Osgoode Hall Law School.

It is no secret that there have been plenty of absurd patents issued over the years. The gerbil shirt, anyone? Of the three main requirements for patentability, utility definitely tends to have the lowest bar (novelty and non-obviousness being the others). Particularly in Canada, the standard for utility is very low. An examiner basically just has to be convinced that an invention will actually work as disclosed; whether anyone will actually want to use it is irrelevant. Given the high proportion of patents that are issued every year but are never actually commercialized, it is tempting to think that perhaps the utility rule needs to be rethought.  Professor Michael Risch has done just that in his latest paper Reinventing Usefulness, forthcoming in the Brigham Young University Law Review, 2010.

Prof. Risch proposes a radical shift to the U.S. utility requirement: rather than merely requiring that a patent have some (any) practical usefulness, he suggests that patentees should be required to demonstrate “commercial usefulness”. In other words, inventors would have to show a) that there exists an actual real market for their invention, and b) that the invention could be produced at a commercially viable price. Prof. Risch argues that a commercial usefulness requirement would cut down on the number of patents which, though they technically “work”, have no actual value.

The paper is American, but that should not deter Canadian readers. The patent regimes in the two countries are similar enough that the concepts are familiar, and besides, knowledge of U.S. patent laws is practically a must for Canadian patent practitioners and academics.

One of the more interesting sections of Reinventing Usefulness deals with demystifying the utility doctrine by segmenting it into its core “conceptions” as applied over the years. At its simplest, utility is about operable usefulness. Operable usefulness simply asks of an invention: Will it function as disclosed? The converse of this is that an invention must not be impossible, purely speculative or incompletely disclosed.

Perhaps more substantial is the practical usefulness requirement. Announced by the SCOTUS in Brenner v. Manson, 383 U.S. 519 (1966), the practical usefulness prong requires that an invention be directed towards a concrete purpose. It rules out inventions such as those in basic science which have no known applied purpose, such as certain gene sequences.

Finally, there is the commercial usefulness prong which asks: Does the invention have any actual value to anyone? Prof. Risch argues that the commercial usefulness prong has actually been in use off-and-on for centuries. Bans on immoral inventions, for instance, were one manifestation of this rule. He suggests that courts (and everyone else) have conflated the three conceptions of usefulness, leading to inconsistent judgments and legislation.

Prof. Risch analyzes the pros and cons of relaxing or tightening the utility standard with a view toward improving the commercialization rate of patents. He takes some time to note some of the specific problems associated with pharmaceutical research and the basic sciences, where practically useless compounds can be highly commercially valuable pursuant to the development of subsequent compounds.

Ultimately, one is struck with the feeling that Prof. Risch may have come up with a solution for a non-problem. While his solution of instituting a commercial utility requirement does have some intuitive appeal, it would not actually do much to help satisfy some of the major issues with utility he identifies. Adding a new commercial utility prong would not, for instance, have any impact on the patentability of chemical compounds with unknown utility. What it would do is cut down on the number of patents for products which technically work but which no one would actually buy, such as the gerbil shirt. While such patents may be unnecessary and exhaust valuable patent examiner resources, they are hardly the biggest problem in the patent system. Revisiting Usefulness provides a thoughtful and compelling look at the utility doctrine and the commercialization issues surrounding it, but in the end it does not quite resolve the big questions it raises.