Unit 1, Patents, Part 4

2.3 Industrial Application, Utility

For an invention to be eligible for patent protection, it must demonstrate usefulness. This requirement is referred to as “utility” in some patent systems and “industrial application” in others. While often used interchangeably, there are subtle distinctions between these terms.

Utility: Performing a Function

The core of the utility requirement is that the invention must perform the function for which it is intended and yield at least a minimal beneficial result. This principle stems from the rationale that granting exclusive rights (patents) should be balanced by a tangible benefit to society.

• No Need for Superiority: An invention does not need to be better than existing products or processes to satisfy the utility requirement. It simply needs to work as intended.
• Exclusion of the Impossible: Inventions that clearly violate well-established laws of physics, such as perpetual motion machines, are not patentable because they cannot perform their alleged functions.

Industrial Application: Usefulness in Practice

In jurisdictions requiring “industrial application,” the applicant must demonstrate that the invention can be made or used in any kind of industry. This definition of “industry” is broad and encompasses various fields, including:

• Agriculture
• Fishery
• Services
• Any activity of a “technical character” (i.e., relating to the useful or practical arts, rather than the aesthetic arts)

It is important to understand that “industry” in this context does not necessarily imply the use of machinery or the manufacture of a physical article. For example, a process for dispersing fog or converting energy from one form to another may satisfy the industrial application requirement.

• Perpetual Motion Machines Excluded: Similar to the utility requirement, the industrial application standard also excludes inventions such as perpetual motion machines, as they cannot be practically applied.

Commercial Viability Not Required:

Crucially, an applicant is generally not required to demonstrate that the invention is commercially viable to meet the utility or industrial applicability requirement. The focus is on technical feasibility and potential for practical use, not on market success.

Example: Platinum in Plumbing

Consider an inventor who discovers that platinum has a unique property: it prevents water from freezing. The inventor then devises a process for lining water pipes with platinum, thereby preventing them from bursting in cold weather.

• Satisfies Utility/Industrial Applicability: Even if this process is commercially impractical, it would still meet the utility/industrial applicability requirement. The invention performs its intended function (preventing freezing) and provides a practical benefit (protecting pipes).

Professional Tip: The "Useful" Question

When evaluating research results for patentability, always ask the inventor: “Are the results useful?” If the results solve a practical problem, no matter how small, this warrants further analysis of the other patentability requirements.

Challenges in Specific Fields

While the utility/industrial applicability requirement is often easily met for mechanical devices and processes, it can present greater challenges in fields such as chemistry and biotechnology.

• Life Sciences: In the life sciences, an inventor may discover a new compound or a process for producing it but may not immediately identify a specific practical application. Courts in some jurisdictions have accepted sufficient utility if:

  • A chemical compound demonstrates an effect in laboratory animals (e.g., reducing a tumor)
  • The compound serves as an intermediate in the production of other compounds with known utility

• DNA Fragments: Similarly, an inventor who isolates DNA fragments must demonstrate a specific and credible use for these fragments to satisfy the industrial applicability/utility requirement.

2.4 Patentable Subject Matter: The Gatekeeper Requirement

Patentable subject matter, also known as patent-eligible subject matter, is a fundamental prerequisite for obtaining a patent. It acts as an initial filter or “gatekeeper” before assessing other patentability criteria such as novelty or inventive step. If an invention does not fall within patentable subject matter, further examination is unnecessary.

Positive Definitions (e.g., United States)

Some jurisdictions, such as the United States, define patentable subject matter in positive terms. In the U.S., this is broadly defined as “any new and useful process, machine, manufacture, or composition of matter.” This means that a claimed invention must fall within one of these four categories.

However, U.S. law does not explicitly define what cannot be patented. Instead, through case law, certain categories have been established as exceptions to patent eligibility, including:

• Laws of nature
• Abstract ideas
• Natural phenomena

Technical Idea Definition (e.g., Japan)

Japan’s patent law defines patentable subject matter as “a creation of a technical idea utilizing a law of nature.” Consequently, creations that do not utilize natural laws (e.g., purely economic principles) or that constitute mere mental activities are generally considered ineligible for patent protection.

Exclusions and the "As Such" Clause (e.g., EPC)

Many jurisdictions, including those governed by the European Patent Convention (EPC), do not provide a comprehensive positive definition. Instead, they set out a non-exhaustive list of non-patentable subject matter. The EPC, for instance, excludes:

• Discoveries, scientific theories, and mathematical methods
• Aesthetic creations
• Schemes, rules, and methods for performing mental acts, playing games, or doing business, and computer programs
• Presentations of information

Crucially, these exclusions apply only where the claims are directed to the subject matter “as such.” This means that if a claim includes a non-patentable element but also incorporates a technical contribution, it may still be considered patentable.

The "Technical Character" Test

When interpreting the “as such” exclusion, the “technical character” of an invention is a key factor. Determining what constitutes “technical” is a complex legal issue developed through case law, particularly in the decisions of the Boards of Appeal of the European Patent Office (EPO). Inventions are generally assessed based on whether they solve a technical problem using technical means.

Areas of Frequent Scrutiny

Patent eligibility is most often questioned in the following areas:

• Computer-implemented inventions (e.g., software-related inventions)
• Business method inventions
• Biotechnology-related inventions

To provide clarity, some jurisdictions publish field-specific examination guidelines that delineate the boundaries of patent eligibility within particular technical domains.

Examples Illustrating Patentable Subject Matter

To further clarify the boundaries of patentable subject matter, consider the following examples:

Example 1: X-rays

Non-Patentable:
The mere discovery that radiation exists within a specific wavelength range, such as X-rays, is not patentable subject matter, as it constitutes a discovery of a natural phenomenon. Therefore, X-rays themselves cannot be patented.

Patentable:

• A method of producing X-rays may be patentable, as it involves a technical process.
• An apparatus that uses X-rays, such as an X-ray machine for inspecting the internal structure of objects or bodies, may also be patentable, as it constitutes a technical device with a specific practical application.

Example 2: Presentation of Information

• Non-Patentable:
  The presentation of information itself (i.e., the content) is generally not patentable subject matter. For instance, a report or dataset, as a mere collection of information, cannot be patented.
• Potentially Patentable:
  A method of presenting information may be patentable if it involves a technical solution to a technical problem. For example, a method for generating a graphical icon with a three-dimensional effect by controlling pixel intensity and color distribution may constitute a technical process beyond the mere presentation of content.

Other Exclusions from Patentability

Beyond the categories of non-patentable subject matter, certain inventions may be excluded from patentability on additional grounds, although the specifics vary by jurisdiction. Common exclusions include:

• Inventions Contrary to Public Order or Morality: Inventions whose commercial exploitation would be contrary to public order or morality. This also includes inventions the exploitation of which could harm human, animal, or plant life or health, or cause serious environmental damage.

• Diagnostic, Therapeutic, and Surgical Methods: Methods for the treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practiced on the human or animal body, are generally not patentable.

• Exception for Products: However, this exclusion does not apply to products, in particular substances or compositions, for use in such methods. Patents may be granted for medical products, apparatus, and devices used in diagnosis, surgery, or therapy.

• U.S. Specifics: In the United States, where such treatment methods are not categorically excluded, patents directed to such methods are generally not enforceable against medical practitioners under specific statutory provisions.

• Plants, Animals, and Biological Processes: Plant or animal varieties and essentially biological processes for the production of plants or animals (other than microbiological processes and their products) are typically excluded from patentability.

The Secretariat of WIPO assumes no liability or responsibility with regard to the transformation or translation of the original content. World Intellectual Property Organization (WIPO) (2023). WIPO Patent Drafting Manual, Second edition. Geneva: WIPO. DOI: 10.34667/tind.44657