The Prior Art of War: Decoding Title 35

But Does It Do Anything? A Guide to the Utility Requirement


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Congratulations, you've invented a solar-powered flashlight. It's novel, non-obvious, but the U.S. Patent and Trademark Office has one simple, crushing question: Is it actually useful? Welcome to the surprisingly tricky world of the utility requirement under 35 U.S.C. § 101.
In this episode, we dissect the USPTO's favorite three-word mantra for utility: "specific, substantial, and credible." We explain why your invention needs a concrete, real-world benefit, and why purely ornamental creations have to find another home (it’s called a design patent). We’ll clarify why your invention just has to work—it doesn’t need to be commercially successful or better than the competition to pass the baseline test.
We then venture into the boss-level challenges of the utility world, like research tools and therapeutic methods, where legal battles like Brenner v. Manson and In re Fisher set the unforgiving rules. Finally, we untangle the critical interplay between proving your invention is useful and accidentally starting the one-year clock on your public disclosure bars.
So, if you want to make sure your brilliant creation doesn't get tossed in the "interesting but useless" pile by an examiner, tune in. We promise this episode will have a specific, substantial, and credible benefit to your patent strategy.
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The Prior Art of War: Decoding Title 35By LAMAR A. ALLEN