[2] The majority of inventions are usually not challenged as lacking utility,[3] but the doctrine prevents the patenting of fantastic or hypothetical devices such as perpetual motion machines.
[5] Rejection by an examiner usually requires documentary evidence establishing a prima facie showing that there is no specific, substantial, and credible utility.
The main reason for having the utility requirement is to prevent issuing patents on things which are speculative and may block useful inventions in the future.
[citation needed] Notably, a full FDA approval of the drug is not required before a patent application is filed.
Now if a monopoly were allowed in a useless invention other persons would be prevented from improving it or turning it to any account whatever so that combinations of utility might be impeded.
The most recent pronouncement of the Manual of Patent Examining Procedure is 2107.01: Situations where an invention is found to be "inoperative" and therefore lacking in utility are rare, and rejections maintained solely on this ground by a Federal court even rarer.
In many of these cases, the utility asserted by the applicant was thought to be "incredible in the light of the knowledge of the art, or factually misleading" when initially considered by the Office.
The utility criterion established by this case is, as Justice Joseph Story wrote in the Court's decision, that, to be patentable, an invention must be "useful" and must "not be frivolous or injurious to the well-being, good policy, or sound morals of society".
[10] In spite of this ruling however, patents continued to be granted for devices that could be deemed immoral (e.g. gambling devices, see, e.g., Brewer v. Lichtenstein[11] and Ex parte Murphy[12]) or deceitful (see, Juicy Whip, Inc. v. Orange Bang, Inc. (dealing with a juice dispenser that arguably deceived the public into believing that the liquid seen in the attached reservoir was that which was being dispensed)).
[13] In Juicy Whip, the Court of Appeals for the Federal Circuit put an end to the requirement: "Congress never intended that the patent laws should displace the police powers of the States, meaning by that term those powers by which the health, good order, peace and general welfare of the community are promoted…we find no basis in section 101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool some members of the public.
[citation needed] However, the practical or specific utility requirement for patentability may be more difficult to satisfy for chemical or biological inventions, because of the level of uncertainty in these fields.
The Court ruled, "... a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute.
[16] An 1817 case Lowell v. Lewis (Circuit Court, D. Massachusetts) proclaimed that: the word "useful," therefore, is incorporated into the [Patent] act in contradistinction to mischievous or immoral.
[17] However, in the 1970's after cases establishing patentability of a slot machine in 1977,[18] and drink machines with decorative reservoirs that did not contain the drink actually dispensed,[17] the United States Patent and Trademark Office and federal courts no longer consider beneficial utility nor the deceitful or immoral qualities of inventions.