Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 78

As briefly touched upon previously, under the Constitutional mandate of Article 1, Section 8, patents can only be granted for advances in the “useful” arts. Following this directive, the USPTO and the courts have determined that a patent cannot be granted for an inoperative device or method, and that a patent is even subject to post‐grant cancellation if the covered device is proven to be inoperative.

Also required is that the disclosure in the patent application specification must define an invention and a device that will work for its intended purpose. If the device will not work for the purpose set forth in the specification, the patent, if granted, will become unenforceable and invalid.

The requirement of usefulness also holds that a patent cannot be granted to inventions that have not been developed to the point where a working embodiment can be disclosed in the patent application. This requirement that the invention must be useful is especially significant for new chemical compounds (including pharmaceuticals), because there may be no known use for a new compound. Often, much work must be conducted to experimentally verify the utility of a new compound before a patent application can be filed.

Upon development of any invention, the inventors should ask themselves the question: “What is my idea useful for, and why?” Once this question has been answered, the patent application can be drafted around it, showing that the invention will solve problems in the area in which your idea has been determined by you to be useful.

By way of anecdotal information, many years ago when I was a patent examiner, some of the other examiners in the chemical arts, over lunch, would tell stories about patent applications that were filed on chemical compounds, and that the usefulness for these chemical compounds was described as “for filling sandbags.” These were patent applications that were filed before the applicant corporation really knew what the chemical could be useful for. Today, the requirement is that the invention must have some stated use before the patent application is filed. I do not think filling sandbags today will carry much weight!