Additional Requirements: Utility and Double Patenting

In addition to the primary requirements of patent eligibility, novelty, non-obviousness, and adequate disclosure, there are additional doctrines that may affect whether an invention is patentable. Among the most important of these are the requirements of utility and the prohibition against double patenting.

Inventions may be deliberately made, or they may arise in the form of discoveries. Inventions that are made almost always have a credible function; it is the reason they were made. However, this is not true of discoveries. For example, it would not be unusual for a scientist to sequence an entire bacterial genome, identify many genes and not know what most of them do.    

The utility requirement provides that an invention must have a specific, substantial, and credible use at the time the patent application is filed. An asserted utility must be supported by sufficient evidence or reasoning to demonstrate that the invention provides a real-world benefit, rather than merely representing a research hypothesis or speculative result. Thus, the structure of a gene alone is not sufficient to make it patentable, even if it is new and nonobvious. The utility requirement requires that patent protection not be granted for subject matter without a practical use.

The doctrine of double patenting, by contrast, is directed not to the nature of the invention, but to the proper scope and duration of patent rights. Double patenting prevents an applicant from obtaining multiple patents that improperly extend exclusive rights for the same invention or for obvious variations of that invention.

Two forms of double patenting are generally recognized. Statutory double patenting prohibits the issuance of more than one patent for the same invention. Nonstatutory, or obviousness-type double patenting, prevents the issuance of claims in a later patent that are not patentably distinct from claims in an earlier patent. This latter doctrine is intended to prevent an unjustified extension of patent exclusivity through the use of multiple related applications.

Although utility and double patenting are less frequently the primary focus of examination than the other patentability requirements, they can nevertheless determine the outcome in particular cases. Consideration of these additional requirements therefore forms an important part of a complete analysis of patentability.

Disclaimer: This piece is provided for general informational purposes only and does not constitute legal advice. Patent issues are often complex and highly fact-specific, and no one should act on general information of this kind without consulting qualified patent counsel regarding the particular circumstances involved.