2.9.3.4.1A Assessing the Claims for Lack of Usefulness

Date Published

Note: The information in this part only applies to:

  • standard patent applications with an examination request filed on or after 15 April 2013.
  • innovation patents with an examination request filed on or after 15 April 2013.
  • innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

For all other standard patent applications/innovation patents, see 2.9.3.4 Useful (Utility).

Note: For a summary of the principles underlying clear enough and complete enough disclosure, support and usefulness, see 2.11A Annex B – Summary of the Clear Enough and Complete Enough Disclosure, Support and Useful (Utility) Provisions.

Patents should not be granted for inventions that are not useful: that have no practical application or do not work (The Explanatory Memorandum).

Principles for Examination

The assessment of whether an application satisfies the requirements for usefulness is considered with respect to each claim. When considering whether a claimed invention is useful, examiners must:

i. construe the claims (see 2.11.2.3 Construction of Claims); and

ii. decide on the balance of probabilities:

a. whether the claimed invention achieves the promised benefit (see 2.9.3.4.1.1A Does the Invention Achieve the Promised Benefit?);
and

b. whether the complete specification discloses a specific, substantial and credible use for the claimed invention (see 2.9.3.4.1.2A Specific, Substantial and Credible Use).

Everything that falls within the scope of a claim must be useful.  That is, everything within the scope of the claims must achieve the benefit the specification promises for it, and the specification must disclose a specific, substantial and credible use for the whole of the subject matter claimed.  

Any objection that the claimed invention is not useful should include a reasoned explanation of why the claimed invention does not achieve the promised benefit and/or why the specification does not disclose a specific, substantial and/or credible use for the claimed invention.  

At first report, an objection that a claimed invention is not useful must be prima facie reasonable. To maintain an objection, examiners should have a significant basis to doubt the statement of use, taking into account the disclosure of the specification as filed and any submissions and evidence provided by the applicant.

A mere assertion by the applicant that an invention is useful would not be sufficient to overcome an objection of lack of utility. Examiners should consider any submissions and argument on their merits and should apply the balance of probabilities standard (see 2.13.5.2A Balance of Probabilities).


Completing the Examination Report

In general, objections that the claimed invention is not useful should be included in the ‘Other Issues’ section of an examination report.

However, where an objection that the claimed invention is not useful is combined with a sec 40 objection (for example lack of support) and the sec 40 objection is the primary objection, then the combined objection should be included in the ‘Section 40’ part of the report (see also 2.11.7.10A Support Required for Pharmaceutical Inventions and Methods of Treatment, under the heading ‘Overlap Between Support and Usefulness’).

When completing the ‘Summary of Patentable Subject Matter’ section of the report, claims that lack usefulness, but meet the manner of manufacture requirements, should be included at the prompt ‘Which Claims define Patentable Subject Matter?’ Only claims which do not define a manner of manufacture should be included at the prompt ‘Which Claims DO NOT define Patentable Subject Matter?’