8.8.1 Useful (Utility)

Key Legislation:

Patents Act:

• s18 Patentable Inventions

During examination of a standard patent application or an innovation patent, examiners are not required to consider whether a claimed invention satisfies the requirement that it be useful (s18(1)(c) and s18(1A)(c) respectively).

However, examiners are required to consider the use to which an invention is to be put. Since an application must be in respect of a manner of manufacture, it is essential that the specification indicates an area of usefulness for the invention claimed, where such use is not self evident. Where no use is described (either implicitly or explicitly), the claims may be directed to a mere scientific curiosity, discovery or idea. In these situations, examiners should object that the claims are not directed to a manner of manufacture, as well as that the specification does not fully describe the invention.

The use of many inventions is self-evident, or may be implied in the specification (e.g. a motor vehicle), and in such circumstances no formal statement of use is required. Where there is a statement of use, but the statement is so broad that it merely indicates that an invention has been made without disclosing what that invention is, an objection or objections should be taken as outlined above.  For example, a class of chemical compounds may be stated to be "pharmaceutically active". This is insufficient to indicate the nature of the invention; if the compounds are active as analgesics or hypnotics, this should be specified.

Similarly, if a claim defines a DNA sequence, it is insufficient to describe the sequence as being broadly useful as a "probe". The specification must disclose a specific gene which can be probed by the DNA sequence or a specific use.