Lack of Utility

1A patent may be revoked on the ground that the invention, so far as claimed in any claim of the complete specification, is not useful. This is commonly referred to as revocation on the ground of inutility. An invention shall not be regarded as 'not useful' merely because it is of no commercial utility or because the results that can be achieved from it would be of poor quality. As the Court of Appeal in Britian has put it, an invention shall be considered useful 'so long as the wheels will go round'. (Valensi v British Radio Corpn (1973) RPC 337, p 378, [1972] FSR 273 (CA).)

2The utility of a patent is a vital requirement that should be continuously maintained for a patent to remain active. At any point of time during the term of the patent, an objection can be made with regard to the utility of a patent. Even at an early stage of application for a patent, the law requires that the complete specification shall fully and particularly describe the operation or use and method by which the invention is to be performed. The applicant is also bound to disclose the best method of performing the invention. The emphasis on operation, use and performance accentuate the different aspects of the concept of utility. In fact, a patent is granted for the promise of performance. Where the promise fails, the patent becomes susceptible to revocation on the ground that the invention is not useful. (Patents Act 1970, s 64(1)(g).) The non-working of a patent per se is not a ground for its revocation, as a patent can be granted for an invention that is 'capable of industrial application'. It can reasonably be expected of any applicant to take prudent steps to determine the working of an invention before knocking the doors of the Patent Office.

3The definition of invention under s 2(1)(j) of the Act, before the Patents (Amendment) Act 2002, read as follows:

... Invention means any new and useful—

(i) art, process, method or manner of manufacture; (ii) machine, apparatus or other article; (iii) substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention.

4The above provision required that for an invention to be patentable it must pertain to a 'new and useful' manner of manufacture. As per the above definition of invention, one of the requirements was to determine whether the invention involved utility. Though express mention of the terms 'useful' and 'manner of manufacture' do not figure any more in the new definition of invention, the principles enumerated in the judicial decisions interpreting the phrase 'manner of new manufacture' under the earlier definition of invention have now been incorporated into the new definition. (Patents Act 1970, s 2(1)(j) as amended by the Patents (Amendment) Act 2002.)

5The concept of manufacture was tied up with the utility of the product or process. Under the old definition of 'invention', an invention to be patentable had to be useful in addition to being new. (See Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978).) The present definition of invention does not expressly provide for the utility of an invention as a criterion for a grant of a patent. But the third requirement of an invention, ie, that it should be 'capable of industrial application' implies usefulness or utility. (TRIPS Agreement, art 27.1, fn 1.) This provision justifies the retention of s 64(1)(g) by which a patent can be revoked for lack of utility. (Section 64(1)(g) of the Patents Act 1970 is similar to s 26(1)(f) of the Patents and Designs Act 1911, which provided for revocation of a patent if the invention was of no utility.) In Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978) (paras 19 and 57) the Supreme Court recorded that "Courts have always taken the view that a patentable invention, apart from being a new manufacture, must also be useful." It rejected the argument "that since the Courts below have concurrently held that the invention had utility the patent should be sustained", holding that "the crucial test of the validity of a patent is whether it involves novelty and an 'inventive step'."

6Utility in patent law does not mean either 'abstract utility, or comparative or competitive utility, or commercial utility'. (See Welsbach Incandescent Gas Light Co Ltd v New Incandescent (Sunlight Patent) Gas Lightning Co (1900) 17 RPC 237, [1900] 1 Ch 843, p 850.) It is a quality of an invention which makes it better than the preceding knowledge of the trade. The question that arises for consideration under this ground often pertains to the quantum of utility required to support a patent. It has been stated that in the absence of any promise in the specification that a definite degree of advantage would result from the use of the invention, the amount of utility required to support a patent is very small. (TA Blanco White, Patents for Inventions, third edn, p 152-153 cited in Farbewerke Hoechst AG v Unichem Laboratories AIR 1969 Bom 255, (1969) RPC 55.) It is not necessary that the invention as described should be commercially useful, unless the specification promises that it would be, and that it is sufficient that the invention be of some use to the public. It is also not necessary that a new result should be obtained by using the invention. The test is whether the new method 'gives the public a useful choice'. (See Welsbach Incandescent Gas Light Co Ltd v New Incandescent (Sunlight Patent) Gas Lightning Co (1900) 17 RPC 237, [1900] 1 Ch 843, p 851.)

7In Indian Vacuum Brake Co v E S Luard (1925) (p 4) the Calcutta High Court held that "in patent law the term 'utility'; is used, not in the abstract but in. a very special sense. Mere usefulness is not sufficient to support a patent", recording that "Grove, J. in charging the jury described 'utility' as meaning an invention better than the preceding knowledge of the trade as to a particular article". In Farbwerke Hoechst v Unichem Laboratories (1968) (p 70) the Bombay High Court held that "the plaintiffs' patent in the present case cannot be attacked on the ground of want of utility, since it certainly gives a 'useful choice' in the matter of compounds with a blood sugar lowering property which was not known till then, unless by the specification a higher degree of utility was promised by the plaintiffs".

8Utility or usefulness should be determined by reference to the state of the art at the date of the patent. The question would be: was the invention useful as on the date of the patent? Any development that may happen beyond the date of the patent which would have replaced the said invention or rendered it obsolete should not be taken into account. In Farbewerke Hoechst AG v Unichem Laboratories, Vimadalal J, in rejecting the objection on the ground of want of utility, said: (AIR 1969 Bom 255.)

As stated by Halsbury (3rd Edn), Vol 29, p 59, Para 123, 'not useful' in patent law means that the invention will not work, either in the sense that it will not operate at all or more broadly, that it will not do what the specification promises that it will do. If the invention will give the result promised at all, the objection on the ground of want of utility must fail. It is further stated in the said passage that the practical usefulness or commercial utility of the invention does not matter, nor does it matter whether the invention is of any real benefit to the public, or particularly suitable for the purposes suggested, and that it is only failure to produce the results promised that will invalidate the patent, not misstatements as to the purposes to which such results might be applied. In Terrell on the Law of Patents, (11th Edn) p 98 para 248, quoting from an English case, it is stated that if the patentee claims protection for a process for producing a result and that result cannot be produced by the process, the consideration fails. It is further stated there that objections to patents on such grounds are sometimes treated as objections for want of utility, and when so treated, the well known rule is that the utility of an invention depends upon whether, by following the directions of the patentee, the result which the patentee professed to produce can in fact be produced. Quoting from another English case, the same proposition is stated in another way in Terrell at p 99, viz that the protection is purchased by the promise of results, and that it does not, and ought not, to survive 'the proved failure' of the promise to produce the results. (Hatmaker v Joseph Nathan & Co Ltd [1919] 36 RPC 231, p 237, per Lord Birkenhead.) As already stated above, the only result which the specification (Ex A) in the present case professed to produce was a new class of chemical compounds having hitherto unsuspected blood sugar lowering property, but without the undesirable side effects of the previously known sulphonamides. As also stated above, the defendants have not been able to prove that a single compound falling within the patent does not possess blood sugar lowering properties to a greater or lesser degree. The position, therefore, is that not only is there no 'proved failure' to produce the results promised by the plaintiffs' patent specification (Ex A), but there is a 'proved failure' on the part of the defendants to show that compounds falling within the patent do not have the blood sugar lowering properties promised by that patent.

9An invention will be regarded as useful, if, by following the directions in the specification, the results sought by the patentee can be attained and is of practical utility as on date of the grant. Explaining the test in Lane Fox v Kensington and Knightsbridge Electric Lighting Company, Lindley LJ said: ([1892] 3 Ch 424, p 431 (CA).)

The utility of the alleged invention depends not on whether by following the directions in the complete specification all the results now necessary for commercial success can be obtained, but on whether by such directions the effects which the patentee professed to produce could be produced, and on the practical utility of those effects. Can it be said that the invention as described in the amended specification was in 1878 a practically useful addition to the then stock of inventions? To judge utility, the directions in the amended specification must be followed, and, if the result is that the object sought to be attained by the patentee can be attained and is practically useful at the time when the patent is granted, the test of utility is satisfied.

Utility is often a question of degree, and always has reference to some object. Useful for what? is a question which must be always asked, and the answer must be, useful for the purposes indicated by the patentee.

10A patent will be bad if the patentee claims articles that do not fulfill a promise made by him in his specification or that are not useful. (See Raleigh Cycle Co Ltd v H Miller & Co Ltd (No 1) [1948] 1 All ER 308, (1948) 65 RPC 141. The claims in the patent related to cycle generators for electric bicycle lamps using alternating current included generators which would neither function usefully upon a cycle nor give current of high enough frequency to give a steady light for a cyclist.) The fact that no expert in the art would be misled by the promise will not provide an answer to the objection of inutility, if the promise of result was made and was not fulfilled. (See Sonotone Corpn v Multitone Electric Co Ltd (1955) 72 RPC 131, p 146 (CA).) In some cases involving pharmaceutical preparation, the patentee may anticipate therapeutic value for a broad range of substances and may make a broad claim covering all the substances. Such claims may be struck down on the ground that they are not useful. (See May & Baker's Patent (1948) 65 RPC 255, cited in Farbewerke Hoechst AG v Unichem Laboratories AIR 1969 Bom 255, (1969) RPC 55.) If the invention claimed by the patentee involved a dangerous process which an expert would avoid or a process which an expert would take to be impossible, then such patent may be revoked as not being useful. (See Vidal Dyes Syndicate Ltd v Levinstein Ltd (1912) 29 RPC 245, p 271 (CA).)

11In Farbwerke Hoechst v Unichem Laboratories (1968) (p 72) the Bombay High Court held that "when a process patent is obtained after prolonged and thorough research work, it may be possible to predict that the substances produced by that process would have a particular property, though it is usually impossible for anybody to test all the possible substances that could be produced by that process" .