Legal Definitions - lack-of-utility rejection

A lack-of-utility rejection occurs in patent law when an invention, as described in a patent application, is deemed not to be useful or operable for its stated purpose. For an invention to be patentable, it must demonstrate practical utility, meaning it must actually work and be capable of achieving some beneficial result. If a patent examiner determines that the invention either cannot perform its intended function, or that its claimed function is impossible or lacks any credible scientific basis, they will issue a lack-of-utility rejection.

Here are some examples to illustrate this concept:

• Example 1: Perpetual Motion Machine

  Imagine an inventor applies for a patent for a device they claim generates energy indefinitely without any external power source, a concept known as a "perpetual motion machine." Despite the detailed drawings and descriptions, the patent examiner would issue a lack-of-utility rejection. This is because the laws of physics dictate that such a machine is impossible; it fundamentally cannot work as claimed. The invention lacks practical utility because it cannot achieve its stated purpose of perpetual energy generation.

• Example 2: Unproven Medical Device

  Consider an inventor seeking a patent for a new medical device that purports to cure all forms of cancer instantly through a non-invasive electromagnetic field, but without any supporting scientific data, clinical trials, or a plausible mechanism of action. The patent office would likely issue a lack-of-utility rejection. Even if the device exists physically, its claimed function—a universal cancer cure—is not credible or demonstrable. Without evidence that the device actually works as described to achieve this beneficial outcome, it is considered to lack utility.

• Example 3: Non-Functional Software Application

  An inventor applies for a patent on a complex software application designed to accurately predict stock market fluctuations with 100% certainty. However, during the examination process, it becomes clear that the software, when tested, consistently crashes, produces random numbers, or fails to process data in any meaningful way, rendering it completely ineffective for its stated purpose. The patent examiner would issue a lack-of-utility rejection because the software, despite its conceptual design, does not actually operate to achieve the specific, beneficial function it claims. It is not useful for predicting stock market fluctuations because it simply doesn't work.