Patent It Yourself - PDF Archive

ChaPter 5 | Is It PATENTABLE? | 101
invention should be tested for utility just like any other
invention just in case it falls into one of the “legally not
useful” categories listed below.
Notwithstanding the fact that virtually all inventions
are useful in the literal sense of the word, the courts have
decided that some types of inventions are “not useful” as a
matter of law, and patents on them are accordingly denied
by the PTO. Let’s look at this more closely.
1. Unsafe New Drugs
The PTO won’t grant a patent on any new drug unless the
applicant can show that not only is it useful in treating
some condition, but also that it’s relatively safe for its
intended purpose. Put another way, the PTO considers an
unsafe drug useless. Most drug patent applications won’t be
allowed unless the Food and Drug Administration (FDA)
has approved tests of the drug for efficacy and safety, but
drugs that are generally recognized as safe, or are in a “safe”
chemical category with known safe drugs, don’t need prior
FDA approval to be patentable. For example, one inventor
was able to patent the use of chili peppers to treat baldness
since chilies were known to be safe.
2. Whimsical Inventions
Occasionally, the PTO will reject an application for a patent
when it finds the invention to be totally whimsical, even
though “useful” in some bizarre sense. Nevertheless, in
1937 the PTO issued a patent on a rear windshield (with
tail-operated wiper) for a horse (U.S. Pat. No. 2,079,053).
They regarded this as having utility as an amusement or
gag.
Most patent attorneys have collections of humorous
patents. I could easily fill the rest of this book with my collection,
but I’ll restrain myself and briefly describe just a
few:
• a male chastity device (U.S. Pat. No. 587,994—1897)
• a figure-eight-shaped device to hold your big toes
together to prevent sunburned inner thighs (U.S. Pat.
No. 3,712,271—1973)
• dentures with individual teeth shaped like the wearer’s
head (U.S. Pat. No. 3,049,804—1962), and
• a dress hanger with breasts (U.S. Pat. No. D226,943—
1973).
Also, even though the PTO issued U.S. Pat. No.
2,632,266 in 1953 for a fur-encircled keyhole, the censor
wouldn’t let me show this on a TV show.
3. Inventions Useful Only for Illegal Purposes
An important requirement for obtaining a patent, which
Congress hasn’t mentioned, but which the PTO and courts
have brought in on their own initiative (by stretching the
definition of “useful”), is legality. For example, inventions
useful solely for illegal purposes, such as disabling burglar
alarms, safecracking, copying currency, and defrauding
the public, might be incredibly useful to some elements
in our society, but the PTO won’t issue patents on them.
However, most inventions in this category can be described
or claimed in a “legal” way. For example, a police radar
detector would qualify for a patent if it’s described as
a tester to see if a radar is working or as a device for
reminding drivers to watch their speed.
4. Immoral Inventions
In the past, the PTO has—again on its own initiative—
included morality in its requirements. But, in recent years,
with increased sexual liberality, the requirement is now
virtually nonexistent. Thus the PTO now regularly issues
patents on sexual aids, gags, and stimulants.
5. Nonoperable Inventions, Including
Perpetual Motion Machines
Another facet of the useful requirement is operability. The
invention must appear to the PTO to be workable before
they will allow it. Thus, if your invention is a perpetualmotion
machine, or a metaphysical-energy converter,
or, more realistically, a very esoteric invention that
looks technically questionable (it looks like it just plain
won’t work or violates some well-accepted physical law),
your examiner will reject it as lacking utility because of
inoperability. In this case you would either have to produce
a logical, technical argument refuting the examiner’s
reasons (you can include affidavits or declarations of
witnesses and experts and test results), or bring the
invention in for a demonstration to prove its operability.
Operability is rarely questioned, since most patent
applications cover inventions that employ known principles
or hardware and will obviously work as described. If the
examiner questions operability, however, you have the
burden of proof. And note that all patent examiners have
technical degrees (some even have Ph.D.s), so expect a very
stringent test if the operability of your invention is ever
questioned.
Despite the foregoing, the PTO occasionally issues
a patent on what appears to be a perpetual-motion-like
machine, as they did in 1979 (U.S. Pat. No. 4,151,431).