Probable Utility

Abstract:

This article discusses the legal requirements for making a sound prediction of utility and for disclosing an invention based on such a prediction. It argues that a sound prediction should be assessed from the subjective perspective of the inventors rather than the objective perspective of a skilled person, and that a sound prediction, like a demonstration, is simply evidence of utility to be assessed on a balance of probabilities. There is no reason at law to treat a demonstration differently from a sound prediction for the purposes of disclosure in a patent, and whether disclosure of facts and reasoning or a demonstration is required must be determined not by a judgemade rule of general application but by considering whether such disclosure is necessary, given the circumstances of the particular invention at issue, to satisfy the statutory requirement to disclose the invention and its operation or use as contemplated by the inventor.