Engineering Expert Witness Blog

      When I was growing up in the 1960s the Chicago Tribune featured a comic strip by Bill Holman called Smokey Stover.   Smokey was a fireman who had all sorts of ridiculous, nutty, and even bazaar inventions, like his two-wheeled fire truck called the “Foomobile.”   In the real world his inventions could never work, but that didn’t stop me from being a kid and enjoying Smokey’s goofy adventures.

      Smokey’s fire truck would never pass a patent test.   Why?   Because it wouldn’t get past the first requirement for patentability, that is, utility.

      Last time we introduced the federal laws governing patents as found in Title 35, Section 101, of the United States Code (USC), 35 USC § 101 for short.   It sets out requirements for patentability, and the first hurdle that an invention must jump is that it must possess the quality of utility.   In other words, it must be useful.

      This quality of utility prevents ridiculous and/or hypothetical devices, such as Smokey’s Foomobile, from receiving a patent.   Because the Foomobile consists of an engine and two wheels mounted on a single axle, there’s nothing to keep it from falling over.   The weight of its engine makes it front-heavy and unstable.   The nutty vehicle will tip forward, and its front bumper will become wedged in the ground.   The Foomobile is just not capable of passing the test of utility because it cannot be operated as intended – Smokey would never make it to the scene of the fire – and it’s unable to provide any identifiable benefit to its users.

      Once the hurdle of proving an invention’s utility is passed, the next considerations for patent eligibility must be addressed.   Is the invention a machine?   A process?   Just what defines a machine?   Is it something with gears and a motor?

      Next time we’ll see how within the context of patent eligibility, the word machine can apply to things which are not at all mechanical.

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