For decades, patent officers have scoured the world of information to check that the latest world-changing invention that lands on their desk is unique, there is no prior art, it is not "obvious" and it will be useful. There are myriad "better" mousetraps out there, there are countless water-saving composting lavatories, and I know from a colleague in the industry that not so rare is the "tumescence rigidity monitor" which has application in the diagnosis and study of erectile dysfunction.

But should a patent have to be "useful" to be approved and why are the subjective opinions of the custodians of the inventions in patent offices across the globe considered to be the definitive answer to whether a given invention has utility. After all, a toy today might turn out to be tomorrow's cutting edge research tool, viz. Lego, Microsoft Kinect and many other devices. Of course, those things are often patented because they have utility as "toys", but the notion goes deeper, according to Sean Seymore of Vanderbilt University in Nashville Tennessee.

Seymore is a professor of law and Enterprise Scholar at Vanderbilt Law School and holds a secondary appointment as a professor of chemistry. It is this latter qualification that caught my attention when the press release arrived in my inbox without fanfare nor pedal steel guitar sounds from Nashville. Seymore reckons that the requirement that an invention be deemed useful" in order to warrant the switch from patent pending to patent approved. After all, a literature search and a deep scan of the information can demonstrated with a great degree of certainty whether an invention was invented before, but usefulness...that can be largely a matter of opinion. This is especially so in the area of chemicals, pharmaceuticals and materials.

For instance, the fullerenes, known to the media at the time of their discovery and greatest hype as "buckyballs", had no obvious applications, although some scientists had posited a few ideas. But, possible applications in that field develop as they are studied more deeply and their properties laid bare. A composting lavatory is unlikely to have any novel practical application other than as a means of disposing of human waste without wasting water. Similarly, sticking with the carbon, the discoverers of carbon nanotubes and graphene may not have had immediate definitive applications in mind, but should that preclude a patent?

Seymore suggests that instead of defining applications of a given invention, a better criteria in this age of chemical and materials innovation would be to write the patent application with a "useful disclosure", meaning it is explained clearly enough that others can build on it. "A key challenge for the post-World War II patent system is how to assess utility for chemical and pharmaceutical inventions," he adds. He points to the pharmaceutical industry where, "For those inventions with a known therapeutic activity at the time of patenting, the asserted utility was always clear - to treat some specific ailment or disease." But, there are many compounds and materials that have no immediate therapeutic or other concrete (pardon the pun), non-research based use at the time patent protection is sought. "The judicial response to this question - the essential utility question of the modern era - has shaped the current utility requirement," says Seymore. Of course, the patenting process hinges on utility and whether or not the inventor will be able to commercially exploit their invention through the protection afforded by the patent.

But, in chemistry, materials and pharmaceuticals there are intermediate inventions that ought to be protected that may have no obvious and immediate application but that may lead to new areas of discovery or themselves find unexpected uses. Seymore's suggestion would protect the research and development investment, the intellectual property inherent in those intermediates. This would allow the inventor of such an intermediary compound that turns out to be the perfect starting material for another more apparently useful material to gain credit and recompense for their efforts even if they didn't foresee the subsequent useful invention.

"Getting past the utility requirement has become so burdensome that some scientists make up false uses in order to get a patent, Seymore claims. “If such patents aren’t granted, the progress of science is slowed." To correct the situation, Seymore suggests that instead of emphasizing the usefulness of the invention, patent officers in assessing an application should put more value on the disclosure of the "technical details about the invention."  This could have the obvious beneficial side effect of giving researchers the motivation to disclose more information in their patents, information to which the public and fellow researchers would otherwise not have access. "The disclosure adds to the sum of useful knowledge immediately - not at the end of the patent term but as soon as the patent document publishes," he adds. So a seemingly useless patent might lead to progress independently of its own immediate utility thus extending the frontiers of science and technology, according to Seymore.

The "useful" criterion of a patent application has its roots in the dawn of the industrial revolution in 18th Centuries laws that were more concerned with protecting the rights of the inventors of the mechanized world. "It is now time to eliminate utility as a condition of patentability," Seymore says. "Patent law should be less concerned with useful inventions and more concerned with ensuring that the public gets a useful disclosure."

David Bradley blogs at and tweets @sciencebase, he is author of the popular science book "Deceived Wisdom".