Legal transplants in patent law: why utility is the new industrial applicability

This paper focuses on the transplantation of the ‘utility standard’ from the US legal system into the industrial applicability criterion of patentability as seen in EPO and UKIPO case law. The Specific, Substantial and Credible standard (SSCS) of utility is growing in prominence as a new gatekeeping criterion in European patent law. This legal transplant lacks explicit statutory basis, is largely driven by a process of mimesis following collaboration between patent offices, and carries the potential to generate collateral damage to a number of neighbouring legal standards in European patent law. The SSCS potentially undermines the ‘technical’ requirement in Europe and highlights a growing conflation between industrial applicability and disclosure requirements. Additionally the SSCS may increase research tool patentability in Europe, a development that exposes potential inadequacies in the institutional arrangements of the receiving legal system. The legal transplant is aided by institutional dynamics that incrementally entrench a policy choice or legal standard, accompanied by little or no discussion on its viability and legitimacy. The significant normative impact of the process of transplantation of the SSCS places the patent office at the centre of legal and policy change – an entity that is arguably not fit for this purpose.