Rethinking Novelty in Patent Law

The novelty requirement seeks to ensure that a patent will not issue if the public already possesses the invention. Although gauging possession is usually straightforward for simple inventions, it can be difficult for those in complex fields like biotechnology, chemistry, and pharmaceuticals. For example, if a drug company seeks to patent a promising molecule that was disclosed but never physically made in the prior art, the key possession question is whether a person having ordinary skill in the art (PHOSITA) could have made it at the time of the prior disclosure. Put differently, could the PHOSITA rely on then-existing knowledge in the field to fill in any missing technical details from the prior disclosure? This Article argues that existing novelty jurisprudence mishandles the possession question in two ways. First, it tends to overestimate the PHOSITA\u27s then-existing knowledge by failing to fully appreciate the complex nature of certain technologies. Second, the current examination framework vitiates the presumption of novelty by placing proof burdens on the would-be inventor that can thwart innovation and frustrate important objectives of the patent system. To resolve these problems and to fill a gap in patent scholarship, this Article proposes a new paradigm that reframes the novelty inquiry during patent examination. Its implementation will not only improve the quality of issued patents, but also make the patent literature a more robust source of technical information. This Article contributes to broader policy debates over patent reform and joins a larger effort to bridge the disconnect between patent law and the norms of science

Foresight Bias in Patent Law

Much of patent reform has focused on efforts to make it harder to obtain and enforce low-quality patents. The most straightforward way to achieve this goal is to raise the substantive standards of patentability. What is often ignored in discussions about raising patentability standards is that high-quality inventions can slip through the cracks. What is more troubling is that sometimes this happens because of bias. This Article draws attention to foresight bias, which occurs when a decision-maker lets over-pessimism and an oversimplified view of the future influence the patentability determination. Foresight bias leads to a patent denial regardless of the invention’s technical merit. Particularly susceptible are inventions emerging from “unpredictable†fields like chemistry and biotechnology — things like chemical compounds and DNA fragments. If the invention’s principal purpose is to serve as a “building block†for something else, it is unpatentable. The fear is that a patent could create a monopoly of knowledge and impede future research. Empirical studies, however, suggest that these fears have largely not materialized. More importantly, the patent denial costs the inventor, society, and the patent system. This Article offers a solution to this problem. It proposes a new paradigm that gauges the patentability of building block inventions in unpredictable fields objectively without reliance on the utility requirement — the principal conduit for foresight bias. Its implementation will promote disclosure, foster more creative activity, reduce wasteful duplicative research efforts, and promote technological progress — all important objectives of the patent system. Eliminating the bias will also reconnect the patent system to many of the technical communities that it serves

The Teaching Function of Parents

In theory, a patent serves the public good because the disclosure of the invention brings new ideas and technologies to the public and induces inventive activity. But while these roles inherently depend on the ability of the patent to disseminate technical knowledge, the teaching function of patents has received very little attention. Indeed, when the document publishes, it can serve as a form of technical literature. Because patents can, at times, communicate knowledge as well as, or better than, other information sources, patents could become a competitive source of technical information. Presently, however, patents are rarely viewed in this manner. There are several reasons for this, including the lack of a working example requirement and the pervasive use of ambiguous or opaque language. My primary objective is to transform patents into readable teaching documents. Importantly, if patents are to compete with the technical literature, then they must provide the same quality of teaching. For this to happen, two things must occur. First, at least for complex inventions, an applicant must prove, through adequate detail, that the claimed invention has been constructed and works for its intended purpose. Second, applicants must be allowed to draft the document using clear and concise language, without the fear of litigation troubles. To achieve both, I contend that working examples should replace language as the principal measure of claim scope. To implement this idea, I propose a new examination protocol which gives the U.S. Patent Office the ability to request working examples when the disclosure\u27s teaching appears dubious. In exploring criticisms, I argue that, in contrast to the current disclosure framework, which can itself thwart innovation, the proposed regime will produce more technically robust patents, which will make it easier for subsequent inventors to improve upon existing patented technology, promote the diffusion of knowledge across disciplines, and serve as a driver for more creative innovation

Foresight Bias in Patent Law

Much of patent reform has focused on efforts to make it harder to obtain and enforce low-quality patents. The most straightforward way to achieve this goal is to raise the substantive standards of patentability. What is often ignored in discussions about raising patentability standards is that high-quality inventions can slip through the cracks. What is more troubling is that sometimes this happens because of bias. This Article draws attention to foresight bias, which occurs when a decision-maker lets over-pessimism and an oversimplified view of the future influence the patentability determination. Foresight bias leads to a patent denial regardless of the invention’s technical merit. Particularly susceptible are inventions emerging from “unpredictable” fields like chemistry and biotechnology—things like chemical compounds and DNA fragments. If the invention’s principal purpose is to serve as a “building block” for something else, it is unpatentable. The fear is that a patent could create a monopoly of knowledge and impede future research. Empirical studies, however, suggest that these fears have largely not materialized. More importantly, the patent denial costs the inventor, society, and the patent system. This Article offers a solution to this problem. It proposes a new paradigm that gauges the patentability of building block inventions in unpredictable fields objectively without reliance on the utility requirement—the principal conduit for foresight bias. Its implementation will promote disclosure, foster more creative activity, reduce wasteful duplicative research efforts, and promote technological progress—all important objectives of the patent system. Eliminating the bias will also reconnect the patent system to many of the technical communities that it serves

Foresight Bias in Patent Law

Much of patent reform has focused on efforts to make it harder to obtain and enforce low-quality patents. The most straightforward way to achieve this goal is to raise the substantive standards of patentability. What is often ignored in discussions about raising patentability standards is that high-quality inventions can slip through the cracks. What is more troubling is that sometimes this happens because of bias. This Article draws attention to foresight bias, which occurs when a decision-maker lets over-pessimism and an oversimplified view of the future influence the patentability determination. Foresight bias leads to a patent denial regardless of the invention’s technical merit. Particularly susceptible are inventions emerging from “unpredictable” fields like chemistry and biotechnology—things like chemical compounds and DNA fragments. If the invention’s principal purpose is to serve as a “building block” for something else, it is unpatentable. The fear is that a patent could create a monopoly of knowledge and impede future research. Empirical studies, however, suggest that these fears have largely not materialized. More importantly, the patent denial costs the inventor, society, and the patent system. This Article offers a solution to this problem. It proposes a new paradigm that gauges the patentability of building block inventions in unpredictable fields objectively without reliance on the utility requirement—the principal conduit for foresight bias. Its implementation will promote disclosure, foster more creative activity, reduce wasteful duplicative research efforts, and promote technological progress—all important objectives of the patent system. Eliminating the bias will also reconnect the patent system to many of the technical communities that it serves

The Enablement Pendulum Swings Back

Possibly in response to criticisms that the U.S. patent system affords too much legal protection to patent owners, the courts have begun to chip away at patent rights. Curiously enough, the Supreme Court has heard a relatively large number of patent cases over its last three terms, which suggests to several commentators and members of the patent bar that the Court is unhappy with the Federal Circuit\u27s stewardship of the patent system and has, among other things, invited the court to rethink its approach to modulating patent rights. And it appears that the Federal Circuit has accepted the invitation. In this Article I examine the Federal Circuit\u27s new enablement standard and explore its potential impact on patentees. In short, the enablement requirement ensures that the patent discloses the claimed invention in sufficient detail so that a person having ordinary skill in the art (PHOSITA) can make and use it without undue experimentation. I set the stage for the discussion by briefly exploring the contours of the enablement requirement. I then describe the two strands of enablement jurisprudence which have emerged over the past half-century and the limits of this dichotomy. Next, after exploring how the Supreme Court\u27s lesson about the importance of the PHOSITA in KSR v. Teleflex may partially explain the Federal Circuit\u27s adoption of the full scope enablement standard, I briefly discuss several recent cases where the court applies the new standard. Finally, I discuss the implications of full scope enablement by providing lessons for patentees and presenting thoughts on the future of claim drafting

Patently Impossible

The quest to achieve the impossible fuels creativity, spawns new fields of inquiry, illuminates old ones, and extends the frontiers of knowledge. It is difficult, however, to obtain a patent for an invention which seems impossible, incredible, or conflicts with well- established scientific principles. The principal patentability hurdle is operability, which an inventor cannot overcome if there is reason to doubt that the invention can really achieve the intended result. Despite its laudable gatekeeping role, this Article identifies two problems with the law of operability. First, though objective in theory, the operability analysis rests on subjective credibility assessments. These credibility assessments can introduce a bias toward unpatentability, with inventions emerging from new, poorly understood, and paradigm-shifting technologies as well as those from fields with a poor track record of success as the most vulnerable. Second, what happens when the impossible becomes possible? History reveals that the Patent Office and the courts will continue to deny patents for a long time thereafter. This Article argues that the mishandling of seemingly impossible inventions vitiates the presumption of patentability, prevents the patent system from sitting at the cutting edge of technology, and frustrates the patent system\u27s overarching goal to promote scientific and technological progress. In an effort to resolve these problems and fill a gap in patent scholarship, this Article offers a new framework for gauging the patentability of seemingly impossible inventions. Briefly, it contends that a more robust enforcement of patent law\u27s enablement requirement can and should perform the gatekeeping role because it can resolve whether an invention works by weighing objective, technical factors. This approach would quickly reveal technical merit for inventions that really work or, alternatively, the fatal flaw for inventions that are truly impossible. Its implementation would not only eliminate the need for the operability requirement, but it would also streamline patent examination, improve the disclosure function of the patent system, promote scientific and technological progress, and ultimately foster innovation

Symposium: The Disclosure Function of the Patent System

Achieving a robust disclosure from patent applicants is no easy task because it brings to the fore competing goals of the patent system. For example, the law must strike a balance between its interest in early disclosure and the need to transform the patent into a substantive technical document that can itself promote innovation. The law must also strike a delicate balance between the public\u27s interest in disclosure and the inventor\u27s incentive to disclose. A lax disclosure requirement compromises the quid pro quo, meaning that the public might get shortchanged in the so-called patent bargain. But a stringent disclosure requirement might push some inventors toward trade secrecy (i.e., no disclosure)-the antithesis of the patent system. Despite its central role in the patent system, only recently have scholars begun to seriously wrestle with the theoretical and doctrinal aspects of the disclosure function. Hopefully, this Symposium issue will stimulate future debate over and inquiry into this important issue in patent law

The Printed Publication Bar After Klopfenstein: Has the Federal Circuit Changed the Way Professors Should Talk About Science?

The key question for universities is how Klopfenstein will affect the way that science professors talk about science. To answer this question, Part II explores the conflict between a professor’s need to disseminate research and the university’s potential interest in seeking patent protection. The research talk, one of the most important forums for communication in the science community, is an objective measure of research success and scholarship. When a professor produces a patentable invention, university TTOs must balance the professor’s need to discuss the research against the strict statutory requirement to file within one year of public disclosure. If a professor inadvertently triggers the § 102(b) clock, the university may lose patent protection. Part III describes the policy and statutory basis for the § 102(b) printed publication bar as interpreted by the Federal Circuit and its predecessor court. Contrary to other commentators, this Article suggests that the court’s jurisprudence has remained constant. Admittedly, however, the Federal Circuit has held that the inventor can trigger the printed publication bar without disseminating physical copies, but the focus of the inquiry remains the same: sufficient accessibility to the interested public. In Part IV, this Article applies the four factors articulated by the Klopfenstein court which aid in the § 102(b) printed publication inquiry to academic research talks. Although the Federal Circuit has suggested that a lecture that includes a transient display of visual aids is less likely to be considered a “printed publication” for § 102(b) purposes than lengthier displays, this Part concludes that the run-of-the-mill research talk, which relies heavily on visual aids, cannot survive a Klopfenstein analysis. Part V explores how professors, with proper planning, can discuss their research without destroying patentability. First, an inventor can timely file a provisional patent application, which will nullify § 102(b) if done properly. An inadequate or untimely filing, however, can create a trap for the unwary that may bar patentability. Second, universities can create an environment that gives faculty a reason to care about patentability issues. For example, universities should give professors a stake in the outcome, financial or otherwise, by encouraging and rewarding faculty entrepreneurialism. Therefore I assert that § 102(b) issues that arise in the academic context are best handled through managerial decision making; not through changing the patent laws

The Research Patent

The patent system gives courts the discretion to tailor patentability standards flexibly across technologies to provide optimal incentives for innovation. For chemical inventions, the courts deem them unpatentable if the chemical lacks a practical, non-research-based use at the time patent protection is sought. The fear is that an early-stage patent on a research input would confer too much control over yet-unknown uses for the chemical, thereby potentially hindering downstream innovation. Yet, denying patents on research inputs can frustrate patent law\u27s broad goal of protecting and promoting scientific and technological advances. This Article addresses this problem by proposing a new form of intellectual property--a research patent. This regime would allow inventors to obtain patents on research inputs and extract their full value through licensing and enforcement. Research patents would impose minimal administrative costs on the patent system and ultimately promote the disclosure, development, and use of early-stage inventions. At a broader level, the proposed regime raises the theoretical question of how allowing patent protection on early-stage inventions like research inputs serves patent law\u27s instrumental justification of promoting scientific progress. It also raises significant normative and policy questions about technology-specific patentability standards and their role in furthering the goals of the patent system