Atypical inventions

Notre Dame Law Review

Volumn 86, Issue 5, 2011, Pages 2057-2090

  Seymore, Sean B ^a,b,c,d  

^a VANDERBILT UNIVERSITY   (United States)

^b UNIVERSITY OF NOTRE DAME   (United States)

^c GEORGIA INSTITUTE OF TECHNOLOGY   (United States)

^d UNIVERSITY OF TENNESSEE   (United States)

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EID: 84855391342     PISSN: 07453515     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (245)

1. FRED WARSHOFSKY, THE PATENT WARS 3(1994).
2. A famous example is the removal of judicially imposed limitations on patenteligible subject matter. See Diamond v. Chakrabarty, 447 U. S. 303, 310(1980) (holding that live, genetically engineered microorganisms are patentable);
3. Rebecca S. Eisenberg, The Story of Diamond v. Chakrabarty: Technological Change and the Subject Matter Boundaries of the Patent System, in INTELLECTUAL PROPERTY STORIES 327, 327-57 (Jane C. Ginsburg & Rochelle Cooper Dreyfuss eds., 2006) (providing commentary). This responsiveness is not surprising because "any law[s] purporting to provide a regulatory foundation for innovation must be able to account for both the broad range of technologies and the rapid pace of [technological] change."
4. R. Polk Wagner, Of Patents and Path Dependency: A Comment on Burk and Lemley, 18 BERKELEY TECH. L. J. 1341, 1344(2003).
5. The conditions for patentability are found in Title 35 of the U. S. Code. Briefly, the claimed invention must be useful (§ 101), novel (§ 102), nonobvious (§ 103), and directed to patentable subject matter (§ 101). In addition, § 112 paragraph 1 requires that the application adequately describe, enable, and set forth the best mode of carrying out the invention, and § 112 paragraph 2 requires that the application conclude with claims which delineate the invention with particularity. Congress enacted the current statute in 1952. See Patent Act of July 19, 1952, Pub. L. No. 82-593, 66 Stat. 792
6. (codified as amended at 35 U. S. C. §§ 100-376(2006)).
7. See Dan L. Burk & Mark A. Lemley, The Patent Crisis and How the Courts Can Solve It 59-65(2009);
8. see also John F. Duffy, The Federal Circuit in the Shadow of the Solicitor General, 78 GEO. WASH. L. REV. 518, 544(2010) (explaining that patent law "has traditionally had a common law feel to it" because the courts receive litde guidance from statutory sources);
9. Paul R. Michel, The Challenge Ahead: Increasing Predictability in Federal Circuit Jurisprudence for the New Century, 43 AM. U. L. REV. 1231, 1243-44(1994) (noting that the general nature of the 1952 Patent Act requires the U. S. Court of Appeals for the Federal Circuit to "unavoidably fill[] in gaps and develop [] fine points");
10. Craig Allen Nard, Legal Forms and the Common Law of Patents, 90 B. U. L. REV. 51, 53(2010) (noting that the common law is "the dominant legal force in the development of U. S. patent law").
11. Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 VA. L. REV. 1575, 1576(2003)
12. (quoting Chakrabarty, 447 U. S. at 309).
13. But see ADAM B. JAFFE & JOSH LERNER, INNOVATION AND ITS DISCONTENTS 203(2004) (criticizing the one-size-fits-all regime and asking "whether we should have one set of patent rules that govern all inventions, or whether the system can be [improved] by tailoring patent rules to the specific attributes of different technologies");
14. Peter S. Menell, A Method for Reforming the Patent System, 13 MICH. TELECOMM. & TECH. L. REV. 487, 489-90(2007) (arguing that a one-size-fits-all system leads to suboptimal levels of patent protection).
15. EDWARD LEE LAMOUREUX ET AL., INTELLECTUAL PROPERTY LAW AND INTERACTIVE MEDIA 8(2009);
16. cf Earl Warren, Science and the Law: Change and the Constitution, 12 J. PUB. L. 3, 5(1963) (explaining that the development of science and technology and law do not advance hand in hand because "[t]he law lags behind until crisis stirs it into action. ").
17. See Oskar Liivak, Maintaining Competition in Copying: Narrowing the Scope of Gene Patents, 41 U. C. DAVIS L. REV. 177, 179(2007) ("As technology advances with an everquickening pace, is patent law agile enough to keep up?");
18. Joel Reidenberg, Professor, Fordham Law Sch., Remarks at the Fordham Intellectual Property, Media & Entertainment Law Journal Symposium (Nov. 16, 2007)
19. in Panel I: Patent Reform: Can the Law Keep Pace with Technology?, 18 FORDHAM INTELL. PROP. MEDIA & ENT. L. J. 1025, 1027(2008) (asking if continued developments in patent law can keep pace with developing technologies).
20. For instance, before World War II most inventions were electrical or mechanical in nature. As chemical and pharmaceutical inventions began to dominate the post-war invention landscape, the U. S. Patent and Trademark Office (PTO) and the courts tried to fit them into the mold of electrical-mechanical inventions. See John Hoxie, A Patent Attorney's View, 47 J. PAT. OFF. SOC'Y 630, 636(1965);
21. William D. Noonan, Patenting Medical Technology, 11 J. LEGAL MED. 263, 263-69(1990) (describing how the courts developed a bias against patent applications involving biological systems and pharmaceutical compounds).
22. Paul H. Eggert, Uses, New Uses and Chemical Patents-A Proposal, 51 J. PAT. OFF. SOC'Y 768, 783(1969);
23. see also Hoxie, supra note 8, at 636 (explaining the judiciary's reluctance to rethink their interpretation the patent statutes when faced with newer technologies). "This shoehorning [often] led to nonsensical outcomes...." Sean B. Seymore, Rethinking Novelty in Patent Law, 60 DUKE L. J. 919, 947-48(2011).
24. "It is an almost universal complaint of patent lawyers that they have to plead before judges who have no training in the technical aspects of the case, and no adequate way of learning...." NORBERT WIENER, INVENTION 134(1993);
25. see also James F. Holderman, Judicial Patent Specialization: A View from the Trial Bench, 2002 U. ILL. J. L. TECH. & POL'Y 425, 428-32 (describing the challenges faced by generalist judges in patent cases).
26. See, e.g, Parke-Davis & Co. v. H. K. Mulford Co., 189 F. 95, 115 (C. C. S. D. N. Y. 1911) ("I [must call] attention to the extraordinary condition of the law which makes it possible for a man without any knowledge of even the rudiments of chemistry to pass upon [patent matters]... for only a trained chemist is really capable of passing upon such facts....")
27. affd in part, rev'd in part on other grounds, 196 F. 496 (2d Cir. 1912);
28. In re Perrigo, 48 F.2d 965, 966 (C. C. P. A. 1931) (observing that the applicant's disclosure was so complex that if the court "reverse [d] the experts [in the PTO] and grant[ed] the patent sought, it would be a 'leap in the dark'").
29. The U. S. Court of Customs and Patent Appeals (C. C. P. A.) was a predecessor to the Federal Circuit. The Federal Courts Improvement Act of 1982 abolished the C. C. P. A. See Pub. L. No. 97-164, 96 Stat. 25 (codified as amended in scattered secdons of 28 U. S. C.). Soon after its creation, the Federal Circuit adopted the C. C. P. A. decisional law as binding precedent.
30. See S. Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc).
31. See Dan L. Burk & Mark A. Lemley, Is Patent Law Technology-Specific?, 17 BERKELEY TECH. LJ. 1155, 1197(2002) ("Even the Federal Circuit, which does not suffer nearly so much from diese limitations, is not in a position to fully understand all of the science it encounters." (footnotes omitted));
32. Kimberly A. Moore, Forum Shopping in Patent Cases: Does Geographic Choice Affect Innovation?, 79 N. C. L. REV. 889, 932-34(2001) (suggesting that specialized patent trial courts would develop expertise in patent law and increase accuracy in resolving patent disputes);
33. Arti K. Rai, Engaging Facts and Policy: A Multi-Institutional Approach to Patent System Reform, 103 COLUM. L. REV. 1035, 1068-69(2003) (describing the technical limitations of Federal Circuit judges and their staff).
34. Cf. Rochelle Cooper Dreyfuss, In Search of Institutional Identity: The Federal Circuit Comes of Age, 23 BERKELEY TECH. L. J. 787, 827(2008) (arguing that the Federal Circuit has made great strides in "making patent law more determinate," but that it has struggled "to keep patent law responsive to changing technological facts and emerging national interests");
35. Peter Yun-hyoung Lee, Inverting the Logic of Scientific Discovery: Applying Common Law Patentable Subject Matter Doctrine to Constrain Patents on Biotechnology Research Tools, 19 HARV. J. L. & TECH. 79, 109(2005) ("As time and science move forward, the law struggles to keep pace while, at the same time, resisting change in order to maintain stability." (citation omitted));
36. see also FED. TRADE COMM'N, TO PROMOTE INNOVATION ch. 6, at 15 & n. 90(2003) (exploring additional criticisms).
37. Craig Allen Nard & John F. Duffy, Rethinking Patent Law's Uniformity Principle, 101 NW. U. L. REV. 1619, 1620-21(2007);
38. see also Rochelle Dreyfuss, Pathological Patenting: The PTO as Cause or Cure, 104 MICH. L. REV. 1559, 1569(2006) (arguing that the restructuring of the scientific enterprise and the problems posed by technological change should have led to major developments in patent jurisprudence);
39. Senator Orrin G. Hatch, Keynote Address at The Federal Circuit: The National Appellate Court Celebration and Introspective Symposium (Mar. 18, 2009), in 78 GEO. WASH. L. REV. 513, 514(2010) (arguing that the patent system has not been able to keep up with innovation because while "[t]he courts have interpreted the law in the light of change, [] that piecemeal process has left areas of the law unclear and out of balance-leaving some important, unresolved gaps"); Wagner, supra note 2, at 1344 ("To bind the patent law to the technological assumptions of an earlier era, or to the maturity of any particular technology, would be exceedingly foolish.").
40. See Michael Hertz, Invention, in 2 ENCYCLOPEDIA OF CREATIVITY 95, 95 (Mark A. Runco & Steven R. Pritzker eds., 1999).
41. THOMAS S. KUHN, THE STRUCTURE OF SCIENTIFIC REVOLUTIONS 66-67, 97-98(1962). Ultimately the new paradigm becomes the norm unless and until it is too displaced. Id. at 151.
42. "To raise new questions, new possibilities, to regard old problems from a new angle, requires creative imagination and marks real advance in science." ALBERT EINSTEIN & LEOPOLD INFELD, THE EVOLUTION OF PHYSICS 92(1938).
43. See EVAN I. SCHWARTZ, JUICE 11-28(2004).
44. See Eldred v. Ashcroft, 537 U. S. 186, 223(2003) (Stevens, J., dissenting) (noting that this constitutional command is the "ultimate purpose" of the patent system);
45. Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U. S. 502, 511(1917) ("[T]he primary purpose of our patent laws... is 'to promote the progress of science and useful arts.'" (quoting U. S. Const, art. I, § 8, cl. 8)).
46. Portions of this Part draw from my previous work on unplanned inventions. See Sean B. Seymore, Serendipity, 88 N. C. L. REV. 185(2009).
47. The eminent sociologist Robert K. Merton traces the term to the great eighteenth-century author Horace Walpole, who, in reference to the fairy tale The Three Princes of Serendip, wrote to a friend that these princes were "always making discoveries, by accidents and sagacity, of things which they were not in quest of." ROBERT K. MERTON & ELINOR BARBER, THE TRAVELS AND ADVENTURES OF SERENDIPITY 2(2004).
48. See Eames v. Andrews (The Driven-Well Cases), 122 U. S. 40, 56(1887) (explaining that an inventor's ignorance of scientific principles is immaterial as long as the patent's disclosure sets forth the "thing" to be done so that it can be reproduced);
49. Radiator Specialty Co. v. Buhot, 39 F.2d 373, 376 (3d Cir. 1930) ("It is with the inventive concept, the thing achieved, not with the manner of its achievement or the quality of the mind which gave it birth, that the patent law concerns itself.");
50. Earle v. Sawyer, 8 F. Cas. 254, 256 (C. C. D. Mass. 1825) (No. 4247) ("It is of no consequence, whether the tiling be simple or complicated; whether it be by accident, or by long, laborious thought... that it is first done [because the] law looks to the fact, and not to the process by which it is accomplished.").
51. 1 WILLIAM C. ROBINSON, THE LAW OF PATENTS FOR USEFUL INVENTIONS 126 & n. 1 (Boston, Little, Brown, & Co. 1890)
52. (citing Crane v. Price, (1842) 134 Eng. Rep. 239 (Ct. Com. PI.) 249 ("For if the invention be new and useful to the public, it is not material whether it is the result of long experiments and profound research, or whether of some sudden and lucky thought, or of mere accidental discovery.")).
53. Life Techs., Inc. v. Clontech Labs., Inc., 224 F.3d 1320, 1325 (Fed. Cir. 2000)
54. (citing 35 U. S. C. § 103 (a) (2000)).
55. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986);
56. ROBINSON, supra note 23, at 116 ("[T]he inventive act in reality consists of two acts; one mental, the conception of an idea; the other manual, the reduction of that idea to practice.").
57. Hybritech, 802 F.2d at 1376
58. (quoting 1 ROBINSON, supra note 23, at 532) (internal quotation marks omitted).
59. The experimental sciences are regarded as "unpredictable" because one often cannot predict if a reaction protocol that works for one embodiment will work for others. See infra note 87 and accompanying text. On the other hand, inventions in applied technologies like electrical and mechanical engineering are often regarded as "predictable" because they are rooted in well-defined, predictable factors. In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991). For a deeper exploration of the predictable-unpredictable dichotomy
60. see Sean B. Seymore, Heightened Enablement in the Unpredictable Arts, 56 UCLA L. REV. 127, 136-54(2008).
61. See JOHN JEWKES ET AL., THE SOURCES OF INVENTION 63 (2d ed. 1969).
62. Tetrafluoroethylene Polymers, U. S. Patent No. 2, 230, 654 (filed July 1, 1939). Roy J. Plunkett accidentally made the substance at DuPont in 1938. See FRAN CAPO, IT HAPPENED IN NEW JERSEY 161-62(2004). Plunkett's original target was a new Freon compound made from tetrafluoroethylene gas.
63. See ALAN G. ROBINSON & SAM STERN, CORPORATE CREATIVTRY 176(1997). Rather, the tetrafluoroethylene gas spontaneously polymerized, which, until then, had been thought impossible. Id. at 176-77.
64. See Alcohol-Catalyzed α-Cyanoacrylate Adhesive Compositions, U. S. Patent No. 2, 768, 109 (filed June 2, 1954). Eastman Kodak scientist Harry Coover synthesized cyanoacrylate with the aim of making optically clear plastic for precision gunsights. Coover discovered that the new substance was too sticky and "stuck to everything, almost instantly." Harry W. Coover, Discovery of Superglue Shows Power of Pursuing the Unexplained, RES. TECH. MCMT., Sept.-Oct. 2000, at 36, 36.
65. See Hugo Kubinyi, Chance Favors the Prepared Mind-From Serendipity to Rational Drug Design, 19 J. RECEPTOR & SIGNAL TRANSDUCTION RES. 15, 18-19(1999).
66. Key examples include the accidental discoveries of the synthetic dye indigo (1905 Nobel Prize in Chemistry) and crown ethers (1987 Nobel Prize in Chemistry). One commentator observes that impurities have played such a major role in important discoveries "that one wonders whether our modern, highly purified reagents have eliminated one fertile source of new chemistry." Peter E. Childs, Chemistry and Chance: Part 1, CHEMISTRY ACTION!, (Oct. 1, 1997), http://www.ul.ie/~childsp/CinA/issue50/chance.html. Of course, the result (X) did not become reproducible until the scientists recognized the impurity. See id.
67. 60: Buckminsterfullerene, 318 Nature 162, 162-63(1985);
68. 60 Molecule: A Retrospective, in THE FULLERENES 1, 5-6 (H. W. Kroto & D. R. M. Walton eds., 1993) (recounting how the researchers initially thought that the synthesis "was almost impossible to realize"). This discovery won the 1996 Nobel Prize in Chemistry.
69. See Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1229 (Fed. Cir. 1994)
70. (citing Oka v. Youssefyeh, 849 F.2d 581, 583 (Fed. Cir. 1988)).
71. See Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). An embodiment is a physical manifestation of an invention (like a chemical compound or a widget) described in a patent application or patent.
72. See ROBERT PATRICK MERGES, PATENT LAW AND POLICY 11 (2d ed. 1992).
73. The PHOSITA is a hypothetical construct of patent law akin to the reasonably prudent person in torts. See !Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566 (Fed. Cir. 1987) (comparing the PHOSITA to the "'reasonable man' and other ghosts in the law"). Factors relevant to constructing the PHOSITA in a particular technical field include the sophistication of the technology, the educational level of the inventor, the educational level of active workers in the field, the types of problems encountered in the art, prior art solutions to those problems, and the rapidity with which innovations are made.!
74. See Envd. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697 (Fed. Cir. 1983).
75. See Kawai v. Medesics, 480 F.2d 880, 886 (C. C. P. A. 1973). A constructive reduction to practice presumptively satisfies the disclosure requirements of 35 U. S. C. § 112 paragraph 1(2006).
76. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986);
77. see also infra note 67 (describing the Court's holding in Pfaffv. Wells Electronics, Inc., 525 U. S. 55, 67(1998), that § 102 (b) does not require an actual reduction to practice).
78. See 35 U. S. C. § 102 (g) (2006) (giving the first inventor superior rights over others so long as the inventor has "not abandoned, suppressed, or concealed" the invention).
79. See Mahurkar v. C. R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). For example, the inventor can obtain an earlier invention date by showing that it was physically made before the filing date. Id.
80. Patent prosecution describes the process by which an inventor, usually through the help of an attorney, files an application with the PTO for examination. See generally JANICE M. MUELLER, PATENT LAW 42-63 (3d ed. 2009) (discussing Supreme Court's holding that § 102 (b) does not require an actual reduction to practice before an invendon can be patented).
81. See Mahurkar, 79 F.3d at 1576-77 (explaining that once the alleged infringer has presented prior art that and cipates the claims, the patentee has the burden to offer evidence showing he invented the subject matter before the publication date of the prior art document). Patent litigation focuses on issued patents. A patentee whose rights have been infringed can compel an accused infringer to stop the infringing acdvity and pay for damages arising from the infringement that has already occurred. See Mueller, supra note 45, at 325-31.
82. Patent rights are only awarded to the first inventor. See 35 U. S. C. § 102 (g) (barring issuance of a patent when another inventor has made the invention before the applicant). When two parties claim the same invention, a PTO tribunal known as the Board of Patent Appeals and Interferences institutes an "interference" proceeding to determine priority (i.e., which party is endded to a patent). See infra note 59.
83. This hypothetical example is very loosely based on ferrocene, the discovery and characterization of which led to the 1973 Nobel Prize in Chemistry. The researchers set out to make an organic compound (a colorless liquid) but instead recovered an orange powder of "remarkable stability." See T. J. Kealy & P. L. Pauson, A New Type of Organo-Iron Compound, 168 NATURE 1039, 1040(1951);
84. see also Peter L. Pauson, Ferrocene-How It All Began, 637-39 J. ORGANOMETALLIC CHEMISTRY 3, 3-6(2001) (discussing the discovery of ferrocene). Ferrocene is the first and best-known example of a metallocene which, in simple terms, describes a metal atom encapsulated between two aromatic rings. Its discovery and characterization spawned the rapid growth of organometallic chemistry in the second half of the twentieth century.
85. B is called a catalyst. These are substances (often metals) which speed up a reaction. Catalysts are typically recovered upon the completion of the reaction. See ENCYCLOPEDIA OF SCIENCE AND TECHNOLOGY 90 (James Trefil ed., 2001).
86. One cannot obtain a patent on a compound merely because it is novel; it must also be useful. See Brenner v. Manson, 383 U. S. 519, 534-35(1966). Utility is determined as of the applicant's filing date.
87. See In re Brana, 51 F.3d 1560, 1567 n. 19 (Fed. Cir. 1995).
88. See Technitrol, Inc. v. United States, 440 F.2d 1362, 1369 (Ct. CI. 1971) (describing conception as "a pivotal if somewhat nebulous notion in patent law");
89. Douglas Lichtman et al., Strategic Discbsure in the Patent System, 53 VAND. L. REV. 2175, 2186(2000) (referring to conception as "a technical concept").
90. See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1206 (Fed. Cir. 1991) (explaining that conception of a chemical compound is lacking until the inventor "[is] able to define it so as to distinguish it from other materials, and to describe how to obtain it"
91. (citing Oka v. Youssefyeh, 849 F.2d 581, 583 (Fed. Cir. 1988))); supra note 36 and accompanying text.
92. See Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1229 (Fed. Cir. 1994) (noting that subsequent experimentation that reveals uncertainty as to the chemical's specific structure or identity can undermine conception and render it incomplete).
93. See Estee Lauder Inc. v. L'Oreal, S. A., 129 F.3d 588, 593 (Fed. Cir. 1997) (explaining that conception and reduction to practice cannot be established retroactively because there must be contemporaneous recognition and appreciation of the invention).
94. This reasoning is in accord with the general rule under the conception-reduction to practice framework that "[r]eduction to practice follows conception. " Mahurkar v. C. R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996). There is a narrow exception known as the doctrine of simultaneous conception and reduction to practice (SCRTP).
95. See Smith v. Bousquet, 111 F.2d 157, 159 (C. C. P. A. 1940) (establishing the doctrine). SCRTP arises in the rare instance where an inventor cannot formulate a complete picture of the invention until "reduc[ing] the invention to practice through a successful experiment." Burroughs Wellcome, 40 F.3d at 1229;
96. cf. Alpert v. Slatin, 305 F.2d 891, 894 (C. C. PA. 1962) (explaining that the doctrine is reserved for "a residuum of cases where results at each step do not follow as anticipated, but are achieved empirically by what amounts to trial and error"). For an example of the doctrine's application
97. see Amgen, 927 F.2d at 1206, which held that for an invention claiming a purified DNA sequence for encoding a protein, conception did not occur until after the fragment had been isolated and characterized. In sum, SCRTP arises when actual experimentation (which is also sufficient to fulfill the requirements of reduction to practice) is necessary to supply the knowledge to complete conception.
98. See 2 R. CARL MOY, MOY'S WALKER ON PATENTS § 8:54 (4th ed. 2007). Turning to the hypodietical example used in the text, since it is clear that one could have formulated a mental picture of X before engaging in experimentation, SCRTP need not apply.
99. See 35 U. S. C. § 135(2006). The Board of Patent Appeals and Interferences determines which party is entitled to a patent. See supra note 47. The party that first reduced the invention to practice usually wins; however, a party that was "first to conceive the invention but last to reduce it to practice" (either actively or constructively) will win if that party "demonstrates reasonable diligence [toward] reduction to practice."
100. Cooper v. Goldfarb, 240 F.3d 1378, 1382 (Fed. Cir. 2001) (citing § 102 (g)).
101. See Sletzinger v. Lincoln, 410 F.2d 808, 810 (C. C. P. A. 1969) (exemplifying the rule in a chemical example);
102. Hull v. Davenport, 90 F.2d 103, 105 (C. C. PA 1937) (articulating the rule). Preparation of the patent application can count as reasonable diligence toward a constructive reduction to practice.
103. See Bey v. Kollonitsch, 806 F.2d 1024, 1027-28 (Fed. Cir. 1986).
104. There is little doubt that the current patent laws value mental activity over physical activity. See Pfaff v. Wells Elecs., Inc., 525 U. S. 55, 60(1998) ("[T]he word 'invention' in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea.");
105. Burroughs Wellcome, 40 F.3d at 1227 ("Conception is the touchstone of inventorship....");
106. Dan L. Burk, Feminism and Dualism in Intellectual Property, 15 AM U. J. GENDER SOC. POL'Y & L. 183, 192-93(2007) ("[P]atent law elevate [s] mental effort over physical effort, conceptual production over material production.... [The physical] portions of the creative process are excluded, invisible, [and] unrecognized. This version of creative effort effectively... attribute [s] the entirety of creative production to a particular, discrete act of creative vision. ").
107. See King Instrument Corp. v. Otari Corp., 767 F.2d 853, 860 (Fed. Cir. 1985) (discussing the underlying policies of the on-sale bar).
108. 525 U. S. 55(1998).
109. See id. at 57-60. The "critical date" is the date "one year before the date on which the patent application was filed." Monon Corp. v. Stoughton Trailers, Inc., 23 F.3d 1253, 1257 (Fed. Cir. 2001). So, for example, if an inventor filed an application on April 19, 1982, the critical date for § 102 (b) purposes is April 19, 1981. If a triggering event occurred before the earlier date, the inventor (and for that matter, anyone else) has lost the right to a patent.
110. See Pfaff, 525 U. S. at 57-58.
111. Pfaff, 525 U. S. at 67. The Court explained that § 102 (b) does not require an actual reduction to practice before an invention can be patented. See id. at 60 ("[T]he word 'invention' in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea.").
112. See Abbott Labs. v. Geneva Pharms., Inc., 182 F.3d 1315, 1318 (Fed. Cir. 1999) ("We disagree that proof of conception was required. The fact that the claimed material was sold under circumstances in which no question existed that it was useful means that it was reduced to practice.");
113. Scaltech Inc. v. Retec/Tetra, L. L. C., 178 F.3d 1378, 1383-84 (Fed. Cir. 1999) ("Nor is there a requirement that [the patentee] must have recognized the significance of these limitations at the time of offer. If the [material] offered for sale... possessed each of the claim limitations, then [it] was on sale, whether or not the seller recognized that his [material] possessed the claimed characteristics." (citations omitted)).
114. 182 F.3d 1315 (Fed. Cir. 1999).
115. See id. at 1318-19. But see Timothy R. Holbrook, The More Things Change, the More They Stay the Same: Implications o/Pfaff v. Wells Electronics, Inc. and the Quest for Predictability in the On-Sale Bar, 15 BERKELEY TECH. L. J. 933, 958 n. 142(2000) (arguing that the court rigidly applied PfajJand adopted a strict interpretation of reduction to practice). But the on-sale bar may not be triggered if additional development of the invention occurs after the offer for sale because it might indicate that the invention was not complete.
116. See Space Sys./Loral, Inc. v. Lockheed Martin Corp., 271 F.3d 1076, 1080-81 (Fed. Cir. 2001)
117. (citing Pfaff, 525 U. S. at 68 n. 14).
118. A witnessed or signed inventor's notebook, as well as other documentary and physical evidence generated in the laboratory, can serve as sufficient evidence of reduction to practice. See Medichem, S. A. v. Rolabo, S. L., 437 F.3d 1157, 1169-70 (Fed. Cir. 2006).
119. Cf. Mahurkar v. C. R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) ("[T]he person 'who first conceives... may date his patentable invention back to the time of its conception, if he connects the conception with its reduction to practice by reasonable diligence on his part, so that they are substantially one continuous act.'"
120. (quoting Christie v. Seybold, 55 F. 69, 76 (6th Cir. 1893))).
121. In discussing Abbott and related cases, two commentators contend that "the determining factor appears to be that the public has already benefited from the presence of the claimed invention in the prior art, even though it may not have been aware of the invention itself." Dan L. Burk & Mark A. Lemley, Inherency, 47 WM. & MARY L. REV. 371, 379(2005). But they point out that priority cases are distinguishable because (in accord with Federal Circuit jurisprudence) the ability to describe the compound in detail is required to show possession. See id. at 394. Accordingly, they argue that an asymmetry makes sense as a policy matter because "an inherent but unappreciated prior use that benefits the public will not qualify for a patent, but it will prevent others from later patenting the invention being used." Id. While public benefit can explain the outcome in Abbott, returning to the hypothetical, knowledge of Xs structure at the time of the accident should be the sine qua non for showing possession on Day One, particularly since structural details are diligently obtained shortly thereafter.
122. See John F. Duffy, Rethinking the Prospect Theory of Patents, 71 U. CHI. L. REV. 439, 472(2004) ("By allowing a patent to occur before firms commit the bulk of the expenditures necessary to develop the invention, the prospect system reduces wasteful expenditures on duplication and thus makes the process of investing in innovation more efficient.");
123. Edmund W. Kitch, The Nature and Function of the Patent System, 20 J. L. & Econ. 265, 267-70(1977) (arguing that broad patents should be granted for technological "prospects" at an early stage of research and development);
124. Dana Rohrabacher & Paul Crilly, The Case for a Strong Patent System, 8 HARV. J. L. & TECH. 263, 271(1995) (arguing that the ability to obtain patent protection at the early stages of the inventive process is necessary to maintain the incentive for the investment of venture capital in research and development).
125. See Sean B. Seymore, The Teaching Function of Patents, 85 NOTRE DAME L. REV. 621, 659-61(2010).
126. See Clarisa Long, Proprietary Rights and Why Initial Allocations Matter, 49 EMORY LJ. 823, 824-27(2000). While it is true that the losing party (or other innovators) can obtain an improvement patent for X, a novel and nonobvious variant of X, the holder of this (narrower) patent cannot practice X'without a license from the holder of the (broader) patent to X
127. See Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 COLUM. L. REV. 839, 860-61(1990) (describing "dominant" and "subservient" patents). For the sake of completeness, it is also true that the holder of the patent to X cannot practice X without a license. See id. at 861 n. 96. ("Where one patent is an improvement on another patent, 'neither of the two patentees can lawfully use the invention of the other without the other's consent.'"
128. (quoting Cantrell v. Wallick, 117 U. S. 689, 694(1886))).
129. See Kewanee Oil Co. v. Bicron Corp., 416 U. S. 470, 481(1974) (explaining that when the information disclosed in a patent becomes publicly available it adds to the "general store of knowledge" and assumedly will stimulate ideas and the eventual development of further significant advances in the art);
130. Graham v. John Deere Co., 383 U. S. 1, 6(1966) (noting that adding to knowledge is required by the Intellectual Property Clause of the Constitution, U. S. Const, art. I, § 8, cl. 8).
131. Note, The Disclosure Function of the Patent System (or Lack Thereof), 118 HARV. L. REV. 2007, 2024-25(2005) (citation omitted). This is true, at least in part, because an inventor need not create a working embodiment or engage in any experimentation before obtaining the patent. Rather, an inventor can describe an invention with fictitious, constructed examples (which is entirely consistent with the doctrine of constructive reduction to practice). See Seymore, supra note 30, at 143-45.
132. See Eisai Co. v. Dr. Reddy's Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008);
133. see also Singh v. Brake, 317 F.3d 1334, 1344 (Fed. Cir. 2003) ("[Re]placing a single functional group on a chemical compound can often have highly unpredictable results.").
134. See In reBrana, 51 F.3d 1560, 1566 n. 17 (Fed. Cir. 1995) ("In the field of chemistry generally there may be times when the well-known unpredictability of chemical reactions will alone be enough to create a reasonable doubt as to the accuracy of a particular broad statement put forward as enabling support for a claim."
135. (quoting In re Marzocchi, 439 F.2d 220, 223 (C. C. P. A. 1971))); Seymore, supra note 30, at 138.
136. The Court often describes disclosure as the quid pro quo for the inventor's right to exclude. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U. S. 55, 63(1998) ("[T]he patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time.").
137. ROYSTON M. ROBERTS, SERENDIPITY, at ix (1989).
138. A serendipitous event "involves a wild leap outside the limits of what was until that moment supposed, and thereby enables science to advance into domains of understanding that were not previously imagined." JOHN ZIMAN, REAL SCIENCE 217(2000) (footnote omitted).
139. For example, when an applicant claims a perpetual motion machine, the examiner can request a working model. See U. S. PATENT & TRADEMARK OFFICE, MANUAL OF PATENT EXAMINING PROCEDURE § 608.03 (8th ed. 2001, rev. 2008) [hereinafter MPEP]. This is an exception to the general rule that an applicant need not actually reduce an invention to practice before obtaining a patent. See supra notes 39-41 and accompanying text.
140. 35 U. S. C. § 101(2006) ("Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter... may obtain a patent....").
141. See Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1358 (Fed. Cir. 1999) ("The utility requirement of 35 U. S. C. § 101 mandates that any patentable invention be useful and, accordingly, the subject matter of the claim must be operable.");
142. Newman v. Quigg, 877 F.2d 1575, 1581 (Fed. Cir. 1989) ("[A] device lacks utility [if]... it does not operate to produce what [the inventor] claims [that] it does."
143. (quoting Newman v. Quigg, 681 F. Supp. 16, 23 (D. D. C. 1988))).
144. The PTO can establish reasonable doubt if the applicant's disclosure "suggest[s] an inherendy unbelievable undertaking or involve [s] implausible scientific principles." In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999) (alterations in original)
145. (quoting In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995)).
146. In re Ferens, 417 F.2d 1072, 1074 (C. C. P. A. 1969).
147. See Raytheon Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir. 1983). During examination, the examiner must give claim terms their broadest reasonable interpretation as they would be understood by a PHOSITA yet consistent with the applicant's disclosure.
148. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
149. An applicant must enable a PHOSITA to make and use the claimed invention without undue experimentation. 35 U. S. C. § 112 para. 1(2006).
150. See In re Ziegler, 992 F.2d 1197, 1200-01 (Fed. Cir. 1993)
151. ("The how to use prong of section 112 incorporates as a matter of law the requirement of 35 U. S. C. § 101....
152. If the application fails as a matter of fact to satisfy 35 U. S. C. § 101
153. then the application also fails as a matter of law to enable [a PHOSITA] to use the invention under 35 U. S. C. § 112." (citations omitted)).
154. See In re Cortright, 165 F.3d at 1357.
155. In re Gaubert, 524 F.2d 1222, 1224-25 (C. C. P. A. 1975). Evidentiary sources may include peer-reviewed materials, non-peer-reviewed materials, anecdotal information, information from related technologies, and logic.
156. See In re Dash, 118 F. App'x 488, 491 (Fed. Cir. 2004).
157. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
158. An applicant can likely mount a successful attack if the examiner produces no (or insufficient) documentary evidence to support a finding of inoperability; contends that the invention is crude or inferior; or compels the inventor to explain precisely how or why an invention works. See Diamond Rubber Co. v. Consol. Rubber Tire Co., 220 U. S. 428, 435-36(1911) (explaining that an inventor need not understand the scientific principles underlying the invention);
159. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001) (explaining that with respect to core facts, the PTO cannot simply draw conclusions as to what is common knowledge without concrete evidentiary support);
160. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 960 n. 12 (Fed. Cir. 1986) ("It is possible for an invention to be less effective than existing devices but nevertheless meet the statutory criteria for patentability.");
161. MPEP, supra note 96, § 2107.02 (encouraging examiners to provide documentary evidence whenever possible).
162. See In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000) (per curiam).
163. But see In re Novak, 306 F.2d 924, 928 (C. C. P. A. 1962) (noting that rebuttal evidence is unnecessary if a PHOSITA would obviously accept the applicant's allegations as true).
164. When the applicant submits rebuttal evidence, the examiner must "start over" and "consider all of the evidence anew." In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
165. Absent any other grounds of unpatentability, the applicant is entitled to the patent. See In re Oetiker, 977 F.2d at 1445.
166. See Raytheon Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir. 1983).
167. In re Swartz, 232 F.3d at 863. On appeal, the Federal Circuit reviews a finding of (in) operability and the factual issues underlying enablement deferentially.
168. In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000) (explaining that for appeals from the PTO, the court reviews legal conclusions de novo and factual findings for substantialevidence).
169. See Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1377 (Fed. Cir. 2003) (Newman, J., dissenting).
170. To begin, the patent statute permits the examiner to request a working model of an invention. See 35 U. S. C. § 114(2006) ("The Director may require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention. "). However, the PTO rarely invokes the requirement unless the invention involves perpetual motion. See supra note 96.
171. See MPEP, supra note 96, at § 608.03.
172. In re Jolles, 628 F.2d 1322, 1327 (C. C. P. A. 1980).
173. In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995).
174. In re Pottier, 376 F.2d 328, 330 (C. C. P. A. 1967) (citation omitted).
175. In re Gazave, 379 F.2d 973, 978 (C. C. P. A. 1967) (citation omitted).
176. See HENRY H. BAUER, SCIENTIFIC LITERACY AND THE MYTH OF THE SCIENTIFIC METHOD 44-48(1992). The mechanics of peer review typically works as follows. First, the researcher submits the work to a journal. Second, the editor sends it to one or more reviewers knowledgeable about the problem to judge its merit (uniqueness, methodology, adequacy of research design, and potential contribution to the field). Third, the editor makes a final publication decision.
177. See Peter Hernon & Candy Schwartz, Peer Review Revisited, 28 LIBR. & INFO. SCI. RES. 1, 1(2006).
178. See FREDERICK GRINNELL, EVERYDAY PRACTICE OF SCIENCE 75(2009) (noting that a scientist with a new research claim must "get by the gatekeepers").
179. Juan Miguel Campanario, Have Referees Rejected Some of the Most-Cited Articles of All Times?, 47 J. AM. SOC'Y INFO. SCI. 302, 302(1996).
180. Relatedly, peer review has been the subject of considerable criticism from diose within and outside of mainstream science. See, e.g., EUEZER GEISLER, THE METRICS OF SCIENCE AND TECHNOLOGY 234(2000) (collecting criticisms);
181. Rustum Roy & James R. Ashburn, The Perils of Peer Review, 414 NATURE 393, 393-94(2001) (same).
182. See Raymond E. Spier, Peer Review and Innovation, 8 SCI. & ENGINEERING ETHICS 99, 102(2002). For stories and examples of delayed recognition
183. see Bernard Barber, Resistance by Scientists to Scientific Discovery, 134 SCIENCE 596, 597-602(1961), providing examples dating back to the nineteenth century;
184. David F. Horrobin, The Philosophical Basis of Peer Review and the Suppression of Innovation, 263 J. AM. MED. ASS'N 1438, 1440-41(1990), providing eighteen examples;
185. and Moti Nissani, The Plight of the Obscure Innovator in Science: A Few Reflections on Campanario's Note, 25 SOC STUD. SCI. 165, 171-76(1995), supplying forty-seven examples.
186. As one scientist argues, "[It] is not permissible... to write or say something which contradicts the shared paradigm, and expect it to be tolerated.... because the shared paradigm, a necessary frame of reference in normal scientific communication, would be undermined." Ivor Catt, The Rise and Fall of Bodies of Knowledge, 12 INFO. SCIENTIST 137, 138-39(1978)
187. reprinted in IVOR CATT, THE CATT ANOMALY app. 1, at 31, 33 (2d ed. 2001), available at http://www.ivorcatt.com/28anorn.htm. Often it is better for a scientist to "stop[] producing new, and perhaps unsettling, ideas" because "[rjewriting or extending the best work of others, or one's best pieces... could be easier, more rewarding, and more acceptable."
188. Graciela Chichilnisky, Response, in REJECTED 56, 67 (George B. Shepherd ed., 1995).
189. See DAVID SHATZ, PEER REVIEW 10(2004); see also Chichilnisky, supra note 131, at 57 ("In my experience, the more innovative and interesting the paper, the more likely it is to be rejected....").
190. See DARYL E. CHUBIN & EDWARD J. HACKETT, PEERLESS SCIENCE 90(1990) (arguing that journal peer review works against innovation and reinforces scientific dogma);
191. GREGORY N. DERRY, WHAT SCIENCE IS AND HOW IT WORKS 138(1999) ("Very innovative ideas and unexpected results tend to get selectively filtered out, making peer review a force for conservatism in science.");
192. See STEVE FULLER, SCIENCE 65(1997) (explaining that since each scientific discipline has a few gatekeepers who pass judgment on everyone else, offending one "can be disastrous, much like failure to pay protection money to the local mafia boss").
193. See David F. Horrobin, Peer Review: A Philosophically Faulty Concept Which Is Proving Disastrous for Science, 5 BEHAV. & BRAIN SCI. 217, 218(1982) (arguing that since brilliance is rare, a less-than-brilliant reviewer probably would not recognize it and reject the claim)
194. reprinted in PEER COMMENTARY ON PEER REVIEW 33, 34 (Stevan Hamad ed. 1982).
195. For example, the Patent Act contains the loss-of-right provision discussed earlier, § 102 (b), which precludes patentability for the inventor's own conduct. See 35 U. S. C. § 102 (b) (2006). Particularly relevant here is that an inventor who discloses the invention in a printed publication (including a published patent application) more than one year before filing cannot obtain a patent. In the context of the hypothetical, this means that the application filed at time Tcan defeat patentability at time L.
196. See In re Katz, 687 F.2d 450, 454 (C. C. P. A. 1982).
197. See CEES J. HAMELINK, THE TECHNOLOGY GAMBLE, at x (1988) (u[T]he future cannot be seen as the linear extension of the past and it is essential to believe that what was impossible yesterday is tomorrow's possibility!");
198. H. LEE MARTIN, TECHONOMICS 89(2006) ("[W]hat was impossible yesterday... becomes possible today and commonplace tomorrow.").
199. See, e.g., LESLIE ALAN HORVTTZ, EUREKA! 1-10(2002) (exploring various factors).
200. See, e.g., In re Swartz, 232 F.3d 862 (Fed. Cir. 2000) (per curiam) (generating energy with "cold fusion");
201. Newman v. Quigg, 877 F.2d 1575 (Fed. Cir. 1989) (claiming a perpetual motion machine);
202. Fregeau v. Mossinghoff, 776 F.2d 1034 (Fed. Cir. 1985) (using a magnetic field to alter the taste of food);
203. In re Eltgroth, 419 F.2d 918 (C. C. P. A. 1970) (claiming a method for controlling the aging process);
204. In re Ruskin, 354 F.2d 395 (C. C. P. A. 1966) (increasing the energy output of fossil fuels through exposure to a magnetic field).
205. See David Hricik, Aerial Boundaries: The Duty of Candor as a Limitation on the Duty of Patent Practitioners to Advocate for Maximum Patent Coverage, 44 S. TEX. L. REV. 205, 224-29(2002) (explaining that examiners do not have research laboratories and have limited access to pertinent technical information).
206. See Joseph Farrell & Robert P. Merges, Incentives to Challenge and Defend Patents: Why Litigation Won't Reliably Fix Patent Office Errors and Why Administrative Patent Review Might Help, 19 BERKELEY TECH. L. J. 943, 944-45(2004) (discussing biased procedures at the PTO which favor hasty examiner analysis and skewed incentives);
207. Arti K. Rai, Growing Pains in the Administrative State: The Patent Office's Troubled Quest for Managerial Control, 157 U. PA. L. REV. 2051, 2063-67(2009) (describing examiner compensation and incentives). The amount of time the PTO allots for an examiner to dispose of a case depends on factors like seniority and the technology involved.
208. See U. S. GOV'T ACCOUNTABILITY OFFICE, GAO-08-527T, U. S. PATENT AND TRADEMARK OFFICE: HIRING EFFORTS ARE NOT SUFFICIENT TO REDUCE THE PATENT APPLICATION BACKLOG 7(2008), available at http://www.gao.gov/new.items/d08527t. pdf (discussing production goals).
209. For thoughts on how this technology gap affects patent examination, see JAMES BESSEN & MICHAEL J. MEURER, PATENT FAILURE 161(2008), suggesting that the examiners' unfamiliarly with new technologies and lack of knowledge may hurt patent examination quality;
210. and John R. Allison & Ronald J. Mann, The Disputed Quality of Software Patents, 85 WASH. U. L. REV. 297, 314(2007), contending that "patent examiners unfamiliar with a cutting-edge technology like software may be less capable of assessing the quality of the disclosure or of the innovation than they are in technological areas with which they are more familiar".
211. See Daniel C. Rislove, Comment, A Case Study of Inoperable Inventions: Why Is the USPTO Patenting Pseudosciencel 2006 WIS. L. REV. 1275, 1280.
212. See id. For example, there was a time when the PTO and several judges believed that clinical evidence or FDA approval should have been a prerequisite for patenting drugs which appeared unsafe or risky. Compare In re Hartop, 311 F.2d 249, 261 (C. C. P. A. 1962) (Smith, J., concurring) (criticizing the PTO's position that it was carrying out its "statutory duty" when it required proof of "safety and effectiveness in man"), with id. at 263-66 (Worley, C. J., dissenting) (agreeing with the PTO that Congress intended for it to work cooperatively with other agencies to ensure safety and effectiveness). Now it is clear that drug safety is not the PTO's responsibility.
213. See Scott v. Finney, 34 F.3d 1058, 1063-64 (Fed. Cir. 1994) (explaining that § 101 and other provisions of the patent statutes do not establish safety as a patentability criterion);
214. In re Anthony, 414 F.2d 1383, 1395 (C. C. P. A. 1969) (same);
215. see also In re Sichert, 566 F.2d 1154, 1160 (C. C. P. A. 1977) (noting that a minimal level of safety will satisfy §101).
216. In re Citron, 325 F.2d 248, 253 (C. C. P. A. 1963);
217. cf. Isenstead v. Watson, 157 F. Supp. 7, 9 (D. D. C. 1957) (contenting that the patent grant "gives a kind of official imprimatur to the [invention] in question on which as a moral matter some members of the public are likely to rely"). The fear is that some might view the patent grant, albeit improperly, as the government's endorsement of the technology.
218. See Cynthia M. Ho, Splicing Morality and Patent Law: Issues Arising from Mixing Mice and Men, 2 WASH. U. J. L. & POL'Y 247, 253 n. 29(2000) (noting that issuing patents covering controversial technologies might be viewed as a government endorsement of it);
219. Timothy R. Holbrook, The Expressive Impact of Patents, 84 WASH. U. L. REV. 573, 599-600(2006) (explaining that governments may choose to deny patents on certain inventions in order to eliminate the signal of perceived endorsement or encouragement). Relatedly, it is also true that "a [patentee] may advertise its patent to convince gullible consumers that a patent represents the government's endorsement or imprimatur that the advertised product is actually effective."
220. Christopher R. Leslie, Patents of Damocles, 83 IND. L. J. 133, 144(2008).
221. For a view contrary to Citron and Isenstead, see In re Hartop, 311 F.2d at 263, stating, "[T]he issuance of a patent is not in fact an 'imprimatur' as to the safety and effectiveness.... [A patent] is no guarantee of anything.... The public, therefore, is in no way protected either by the granting or withholding of a patent."
222. See, e.g., In re Citron, 325 F.2d at 253 (explaining that an effective cure for cancer appeared to be incredible in light of knowledge in the art);
223. Ex parte Moore, 128 U. S. P. Q. (BNA) 8, 9-10 (Pat. Off. Bd. App. 1960) (determining that any suggestion that the claimed compounds could treat cancer was incredible and misleading).
224. See In re Citron, 325 F.2d at 253 (determining that this was an appropriate standard for an invention "of as much public importance as is the effective treatment of cancer");
225. In re Novak, 306 F.2d 924, 928 (C. C. P. A. 1962).
226. See In rejolles, 628 F.2d 1322, 1327-28 (C. C. P. A. 1980) (reversing a rejection for a drug claiming to effectively induce remission in leukemia patients).
227. In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995). As to the issue of heightened proof for therapeutics, the court has noted that requiring evidence such as FDA approval to satisfy § 101 could "eliminatfe] an incentive to pursue, through research and development, potential cures in many crucial areas such as the treatment of cancer." Id. at 1568.
228. See also Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 150-51(1989) (noting that the patent system seeks to incentivize inventors who in turn provide the public with new and useful advances in technology);
229. COMM. ON INTELLECTUAL PROPERTY RIGHTS IN THE KNOWLEDGE-BASED ECON., NAT'L RESEARCH COUNCIL, A PATENT SYSTEM FOR THE 21ST CENTURY 41 (Stephen A. Merrill et al. eds., 2004) (explaining that accommodating new technologies is crucial for innovation);
230. cf. Robert P. Merges, Commercial Success and Patent Standards: Economic Perspectives on Innovation, 76 CALIF. L. REV. 803, 876(1988) (arguing that the patent system should not employ a patentability test which compromises its primary goal to promote technological progress).
231. See, e.g., Mark A. Lemley, Rational Ignorance at the Patent Office, 95 NW. U. L. REV. 1495, 1504-05(2001) (suggesting that a firm may obtain a patent to "stake their claim" in an area of technology to signal to investors and competitors that it operates at the cutting edge);
232. Clarisa Long, Patent Signals, 69 U. CHI. L. REV. 625, 647-49(2002) (arguing that firms obtain patents to show their R&D acumen or technological capacity).
233. See O'Reilly v. Morse, 56 U. S. (15 How.) 62, 121(1853) (explaining that a patentee "can lawfully claim only what he has invented and described, and if he claims more his patent is void");
234. Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999) (explaining that the purpose of the enablement requirement is to "ensure [] that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims"). The scope of enablement is the sum of what is taught in the written description plus what is known by a PHOSITA "without undue experimentation. " See id.
235. See Bayer AG v. Schein Pharms., Inc., 301 F.3d 1306, 1314 (Fed. Cir. 2002) ("The enablement requirement ensures... 'that a specification shall disclose an invention in such a manner as will enable one skilled in the art to make and utilize it.'"
236. (quoting In re Gay, 309 F.2d 769, 772 (C. C. P. A. 1962)).
237. As the Federal Circuit recently explained: Enablement is closely related to the requirement for utility..., [which] prevents mere ideas from being patented. As we noted [previously], "[pjatent protecdon is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.... Tossing out the mere germ of an idea does not constitute enabling disclosure." In re '318 Patent Infringement Litig., 583 F.3d 1317, 1323-24 (Fed. Cir. 2009) (fourth and fiftfi alterations in original)
238. (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997)).
239. 273 F. App'x 945 (Fed. Cir. 2008) (per curiam) (nonprecedential).
240. See In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (holding that the applicant failed to enable a claim covering " any and all live, non-pathogenic vaccines, and processes for making such vaccines").
241. The Second Law of Thermodynamics states that it is impossible to convert heat completely to work without some energy loss. See R. K. RAJPUT, ENGINEERING THERMODYNAMICS 232 (3d ed. 2010). A machine that could do so would be 100% efficient. Such machines are referred to as perpetual motion machines of the second kind. See id. Curiously, the term "perpetual motion" does not appear either in the PTO documents or in the Federal Circuit opinion.
242. Brief for Appellee Director of the United States Patent and Trademark Office at 7-8
243. In re Speas, 273 F. App'x 945 (No. 2008-1076) [hereinafter Brief for Appellee].
244. See In re Speas, 273 F. App'x at 946.
245. In his commentary on In re Speas, Professor Crouch reached a similar conclusion: "Although this type of case is fun to read, it also provides an interesting lesson-that [diere are] tools to reject inadequate patent applications on their merits without resorting to broad exclusions of particular subject matter." Dennis Crouch, CAFC Rejects Patent on Invention to Overcome the Second Law of Thermodynamics, Patently-O (May 1, 2008, 2:32 PM), http://www.patendyo.com/patent/2008/05/cafc-rejects-pa.html.