Point of novelty

Northwestern University Law Review

Volumn 105, Issue 3, 2011, Pages 1253-1280

  Lemley, Mark A ^a  

^a STANFORD LAW SCHOOL   (United States)

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EID: 84858239831     PISSN: 00293571     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (16)

1. The English Crown used to award patents that conferred the exclusive right to make a particular product as political favors. A courtier might receive the exclusive right to make playing cards, for instance, not because he had invented the playing card but simply as a means of acquiring money or regulating trade in the cards. See, e.g., Darcy v. Allin, (1599) 74 Eng. Rep. 1131 (K.B.); 11 Co. Rep. 84b. For discussion of the importance of these exceptions, see Ramon A. Klitzke, Historical Background of the English Patent Law, 41 J. Pat. Off. Soc'y 615 (1959). That practice ended with the Statute of Monopolies in 1624.
2. See, e.g., Statute of Monopolies, 1624, 21 Jac., c. 3, § 6 (Eng.); Klitzke, at 624 (citing an English proclamation in 1327 that tied the granting of franchises to the encouragement of progress in cloth-making).
3. See, e.g., Michele Boldrin & David K. Levine, Against Intellectual Monopoly (2008) (arguing that patent law impedes innovation and should be abolished).
4. See, e.g., Dan L. Burk & Mark A. Lemley, The Patent Crisis and How the Courts Can Solve It 66-78 (2009) (describing various conflicting theories about how the patent system promotes innovation).
5. See 35 U.S.C. § 102 (2006) (requiring novelty).
6. See, e.g., Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 875 (Fed. Cir. 1985); see also Oskar Liivak, Rescuing the Invention from the Cult of the Claim 1 (Feb. 24, 2011) (unpublished manuscript), http://ssrn.com/abstract=1769270 ("The term 'invention' appears in many critical statutory locations. Yet we have been taught, perhaps brainwashed, to give the term zero substantive import. Substantive use of the invention has been purged from patent doctrine. Instead every substantive question in patent law is answered by reference to the claims, the legal descriptions of the 'metes and bounds' of a patent's exclusionary reach.").
7. Jeffrey A. Lefstin, The Formal Structure of Patent Law and the Limits of Enablement, 23 Berkeley Tech. L.J. 1141, 1222-25 (2008).
8. Larami Corp. v. Amron, 27 U.S.P.Q.2d 1280, 1285-86 (E.D. Pa. 1993).
9. White v. Dunbar, 119 U.S. 47, 51-52 (1886) (noting that a claim should not be treated "like a nose of wax which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express.... The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms. ").
10. See 35 U.S.C. § 284 (2006); Mark A. Lemley, Distinguishing Lost Profits from Reasonable Royalties, 51 Wm. & Mary L. Rev. 655, 655 (2009).
11. See Daralyn J. Durie & Mark A. Lemley, A Structured Approach to Calculating Reasonable Royalties, 14 Lewis & Clark L. Rev. 627, 632 (2010).
12. See Michael Risch, Everything Is Patentable, 75 Tenn. L. Rev. 591, 624-28 (2008).
13. See Dan L. Burk & Mark A. Lemley, Inherency, 47 Wm. & Mary L. Rev. 371, 407-08 (2005) (explaining the inherency doctrine).
14. I believe there is room for a narrow abstract ideas doctrine focused on overclaiming. See Lemley, Risch, Sichelman & Wagner, at 1328-29. But that doctrine would not exclude any novel element of a patent claim in deciding whether the invention was patentable subject matter.
15. See, e.g., Brenner v. Manson, 383 U.S. 519, 535 (1966).
16. O'Reilly v. Morse, 56 U.S. (1 How.) 62, 112-14 (1854); see also Lemley, Risch, Sichelman & Wagner, at 1329-32, 1340.