Patent law is constantly evolving to accommodate advances in science and technology. But, for a variety of reasons, some aspects of patent doctrine have not evolved over time leading to a growing disconnect between the patent system and certain technical communities. Particularly vulnerable to the ill effects of this disconnect are "atypical" inventions, which this Article defines as those in which either (1) a technical aspect of the invention or the inventive process does not conform to an established legal standard in patent law or (2) the technical underpinnings of the invention depart from well-established scientific paradigms. An example of the former is an invention which occurs by accident; an example of the latter is an invention which seems incredible in light of contemporary knowledge in the relevant field. Since these inventions often spark a paradigm shift in scientific and technological understanding, they have a high likelihood of stimulating significant creative activity and ultimately promoting the patent system's overarching goal to promote scientific and technological progress. Thus, this Article argues that the patent system should evolve to better accommodate these inventions.
INTRODUCTION I. ACCIDENTAL INVENTIONS A. The Inadequacies of the Current Invention Standard 1. The Pathway to Invention 2. Unpredictability B. Pinpointing Invention 1. Navigating the Current Framework 2. Problems a. Conception b. Reduction to Practice c. Priority Issues C. An Alternative Approach 1. Rethinking Invention Completeness 2. Policy Considerations a. Tradeoffs b. On Disclosure and Follow-on Innovation II. INCREDIBLE INVENTIONS A. Assessing Credibility 1. Red Flags in the Patent Office 2. Examining Incredible Inventions B. Limits of the Current Paradigm 1. Proof Problems 2. The Credibility Lag in Science 3. Subjective Bias C. Refocusing the Inquiry 1. Normative Thoughts 2. Alternative Screening Tools CONCLUSION [C]reativity, in the form of ideas, innovations, and inventions, has replaced gold, colonies, and raw materials as the new wealth of nations. (1)
Patent law is one of the most dynamic areas of the law because it must respond as the nature of the invention landscape changes to reflect advances in science and technology.2 That being said, patent law functions as a one-size-fits-all system in that all inventions--irrespective of technological field--must satisfy the same statutory patentability criteria. (3) Thus, patent law evolves incrementally through individual judicial decisions where courts apply the technologically neutral provisions of the patent statute differently to different technologies. (4) This framework in theory allows the patent system "to adapt flexibly to both old and new technologies, encompassing 'anything under the sun that is made by man.'" (5)
Yet there is a disconnect between the patent system and science and technology. Part of the problem stems from the inability of law to evolve fast enough to keep pace with technological advances:
[The legal system] must run to catch up, and the moment it catches up, it falls behind again. The simple truth is that law evolves through a slow, incremental, and deliberative process .... In contrast, technology evolves as quickly as the human mind allows. The result is an increasingly wider "guidance gap"--the space between the new technology and the old law. (6) This problem has become even more acute in recent years as technology evolves at an ever-increasing pace. (7)
But even if a gap is inevitable, three obstacles in the development of patent jurisprudence have exacerbated it. First, it took the courts a long time to realize that patent doctrines which emerged during the Industrial Age were incompatible with chemical and pharmaceutical inventions. (8) Even as inventions from these experimental fields began to dominate the invention landscape, the courts continued to treat them as "a child (or orphan) of mechanical patent law." (9) Second, non-technically trained judges struggle to adjudicate patent cases involving technologically complex subject matter. (10) This problem arose nearly a century ago (11) and shows no signs of abating. (12) Third, the courts might be reluctant to develop and modernize the common law in order to promote stability and predictability in patent law. (13) Together, these obstacles have contributed to the judiciary's development of what Professors John Duffy and Craig Nard describe as "an isolated and sterile jurisprudence that is increasingly disconnected from the technological communities affected by patent law." (14) Particularly vulnerable to the ill effects of this disconnect are atypical inventions, which this Article defines as those in which either (1) a technical aspect of the invention or the inventive process does not conform to an established legal standard in patent law or (2) the technical underpinnings of the invention depart from well-established scientific paradigms. An example of the former is an invention which occurs by accident; an example of the latter is an invention which seems incredible in light of contemporary knowledge in the relevant field.
Two characteristics set atypical inventions apart from others. First, they are often revolutionary, meaning that the claimed product or process is radically different from what came before. (15) Sometimes these inventions can spark what the great historian and philosopher of science Thomas Kuhn described as a "paradigm shift" in scientific and technological understanding. (16) Second, atypical inventions often represent a significant technological leap forward. This can take the form of achieving what was previously thought unachievable or transforming a complex process into a simple one. Both paradigm shifts and technological leaps can unleash the creative potential of the human mind which, in turn, can create new possibilities (17) and provide the creative fuel for more inventive activity. (18)
This Article argues that certain established legal standards should change to better accommodate atypical inventions. The proposal would not only represent a significant step forward in resolving the law-technology disconnect but also help fulfill broader goals of patent policy. (19)
The balance of this Article proceeds as follows. Part I explores a structural bias in current patent doctrine against accidental inventions. After explaining how the status quo can jeopardize the patent rights of one who invents by accident, this Part proposes an alternative framework which resolves that problem and fulfills broader goals of patent policy. Part II shows how one who seeks to patent a seemingly impossible invention can face insurmountable patentability hurdles. Although there is a need to ferret out truly inoperable inventions, this Part argues that the subjective nature of the current framework can exclude inventions with real technical merit. This Part solves this problem by setting forth a new paradigm rooted in objective, technical factors. Aside from being more consistent with broader goals of the patent system, implementing the new paradigm would allow patent law to remain on the cutting edge of technology.
ACCIDENTAL INVENTIONS (20)
Accidental inventions are atypical because technical aspects of the inventive process do not conform to the substantive law of invention. This Part explains why and illustrates how inventors who invent by accident can be unjustly deprived of patents.
The Inadequacies of the Current Invention Standard
The Pathway to Invention
An invention can come into being in two different ways: by plan or by accident. Planned inventions arise when the inventor formulates a mental picture of the thing which is ultimately patented and then reduces the thing to practice. By contrast, accidental inventions arise through serendipity, meaning that the inventor makes something that was initially unsought. (21) The key difference between the two paths is that in the latter, the inventor can only form a mental picture of the thing which is ultimately patented after it is made.
Perhaps it is not immediately apparent why the pathway to invention should matter. Inasmuch as patentability is concerned, the path to invention is irrelevant because patent law is more concerned with the thing to be patented rather than the path to the thing or the acumen of the person who made it. (22) As Professor William Robinson wrote in his influential treatise on patent law, "[t]he law draws no distinction between those operations of the creative faculties which manifest themselves in long-continued study and experiment, and those which reach their end by sudden intuition or apparent accident." (23) It is well settled that "the path that leads an inventor to the invention is expressly made irrelevant to patentability by statute." (24)
On the other hand, the pathway to invention can affect when an invention is invented for patent-obtaining purposes. It is a bedrock principle of patent law that the inventive process has two elements: conception and reduction to practice. (25) Since conception cannot occur until the inventor formulates "a definite and permanent idea of the complete and operative invention," (26) accidental discoveries, at least at the moment of the serendipitous event, lack conception. (27) As discussed below, this idiosyncrasy can be problematic given the importance of the timing of the conception step in establishing patent rights. (28)
The reason why accidental discoveries fail to mesh with the substantive law of invention is an artifact of the law-technology disconnect. (29) Since most inventions were predominately mechanical or electrical in nature during the formative years of patent doctrine, the current conception-based invention standard reflects the foreseeability and coherency which often characterizes such predictable technologies. (30)
By contrast, the pathway to invention is fundamentally...