Jacob S. Sherkow
New York Law School
November 5, 2011
Brigham Young University Law Review, Vol. 2011, pp. 1091-1138, 2011
Since 1952, the patent statute has forbidden courts from discriminating against, or “negativing,” inventions according to how they were made, be it “long toil and experimentation” or a “flash of genius.” Now, in addressing whether an invention is “obvious,” courts must only examine whether the invention was obvious according to the arts pertinent to that invention — the “analogous” rather than “nonanalogous” arts. This article shows that this dichotomy has actually promoted method-of-invention discrimination in patent law because the subjectivity of the analogous art inquiry has increasingly “analogized” wide fields of prior art as technology has progressed. This, in turn, has the effect of “negativing” inventions made by “long toil and experimentation” relative to “flash of genius” inventions because the latter are more capable of drawing upon disparate arts less susceptible to analogizing. This article further examines the consequences of this effect as “negativing” the underlying policy justifications for the patent monopoly and concludes by calling for a more cabined approach to the analogous art inquiry.
Number of Pages in PDF File: 48
Keywords: patent, invention, analogous art, negativing, technology, obviousness
JEL Classification: K39, O3Accepted Paper Series
Date posted: February 24, 2011 ; Last revised: November 10, 2011
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