Inventive Application: A History
Jeffrey A. Lefstin
University of California Hastings College of the Law
March 31, 2014
Florida Law Review, Forthcoming
UC Hastings Research Paper No. 94
As the Supreme Court prepares to take up yet another case on the doctrine of patent-eligible subject matter, the Court will again be called on to draw the line between unpatentable fundamental principles and patentable inventions. In Mayo v. Prometheus, the Court held only an “inventive application” of a fundamental principle, such as a law of nature or abstract idea, may be patented. Both Mayo and its intellectual forebear, Parker v. Flook, anchored this doctrine in Neilson v. Harford, the famous “hot blast” case decided by the Court of Exchequer in 1841.
But the Supreme Court has founded the “inventive application” doctrine on a basic misapprehension. Neilson’s patent on the hot blast was sustained not because his application was inventive, but because it was entirely conventional and obvious. In both England and the United States, the lesson of the hot blast cases was that inventors could patent any practical application of a new discovery, regardless of the novelty or inventiveness of the application. And for over one hundred years, American authority consistently maintained the position that practical application was the dividing line between unpatentable discovery and patentable invention.
The true origin of the inventive application test was Justice Douglas’s infamous opinion in Funk Brothers v. Kalo Inoculant, which represented a radical departure from the established standard of patent eligibility. Largely forgotten today, in the wake of Funk the lower courts struck down a series of patents that were unquestionably within the technological arts, and very arguably the precise innovations that the patent system sought to promote. That history serves as a cautionary tale of the patents that could be invalidated in the future, if the Court maintains inventive application as the test for patent eligibility.
Number of Pages in PDF File: 89
Keywords: patent, patent-eligible subject matter, inventive application, inventive concept
JEL Classification: O34Accepted Paper Series
Date posted: February 21, 2014 ; Last revised: April 1, 2014
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