28 Pages Posted: 5 Jan 2011 Last revised: 8 Feb 2012
Date Written: February 7, 2012
We award patents to inventors because we hope to encourage new ideas. For this reason, the fundamental requirement for getting a patent is that you have invented something new.
It is curious, then, that patent law itself purports to pay no attention to which aspects of a patentee’s invention are in fact new. A patented invention is legally defined by its claims – written definitions of the invention. And those written definitions virtually never call out what it is that is new about the patentee’s invention.
Even if the parties do identify the novel element of an invention, the law purports not to care. Long-standing patent law doctrine has decried any focus on the “point of novelty” of an invention. The United States Court of Appeals for the Federal Circuit evaluates the claim as a whole, not just the piece of the claim that the patentee actually added to the storehouse of knowledge. As the court frequently puts it, “there is no legally recognizable . . . ‘gist’ or ‘heart’ of the invention.”
It turns out, however, to be hard to sustain a rule that a law concerned with novelty will pay no attention to the point of novelty. And so point-of-novelty issues crop up in a number of different doctrines in patent law, from figuring out who counts as an inventor to whether the inventor has disclosed the “best mode” of practicing the invention to when the sale of a product exhausts the patentee’s rights in the patent. Courts are inconsistent in whether and how they consider the point of novelty in these doctrines and more. But when the Federal Circuit presented with a question in point-of-novelty terms, it most often falls back on the mantra that there is no point of novelty to an invention, even if it means discarding long-standing precedent.
It’s time to rethink the no-point-of-novelty doctrine in patent law. I argue that ignoring what is novel about patentee’s invention makes little sense as an across-the-board matter, and leads to a variety of harmful consequences. While refusing to focus on the point of novelty serves some valuable purposes, there are other ways to achieve those ends. And in the end, a patent regime that pays attention to what the patentee actually invented, not what the patent lawyer wrote down, is more likely to achieve the goal of promoting innovation.
Keywords: Patent, Novelty, Patentable Subject Matter, Exhaustion
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