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Negativing Invention

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, O3

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Date posted: February 24, 2011 ; Last revised: November 10, 2011

Suggested Citation

Sherkow, Jacob S., Negativing Invention (November 5, 2011). Brigham Young University Law Review, Vol. 2011, pp. 1091-1138, 2011. Available at SSRN: https://ssrn.com/abstract=1767569

Contact Information

Jacob S. Sherkow (Contact Author)
New York Law School ( email )
185 West Broadway
New York, NY 10013
United States
212.431.2355 (Phone)
HOME PAGE: http://www.nyls.edu/faculty/faculty-profiles/faculty_profiles/jacob-s-sherkow/
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