Negativing Invention

48 Pages Posted: 24 Feb 2011 Last revised: 10 Nov 2011

See all articles by Jacob S. Sherkow

Jacob S. Sherkow

University of Illinois College of Law; Carle Illinois College of Medicine; University of Illinois at Urbana-Champaign - Carl R. Woese Institute for Genomic Biology; Center for Advanced Studies in Biomedical Innovation Law

Date Written: November 5, 2011

Abstract

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.

Keywords: patent, invention, analogous art, negativing, technology, obviousness

JEL Classification: K39, O3

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

Jacob S. Sherkow (Contact Author)

University of Illinois College of Law ( email )

504 E. Pennsylvania Avenue
Champaign, IL 61820
United States

Carle Illinois College of Medicine ( email )

506 S Mathews Ave
Urbana, IL 61801
United States

University of Illinois at Urbana-Champaign - Carl R. Woese Institute for Genomic Biology ( email )

Urbana, IL
United States

Center for Advanced Studies in Biomedical Innovation Law ( email )

Studiestraede 6
Studiestrade 6
Copenhagen, DK-1455
Denmark

HOME PAGE: http://jura.ku.dk/cebil/staff/

Do you have a job opening that you would like to promote on SSRN?

Paper statistics

Downloads
151
Abstract Views
1,790
Rank
297,396
PlumX Metrics