Negativing Invention

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

See all articles by Jacob S. Sherkow

Jacob S. Sherkow

New York Law School; Columbia University - Department of Health Policy and Management; Center for Advanced Studies in Biomedical Innovation Law

Date Written: November 5, 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.

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:

Jacob S. Sherkow (Contact Author)

New York Law School ( email )

185 West Broadway
New York, NY 10013
United States
212.431.2355 (Phone)


Columbia University - Department of Health Policy and Management ( email )

600 West 168th Street, 6th Floor
New York, NY 10032
United States

Center for Advanced Studies in Biomedical Innovation Law ( email )

Studiestraede 6
Studiestrade 6
Copenhagen, DK-1455


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