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Defining Patent Scope by the Novelty of the Idea

59 Pages Posted: 18 Jul 2011 Last revised: 3 Jan 2015

Tun-Jen Chiang

George Mason University School of Law

Date Written: July 18, 2011

Abstract

Patent law defines novelty by the creation of a new embodiment, not an idea. For example, the Wright brothers are deemed to have invented the airplane because nobody made an airplane before, and not because they were the first to think of flying.

Patent law then defines monopoly scope through a theory of disclosure of embodiments: despite the airplane being new, the Wright brothers could not patent every airplane, ostensibly because they did not teach how to make every airplane embodiment such as a jet fighter. Disclosure theory, however, is incoherent. Patent law cannot confine the Wright brothers to the embodiment they actually taught - a barely-flying wooden glider - since doing so will eviscerate incentives. But once we say that patents can cover more, disclosure theory provides no limit. If the Wright brothers could cover some undisclosed airplanes, why not all undisclosed airplanes?

I argue in this Article for a different theory. In order to be fairly credited as the inventor of something, the patentee must be the first to articulate the idea of that thing. The Wright brothers could not patent all airplanes under this theory, not because they did not disclose how to build every airplane, but because the idea of airplanes was old. By keying patent scope to the novelty of the idea rather than the disclosure of embodiments, my rule provides a fairer and more accurate measure of the patentee’s contribution.

Keywords: idea, embodiment, disclosure theory, enablement, patent scope, novelty, patentee's contribution, levels of abstraction

JEL Classification: K11

Suggested Citation

Chiang, Tun-Jen, Defining Patent Scope by the Novelty of the Idea (July 18, 2011). Washington University Law Review, Vol. 89, No. 6, 2012, pp. 1211-1268; George Mason Law & Economics Research Paper No. 11-31. Available at SSRN: https://ssrn.com/abstract=1888649 or http://dx.doi.org/10.2139/ssrn.1888649

Tun-Jen Chiang (Contact Author)

George Mason University School of Law ( email )

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