What is the 'Invention'?

52 Pages Posted: 29 Aug 2011 Last revised: 3 Jan 2015

Christopher Anthony Cotropia

University of Richmond School of Law

Date Written: August 29, 2011

Abstract

Patent law is in flux, with recent disputes and change in doctrine fueled by increased attention from the Supreme Court and en banc activity by the Federal Circuit. The natural reaction is to analyze each doctrinal area involved on its own. However, upon a closer look, many of the cases concern a single, fundamental dispute. Conflicts in opinions on such issues as claim interpretation methodology and the written description requirement are really disagreements as to what exactly is the “invention” the courts should be considering.

There are two concepts of invention currently in play in patent decisions. The first is an “external invention” definition, where courts define the invention by the detailed technology discussion in the patent specification’s descriptions and drawings. Other decisions invoke a “claim-centered invention” definition that relies almost exclusively on the claim, a single sentence at the end of the patent. These two definitions can be judged against common patent theories to determine which best fits the theories’ narratives. The external invention definition, by grounding exclusivity around what the inventor has actually done or plans to do, is more likely to cause the patent to operate as these theories assume. And once a definition of invention is selected, doctrinal conflicts and ambiguities are more easily resolvable.

Keywords: patents, invention, law, claims, Federal Circuit, technology, specification, written description

Suggested Citation

Cotropia, Christopher Anthony, What is the 'Invention'? (August 29, 2011). William & Mary Law Review, Vol. 53, 2012. Available at SSRN: https://ssrn.com/abstract=1918841 or http://dx.doi.org/10.2139/ssrn.1918841

Christopher Anthony Cotropia (Contact Author)

University of Richmond School of Law ( email )

28 Westhampton Way
Richmond, VA 23173
United States

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