Credible Utility in Patent Law

Chiteki Zaisanhô No Atarashii Nagare : Katayama Eiji Sensei Kanreki Kinen Ronbunshu [New Trends In Intellectual Property Law: Celebratory Volume In Honor Of Prof. Eiji Katayama] 633 (2010)

GWU Legal Studies Research Paper No. 2013-66

GWU Law School Public Law Research Paper No. 2013-66

20 Pages Posted: 6 Apr 2013

See all articles by Martin J. Adelman

Martin J. Adelman

George Washington University - Law School

Date Written: 2010

Abstract

This paper discusses the law relating to the patentability of products and methods of their use. Specifically, the paper examines the circumstance where an inventor has brought forth a product which has no known credible utility or industrial applicability, but adds some guesses to her patent application in the hopes that if she guesses correctly, she will obtain a valuable patent. If one of the guesses proves correct, should this be treated in essence as a constructive reduction to practice sufficient to justify the grant of a valid patent?

This paper suggests that the proper answer should be no because a sound patent system should not encourage guessing where there is no sound scientific basis for the guess. My analysis of how such guesses are treated in patent law starts with one of the most remarkable patent cases of the last decade, Conor Metasysystems v. Angiotech. It will end with a possible explanation of why the Federal Circuit may have created the new doctrine of description as applied to originally filed claims.

Keywords: patentability of products, patent system, guessing, credible utility, constructive reduction, industrial applicability, doctrine of description, valid patents, Conor Metasystems v. Angiotech

JEL Classification: K11, K39

Suggested Citation

Adelman, Martin J., Credible Utility in Patent Law (2010). Chiteki Zaisanhô No Atarashii Nagare : Katayama Eiji Sensei Kanreki Kinen Ronbunshu [New Trends In Intellectual Property Law: Celebratory Volume In Honor Of Prof. Eiji Katayama] 633 (2010), GWU Legal Studies Research Paper No. 2013-66, GWU Law School Public Law Research Paper No. 2013-66, Available at SSRN: https://ssrn.com/abstract=2245615

Martin J. Adelman (Contact Author)

George Washington University - Law School ( email )

2000 H. St. NW
Washington, DC 20052
United States

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