Inventive Application: A History

Jeffrey A. Lefstin

University of California Hastings College of the Law

March 31, 2014

67 Florida Law Review 565 (2015)
UC Hastings Research Paper No. 94

The Supreme Court’s recent cases on patent-eligible subject matter have struggled to draw the line between unpatentable fundamental principles, such as laws of nature and abstract ideas, and patentable inventions. In Mayo v. Prometheus, the Court suggested that only “inventive applications” of fundamental principles fell within the domain of the patent system. Both Mayo and its intellectual forebear, Parker v. Flook, anchored this doctrine in Neilson v. Harford, the famous “hot blast” case decided by the Court of Exchequer in 1841.

But the Supreme Court has founded the inventive application doctrine on a basic misapprehension. Neilson’s patent on the hot blast was sustained not because his application was inventive, but because it was entirely conventional and obvious. In both England and the United States, the hot blast cases taught that inventors could patent any practical application of a new discovery, regardless of the application’s novelty or inventiveness. And for over one hundred years, American authority consistently maintained that practical application distinguished unpatentable discovery from patentable invention.

The inventive application test in fact originated in 1948, in Funk Brothers v. Kalo Inoculant, which departed radically from the established standard of patent eligibility. In the wake of Funk Brothers, the lower courts struck down a series of patents unquestionably within the technological arts — arguably the precise innovations the patent system sought to promote. This history is largely forgotten today, but it should serve as a cautionary tale of the patents that could be invalidated if the Court maintains inventive application as the test for patent eligibility.

Number of Pages in PDF File: 84

Keywords: patent, patent-eligible subject matter, inventive application, inventive concept

JEL Classification: O34

Open PDF in Browser Download This Paper

Date posted: February 21, 2014 ; Last revised: June 18, 2015

Suggested Citation

Lefstin, Jeffrey A., Inventive Application: A History (March 31, 2014). 67 Florida Law Review 565 (2015); UC Hastings Research Paper No. 94. Available at SSRN: https://ssrn.com/abstract=2398696 or http://dx.doi.org/10.2139/ssrn.2398696

Contact Information

Jeffrey A. Lefstin (Contact Author)
University of California Hastings College of the Law ( email )
200 McAllister Street
San Francisco, CA 94102
United States

Feedback to SSRN

Paper statistics
Abstract Views: 2,681
Downloads: 550
Download Rank: 37,849
Paper comments
No comments have been made on this paper