Ready for Patenting

29 Pages Posted: 3 Jun 2015 Last revised: 18 Aug 2015

Date Written: June 2, 2015

Abstract

Patent law has tried to find a middle ground between a vision of invention as a mental act and a competing vision that focuses on the actual building of a working product. The definition of invention in the 1952 Patent Act incorporates both conception and reduction to practice, sometimes choosing the first to conceive as the inventor and at other times choosing the first to reduce an invention to practice. But in trying to walk that middle ground, patent law has actually discouraged inventors from getting their inventions to work in practice, rewarding those who run to the patent office before they are fully done with the invention and giving them precedence over those who take the time to make sure their invention works by building and testing it. The problem is even worse under the new America Invents Act passed in 2011, which encourages patentees to file their applications as soon as possible.

The fact that the law encourages inventors to file first and figure out later how (or even if) the invention works for its intended purpose is unfortunate. It produces underdeveloped patent applications that do not communicate useful information to the world. It facilitates the rise of patent trolls who obtain patents but never bother to produce a product, instead making a business of suing those who do. And it pushes people to patent things just in case, adding more patents into a system already overburdened with them.

I reject proposals to go to the opposite extreme, requiring patentees to make products. But we should not be in the position in which we currently find ourselves: treating inventors less favorably if they try to build and test their inventions In this paper, I offer some thoughts on ways we might seek to protect inventors who actually decide to build and test their products.

Suggested Citation

Lemley, Mark A., Ready for Patenting (June 2, 2015). Stanford Public Law Working Paper No. 2613696. Available at SSRN: https://ssrn.com/abstract=2613696 or http://dx.doi.org/10.2139/ssrn.2613696

Mark A. Lemley (Contact Author)

Stanford Law School ( email )

559 Nathan Abbott Way
Stanford, CA 94305-8610
United States

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