40 Pages Posted: 3 Mar 2016 Last revised: 13 Apr 2017
Date Written: March 2, 2016
It is axiomatic that once an invention has been patented, it cannot be patented again. This aligns with the quid pro quo theory of patents — the public would receive nothing new in exchange for the second patent. Enforcing this rule is done through the novelty requirement, which bars a patent if the invention is already known. But the rule is hard to justify if the original patentee reneged on the quid pro quo by inadequately disclosing how to make and use the invention. The inadequate disclosure suggests that the original inventor did not invent anything and the public received no benefit from the original patent. Nevertheless, the current novelty rules prevent the subject matter from being patented again, even if a subsequent researcher can figure out how to make, use, and possibly commercialize it. This novelty bar might destroy the incentive to engage in research and development — an outcome which would ultimately deprive the public of a potential benefit (which, as in the case of a drug, could be enormous). In sum, the current novelty rules prevent many socially valuable inventions from reaching the public.
To remedy this problem, this Article proposes a new novelty paradigm. It draws attention to a situation where a subsequent inventor — the reinventor — seeks to claim subject matter identical to that claimed by another in an expired patent. If the reinventor can prove that the subject matter was inadequately disclosed in the earlier patent, that disclosure will not have a novelty-defeating effect. So the reinventor will be allowed to (re)claim the subject matter absent any other patentability hurdles. While the public would pay for the invention twice, it would ultimately benefit from the second period of exclusivity by obtaining an invention that it might otherwise have not received, a technically robust disclosure, and full possession of the invention at the end of the reinventor’s patent term. Thus, reinvention promotes the patent system’s fundamental goals of encouraging investment, innovation, and the full public disclosure of new inventions.
Keywords: patent, novelty, disclosure, enablement, prior art, anticipation, patentability, presumptions, proof, disclosure, knowledge, innovation, PTO, USPTO
JEL Classification: O31, O32, O33, O34, O38, O40, O48, K39
Suggested Citation: Suggested Citation