Innovation and Own Prior Art

Abstract

This Article analyzes a conflict between innovation and the patent system: innovation is a dynamic, iterative process, but a patent reflects only a single snapshot in time. Despite extensive scholarly and judicial discussion of when an invention is ready for patenting, there is rarely a perfect time to file a patent application. Instead of filing a single perfect application, companies and others engaged in innovation typically build a portfolio of patents by filing a series of applications over the course of research and development. Yet this is an imperfect strategy because each patent application sets up a potential barrier for an innovator’s future applications. The barrier arises because future applications must be both new and nonobvious as compared to most of the innovator’s existing patent applications.

This Article examines the interaction between patent applicants’ own earlier-filed applications and patentability requirements. This interaction shapes how innovators seek patent rights, and it affects disclosure and innovation. Despite its significance, the legal treatment of successive patent filings by the same innovator developed haphazardly. The resulting statutory framework, built by the layering of various provisions, is not well-tailored to the original policy goals. Moreover, in its current form, the law has unintended effects that can hamper innovation. This Article proposes a statutory amendment that would provide a better mechanism for directly tailoring the statutory framework, and it illustrates how its parameters can be adjusted to reflect the balancing of competing concerns.