'The Invention, The Patent, and The Claim' in Patent Law: An Open-Access Casebook

Abstract

This is a draft chapter, "The Invention, The Patent, and The Claim," from the forthcoming book, Patent Law: An Open-Access Casebook. In this chapter, we introduce students to different ways in which the contribution that an inventor has made to the art relates to the claims that grant her some legal rights, as mediated by the patent document. We begin with The Incandescent Lamp Patent Case, which we use to illustrate the nature of the inventive process. We then show how the role of the claim has changed over time, from Winans v. Denmead to Merrill v. Yeomans to Liebel-Flarsheim v. Medrad. That history demonstrates the range of possible roles that claims might play, and serves as a basis for class discussions arising from the still unsettled relationship between the invention, the patent, and the claim.

Keywords: patents, patent law, open-access, casebook