Negativing Invention

Details

Author(s):
  • Jacob S. Sherkow
Publish Date:
November 5, 2011
Publication Title:
Brigham Young University Law Review
Format:
Journal Article Volume 2011 Page(s) 1091
Citation(s):
  • Jacob S. Sherkow, Negativing Invention, 2011 Brigham Young University Law Review 1091 (2011).
Related Organization(s):

Abstract

Since 1952, the patent statute has forbidden courts from discriminating against, or “negativing,” inventions according to how they were made, be it “long toil and experimentation” or a “flash of genius.” Now, in addressing whether an invention is “obvious,” courts must only examine whether the invention was obvious according to the arts pertinent to that invention — the “analogous” rather than “nonanalogous” arts. This article shows that this dichotomy has actually promoted method-of-invention discrimination in patent law because the subjectivity of the analogous art inquiry has increasingly “analogized” wide fields of prior art as technology has progressed. This, in turn, has the effect of “negativing” inventions made by “long toil and experimentation” relative to “flash of genius” inventions because the latter are more capable of drawing upon disparate arts less susceptible to analogizing. This article further examines the consequences of this effect as “negativing” the underlying policy justifications for the patent monopoly and concludes by calling for a more cabined approach to the analogous art inquiry.