[Introduction — footnotes omitted]:

We give patents to inventors to reward and therefore encourage innovation. But what is the act of invention? Am I an inventor when I think of an idea? Or am I an inventor only when I actually get my invention to work, by building something or putting a process into practice? Courts and scholars have long struggled with the question of whether invention is primarily a mental act or instead primarily an act of building it–what patent law calls “reducing an invention to practice.” William Robinson, the author of the leading nineteenth-century patent treatise, thought the most important act of invention was mental–the formation in the mind of a new idea. For Robinson, as long as an idea was “practical” and “operative,” the act of writing it down in a patent was enough to give the benefit of it to the world. Justice Story, by contrast, saw the inventor’s central contribution as introducing new technology to the world, something that could only happen when the idea had been turned into a working, usable device or method. Interestingly, both agreed on one thing: Paper patentees–those who never made anything–were not sufficiently advancing the progress of the useful arts.

Patent law has tried to find a middle ground between these two visions of invention. The definition of “invention” in the 1952 Patent Act (“the 1952 Act”) incorporates both conception and reduction to practice, sometimes defining the inventor as the person who conceived of an idea and other times as the one who reduced the idea 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 by giving them precedence over those who make sure their invention works by building and testing it before applying for a patent. In an important class of cases–those in which the inventor has an idea but does not yet know if it will work–the patent system encourages the inventor to patent first and figure it out later, if at all. And precisely because those inventors haven’t yet figured out what works, their patent claims tend to be more general, giving them broader rights than those who take the time to build and patent a working invention. The problem is even worse under the new America Invents Act (“AIA”) passed in 2011, which encourages patentees to file their applications as soon as possible. Indeed, those who actually build and test an invention under the new statute before filing a patent application may even find that they have lost their rights by doing so.

The fact that the law encourages an inventor 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 inventions just in case, adding more patents into a system already overburdened with them.

Some have suggested that we should require patentees to actually make products or at least build and test prototypes before filing their patent applications. But doing so would have its own worrisome consequences, not least the fact that a scientific article could invalidate a patent without itself containing enough information to permit its author to file a patent. The result is a difficult problem for patent doctrine, one that is only exacerbated by the coming wave of cases under the AIA. But whatever the right answer to that problem is, 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 before patenting.

In Part I, I walk through the often-confusing rules in the 1952 Act that determine what an inventor must show and when an invention is ready for patenting, and demonstrate that the regime we have created favors those who patent before building and testing a prototype. In Part II, I explore how the new patent rules in the AIA potentially exacerbate this problem. In Part III, I consider some possible solutions designed to encourage inventors to implement and test their ideas before patenting them.