Tuesday, July 12, 2011

Jacob Sherkow: Negativing Invention

Does nonobviousness favor "flash of genius" inventions over laborious ones, despite Congress's explicit declaration that "[p]atentability shall not be negatived by the manner in which the invention was made"? Jacob Sherkow argues that it does in his forthcoming article, Negativing Invention. Sherkow is currently an E.D.N.Y. clerk, and before law school he received an M.A. in Biotechnology, a background that shines in his discussions of the inventive process in different disciplines.

The nonobviousness inquiry is limited to "the art to which said subject matter pertains," which has been interpreted as "analogous" (rather than "nonanalogous") arts. Sherkow argues that this inquiry is subjective, and that the Federal Circuit has offered no clear guidance on how to identify analogous arts. He suggests that "courts have uniformly broadened . . . what they perceive as analogous arts" due to the "increasingly interdisciplinary" nature of invention. The problem, according to Sherkow, is that this test discriminates against laborious trial-and-error inventions (e.g., in chemistry or molecular biology) because "the solutions to problems in laborious disciplines typically come from a narrow range of often-used but relevant art." In contrast, creative inventions (like the intermittent windshield wiper at issue in Kearns v. Chrysler) are "primarily formed in the mind" and "can draw on a wider, more diverse range of prior art," making them "less likely to draw on what courts will find to be 'analogous' arts."

Sherkow argues that the analogous arts test particularly discriminates against "inventions of precision" and "unpredictable" inventions that result from "diligent plodding at the lab bench." Because these laborious inventions "should, on the whole, cost more to bring to patentability than inventions created by more whimsical means," the analogous arts test defeats "the principal purpose of the patent monopoly," which is "to allow the inventor to recoup his development costs." Sherkow thus believes that "a more constrained interpretation of the pertinent arts in nonobviousness determinations better aligns with the purpose of the nonobviousness statute."

But if the problem is that laborious inventions are in a narrow art, while creative inventions draw from many arts, it seems like narrowing the definition of analogous arts would only make the problem worse. Wouldn't the solution be to further broaden the definition of analogous arts, so that creative inventions are judged from the arts they really draw from? I'm also not fully convinced that laborious inventions are treated as badly as Sherkow suggests; for example, he cites the drug patent in Daiichi v. Matrix as an example of a "precision" invention that would be discriminated against, but the Federal Circuit upheld a finding of nonobviousness. If the analogous arts test is as subjective as Sherkow suggests, then isn't the issue really a legal realist one of whether courts tend to be biased against laborious inventions?

Still, Sherkow raises an important issue: if courts are denying patents on "laborious" inventions that would not be created but for the inducement of a patent, while granting patents on "creative" inventions that would have been created anyway, then that is a problem, both under the text of the Patent Act and under an economic analysis (see, e.g., Abramowicz and Duffy's inducement standard).

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