Working Paper No. 11-31:
Defining Patent Scope by the Novelty of the Idea
Date Posted: July 2011
Abstract (below) | Full text (most recent) on SSRN
Patent law defines novelty by the creation of a new embodiment, not an idea. For example, the Wright brothers are deemed to have invented the airplane because nobody made an airplane before, and not because they were the first to think of flying.
Patent law then limits monopoly scope through a theory of disclosure: despite the airplane being new, the Wright brothers could not patent every airplane, ostensibly because they did not teach how to make every airplane. Disclosure theory, however, is incoherent. Patent law cannot confine the Wright brothers to the embodiment they taught—a barely-flying wooden glider—since doing so will eviscerate incentives. But once we say that patents can cover more, disclosure theory provides no limit. If the Wright brothers could cover some undisclosed airplanes, why not all undisclosed airplanes?
I argue in this Article for a different theory. In order to be fairly credited as the inventor of something, the patentee must be the first to articulate the idea of that thing. The Wright brothers could not patent all airplanes under this theory because the idea of airplanes was old. At the same time, a new invention always contains new insights—the Wright brothers succeeded because they invented the idea of using a rudder for flight control, which prior inventors did not have. My proposal would then protect this novel insight by covering every future airplane that uses this idea. By keying patent scope to the novelty of the idea rather than the disclosure of embodiments, my rule provides a fairer and more accurate measure of the patentee’s contribution.