Document Type


Publication Date

Fall 8-28-2012


Patent law, Invention, Disclosed embodiments, Narrow inventorship, Found inventions, 35 U.S.C. 101, Principle of the invention, Patent scope and after-rising technology


Intellectual Property Law


One of the biggest problems plaguing modern patent law is its inability to provide predictable and clear exclusive rights. We would improve clarity by simply following the patent statute and extending exclusion only to "the patented invention." That suggestion, as reasonable as it may sound, is actually quite radical to the dominant patent law orthodoxy. It is not even clear under the dominant patent law orthodoxy what it would mean to limit patent scope to the invention, but it is generally presumed that it must lead to unacceptably narrow patents. Thus, even if it provides clarity, the invention is thought to be just too narrow a concept to provide enough protection for inventors.

This Article takes up that worry and shows that the invention is actually broader than many think. While still providing predictable and clear patent boundaries, it can provide much of the protection that many incorrectly fear would be lacking in an invention-based patent system. Interestingly, this Article does not need to create this theory of the invention anew. It already exists; we just need to find it. For the first 100 years of U.S. patent law, the invention was the focal point of most cases. Those early cases provide a much-needed seed stock from which to redevelop an understanding of the invention. What emerges from that historical exploration is a concept with deep precedential support and surprisingly sophisticated internal structure that can tackle our current challenge of providing both clear and adequate protection to inventors. Surprisingly, the invention tethers patent scope to the patent disclosure while still explaining the wide range of patent scope decisions and even allowing scope to extend to after-arising technology in predictable ways.

Publication Citation

Oskar Liivak, "Finding Invention", 40 Florida State University Law Review (2012)