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Patently Impossible

Posted by on Wednesday, October 26, 2011 in Articles, Volume 64, Volume 64, Number 5, Volumes.

The quest to achieve the impossible fuels creativity, spawns new fields of inquiry, illuminates old ones, and extends the frontiers of knowledge. It is difficult, however, to obtain a patent for an invention which seems impossible, incredible, or conflicts with well-established scientific principles. The principal patentability hurdle is operability, which an inventor cannot overcome if there is reason to doubt that the invention can really achieve the intended result. Despite its laudable gatekeeping role, this Article identifies two problems with the law of operability. First, though objective in theory, the operability analysis rests on subjective credibility assessments. These credibility assessments can introduce a bias toward unpatentability, with inventions emerging from new, poorly understood, and paradigm-shifting technologies as well as those from fields with a poor track record of success as the most vulnerable. Second, what happens when the impossible becomes possible? History reveals that the Patent Office and the courts will continue to deny patents for a long time thereafter.

This Article argues that the mishandling of seemingly impossible inventions vitiates the presumption of patentability, prevents the patent system from sitting at the cutting edge of technology, and frustrates the patent system’s overarching goal to promote scientific and technological progress. In an effort to resolve these problems and fill a gap in patent scholarship, this Article offers a new framework for gauging the patentability of seemingly impossible inventions. Briefly, it contends that a more robust enforcement of patent law’s enablement requirement can and should perform the gatekeeping role because it can resolve whether an invention works by weighing objective, technical factors. This approach would quickly reveal technical merit for inventions that really work or, alternatively, the fatal flaw for inventions that are truly impossible. Its implementation would not only eliminate the need for the operability requirement, but it would also streamline patent examination, improve the disclosure function of the patent system, promote scientific and technological progress, and ultimately foster innovation.