Rescuing the Invention from the Cult of the Claim

Abstract

Patent law is certainly a specialized field but I didn’t think it would be a cult. The term ‘invention’ appears in many critical statutory locations. Yet we have been taught, perhaps brainwashed, to give the term zero substantive import. Substantive use of the invention has been purged from patent doctrine. Instead every substantive question in patent law is answered by reference to the claims, the legal descriptions of the ‘metes and bounds’ of a patent’s exclusionary reach. Despite its promise of precision and uniformity, our modern invention-less system is anything but precise and uniform. This article argues that the trouble stems from this trivial vision of the invention. It leads to meaningless claim interpretation, to an incomplete a vision of the disclosure requirements, and to a system that regularly violates one of patent law’s few constitutional limitations. Correctly viewed, invention is a substantive concept. The invention is simply the inventor’s own solution to some technical problem. In patent jargon, the invention is the set of embodiments conceived and disclosed by the inventor in enough detail such that they are capable of being reduced to practice. The purpose of the patent system is to secure exclusive rights in that invention if it is patentable. Claims still matter but only as tools that aid in administering that system. The patent system that embodies this substantive vision of the invention is not only the system I think Congress intended but it is also a more precise and stable system than the one we are using today.