The Ontological Function of the Patent Document

Abstract

With the passage and implementation of the “first-to-file” provisions of the America Invents Act of 2011, the U.S. patent system must rely more than ever before on patent documents for its own ontological commitments concerning the existence of claimed kinds of useful objects and processes. This Article provides a comprehensive description of the previously unrecognized function of the patent document in incurring and securing warrants to these ontological commitments, and the respective roles of legal doctrines and practices in the patent system’s ontological project. Among other contributions, the resulting metaphysical account serves to reconcile competing interpretations of the written description requirement that have emerged from the Federal Circuit’s recent jurisprudence, and to explain why the patent system is willing and able to examine, grant and enforce claims reciting theoretical entities. While this Article is entirely descriptive, it concludes by identifying promising normative and prescriptive implications of this work, including the formulation of an appropriate test for the patent-eligibility of software-implemented inventions in the post-Bilski era. ∗ Associate Professor, University of North Carolina School of Law. The author wishes to thank Adam Candeub, David Chalmers, Kevin Collins, John Conley, Michael Corrado, Tim Holbrook, David Lange, Marc Lange, Mark Lemley, Adam Mossoff, Daniel Nazer, Kristen Osenga, Arti Rai, and Kathy Strandburg for helpful comments and suggestions at different stages of this project. U N I V E R S I T Y O F P I T T S B U R G H L A W R E V I E W P A G E | 2 6 4 | V O L . 7 4 | 2 0 1 2 ISSN 0041-9915 (print) 1942-8405 (online) ● DOI 10.5195/lawreview.2012.194 http://lawreview.law.pitt.edu Table of