Haris Durrani (Harvard University) has posted "Before Invention," forthcoming in the Texas Intellectual Property Law Journal. The abstract:
This Article is the first comprehensive historical account of a
foundational doctrine of U.S. patent law: conception. Conception
supplies the meaning of invention at the root of the patent system. It
is a mental act, the formation of the idea of an invention before it is
made. Considered “the touchstone of inventorship,” conception can
determine who receives a patent, awarding credit and title, and governs
employee inventions and federally funded research. Despite conception’s
import, courts inconsistently state its doctrinal standard while
insisting on its deep historical continuity, and scholars exclude it
from studies of patent law’s practice, theory, and history. Carefully
reading nearly two centuries of cases and treatises, the Article details
the doctrine’s development, reveals its causes and tectonic effects on
the patent system, and proposes a new test. Due to conception’s
influence across other doctrines, the test transforms the meaning of
invention holding aloft the system’s whole architecture.
The
conventional wisdom is that the meaning of conception is well-settled,
“unchanged for more than a century.” But this Article argues the
doctrine has oscillated between a “mentalist” tradition, privileging a
general idea in the mind at an early stage of the inventive process, and
a “materialist” one, privileging a detailed idea formed amidst the
physical work of experimentation. The doctrine developed in three
phases, crafted in the nineteenth century with a mentalist theory
equating conception with invention; turned materialist in the twentieth,
breaking that equation; and, near the twenty-first, reverted to
mentalism, albeit unsteadily. Heedless of these conflicting traditions,
scholars and judges pick and choose among their divergent doctrinal
standards. The result is a modern doctrine as convoluted as its history.
Clarity requires understanding the development of the doctrine’s
oscillating preferences for ideation and work.
The Article draws
two takeaways from this history. First, conception has long provided the
meaning of invention underwriting the patent system. This claim
counters popular belief in patent law’s early materialism and recasts
the modern system as the triumph of conception’s doctrinal development.
Conception is thus not only temporally before making an invention, but
also ontologically before the very notion of invention—the first
principle of the entire edifice. This conclusion provides a basis for a
foundational theory of invention that traverses the many doctrines
shaped by conception’s doctrinal development.
Second, conception must be reworked to
bring back the materialist turn, grounded in experimental labor. The
mentalist tradition is flawed, designed to exclude that labor. The
Article proposes a new test synthesizing elements from the materialist
case law. While scholars have advocated materialist approaches to other
doctrines, primarily related to inventorship and a patent application’s
disclosure, those doctrines were largely shaped by conception’s
development and should incorporate versions of the proposed conception
test, harmonizing divergent theories of invention with their source. The
test resolves controversies over federally funded research and
artificial intelligence, and the thorny case law on disclosure, the
basis of the modern system
Read on here.
-- Karen Tani
