Publication Date

1-1-2024

Document Type

Article

Organizational Units

Sturm College of Law

Keywords

Invalidity, Obviousness, Nonobviousness, Patentable subject matter, Patent eligibility, Patent validity, Invalidity, Patent invalidity, Written description, Enablement, Patent prosecution, Patent procedure

Abstract

In this Article, we define and interrogate a new typology for patentability rules. In our typology, some such rules are predominantly relative inquiries—meaning that they entail the use of discrete comparators—whereas others are predominantly absolute in that they lack this core comparative methodology. Selected patentability rules blend the characteristics of both relative and absolute inquiries in complex ways.

We leverage our relative/absolute typology in this Article to make two sets of contributions to the literature. First, we use our typology to craft a new descriptive account of the patentability doctrines. We show that the requirements of novelty and nonobviousness are almost exclusively relative measures of patentability, while the requirements of eligible subject matter and utility are almost exclusively absolute measures of patentability. Other requirements—namely the enablement and written description requirements, both inquiries into the adequacy of the patent disclosure—are blended, with the enablement requirement tipping towards the relative and the written description requirement largely absolute. In light of these observations, we argue that the typology is an attractive pedagogical tool for explaining the patentability rules in a new way, in judicial, administrative, academic, and other settings where such explanations are critical.

The second contribution is normative. We assert that our typology offers a new framework within which to address some longstanding patent law debates (such as proposed legislative abrogation of aspects of the jurisprudence of subject matter eligibility), and some new ones (such as the influence of ex parte pre-grant substantive patentability examination on patent quality). Regarding the latter, we float a provocative proposal to reformulate the scope of ex parte examination along the lines of our typology, relieving the U.S. Patent and Trademark Office of the burden of examining applications for compliance with the absolute patentability requirements, leaving those requirements for assessment in contested proceedings such as litigation. We also discuss procedural changes that would be necessary to implement such a proposal.

We conclude that the relative/absolute typology affords a new vocabulary for exploring core doctrines in substantive patent law and foundational institutional arrangements in the patent system. It may also extend beyond the doctrinal contexts we explore here.

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