Document Type

Article

Publication Date

2010

Status

Accepted

Abstract

This paper discusses the law relating to the patentability of products and methods of their use. Specifically, the paper examines the circumstance where an inventor has brought forth a product which has no known credible utility or industrial applicability, but adds some guesses to her patent application in the hopes that if she guesses correctly, she will obtain a valuable patent. If one of the guesses proves correct, should this be treated in essence as a constructive reduction to practice sufficient to justify the grant of a valid patent?

This paper suggests that the proper answer should be no because a sound patent system should not encourage guessing where there is no sound scientific basis for the guess. My analysis of how such guesses are treated in patent law starts with one of the most remarkable patent cases of the last decade, Conor Metasysystems v. Angiotech. It will end with a possible explanation of why the Federal Circuit may have created the new doctrine of description as applied to originally filed claims.

GW Paper Series

GWU Legal Studies Research Paper No. 2013-66; GWU Law School Public Law Research Paper No. 2013-66

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