Inventing Invention: The Patentability Standard as a Case Study in Legal Innovation

Professor John F. Duffy, The George Washington University School of Law (Washington, D.C.)

In 1986, the German scholar Friedrich-Karl Beier wrote that "the so-called patentability requirement was invented by the Americans, in particular the Justices of the U.S. Supreme Court in the famous case Hotchkiss v. Greenwood in 1850." Historically, the U.S. Supreme Court has been a major contributor to the world-wide project of developing a sensible patentability standard, and it has continued this role even in this past year with its watershed decision in KSR v. Teleflex. In this paper, however, Professor Duffy questions whether one of the great doctrines of modern patent law -- the nonobviousness or inventive step requirement -- really does owe its invention to a single case from the Justices of what was then a developing country in the world. The paper traces the development of the doctrine through five hundred years and uncovers a very complex story with significant contributions from multiple countries. For scholars of intellectual property law, this history provides significant insights into the proper functioning and continued development of the patentability standard. But the history also yields broader insights into how legal cultures themselves engage in innovation through an incremental process of experimentation that slowly yields new doctrines to improve the utility of a society's legal structure. Cases such as KSR v. Teleflex show the process of experimentation continuing through this day.

Professor Duffy is uniquely positioned to observe this recent continuation of experimentation in the field. In 2002, he called for reformation of U.S. obviousness law; in 2003, he predicted that the U.S. Supreme Court would soon address the topic; and in 2005-2007, he served as co-counsel to KSR and helped convince the U.S. Supreme Court to review the case and to overturn lower court law. In his talk, Prof. Duffy commented on this recent development and placed it in a broader historical context.