What is the "Invention"?

ABSTRACT Patent law is in flux, with recent disputes and changes in doctrine fueled by increased attention from the Supreme Court and en banc activity by the Federal Circuit. The natural reaction is to analyze each doctrinal area involved on its own. Upon a closer look, however, many patent cases concern a single, fundamental dispute. Conflicts in opinions on such issues as claim interpretation methodology and the written description requirement are really disagreements over which "invention" the courts should be considering. There are two concepts of invention currently in play in patent decisions. The first is an "external invention" definition, in which courts define the invention by the detailed technology discussion in the patent specification's descriptions and drawings. Other decisions invoke a "claim-centered invention" definition, which relies almost exclusively on the claim, a single sentence at the end of the patent. Judging these two definitions against common patent theories can help to determine which best fits the theories' narratives. This Article concludes that the external invention is more favorable because it grounds exclusivity in what the inventor has actually done or plans to do and, accordingly, is more likely to comport with common patent theories. TABLE OF CONTENTS INTRODUCTION I. TWO MODERN CONFLICTS IN PATENT LAW DOCTRINE AND THE UNDERLYING DEFINITIONS OF INVENTION A. Conflict in Claim Interpretation Methodology B. Conflict in Application of the Written Description Requirement C. The Common Thread--Two Competing Definitions of Invention--"External" Versus "Claim-Centered" Invention 1. "External Invention" Defined a. External Invention in Claim Interpretation b. External Invention and the Written Description Requirement 2. Claim-Centered Invention a. Claim-Centered Invention in Claim Interpretation b. Claim-Centered Invention and the Written Description Requirement II. USING PATENT THEORY TO CHOOSE A DEFINITION OF INVENTION A. Incentive-to-Invent Theory 1. The Story 2. Which Invention Definition Best Fits This Story? B. Prospect Theory 1. The Story 2. Which Invention Definition Best Fits This Story? III. DOCTRINAL IMPLICATIONS OF CHOOSING THE EXTERNAL INVENTION A. Dictates Specific Results in Current Doctrinal Conflicts 1. Claims Should Be "Read in Light of the Specification". 2. Disclosure Must Comply with an Independent Written Description Requirement B. Repositions Other Doctrines 1. Construing Claims to Meet the Disclosure Requirements 2. Greater Use of the Doctrine of Equivalents CONCLUSION INTRODUCTION Patent law has changed dramatically over the past ten years. The Supreme Court is now more active than it once was in reviewing patent cases. (1) The Federal Circuit goes en banc more frequently in attempts to resolve disconnects in doctrine or simply to clarify them. (2) These disputes and changes impact all aspects of patent law. Each is interesting in its own right and prompts much discussion among patent scholars. (3) The presence of so many conflicts and changes in patent doctrine raises the question of whether these disputes share a common theme. Is there an underlying fundamental disagreement in patent law? This Article contends that there is. The discourse in various doctrinal areas revolves around a single question--what is the "invention"? (4) The concept of invention sits at the center of patent law. Patent law begins any inquiry by testing the invention for whether it is worthy of patent protection--that is, whether it is patentable. (5) Then, if the invention is patent eligible, the inquiry shifts to determining the scope of exclusivity awarded to the invention and whether others have infringed upon those relevant rights. …