The New Invention Creation Activity Boundary in Patent Law

ABSTRACT This Essay identifies a new boundary in patent law--illegal or immoral invention creation activity--and explores the possible challenges and opportunities it may facilitate. The boundary currently is neither robust nor extensive, and whether and under what circumstances it should exist at all is open to debate. INTRODUCTION Set in eighteenth-century France, author Patrick Suskind's novel Perfume tells the story of Jean-Baptiste Grenouille, a man who, from birth, had no personal body odor, which had the effect of alienating him from others. (1) Lacking a personal scent but having an unusually refined sense of smell, Grenouille, an inventor, became obsessed with developing the perfect perfume that would cause people to adore him. He succeeded in his quest. Unfortunately, his method of creating this compound was to murder young women and extract fragrance compounds from their bodies. Fast-forward to the twenty-first century and imagine that Grenouille seeks a patent on his useful, novel, and nonobvious composition of matter. Should the fact that he murdered people in order to create the invention have any impact on his ability to obtain a patent or on the enforceability of any patent he does obtain? Although this is a hypothetical question, an increasing number of countries are considering, in patentability determinations, past "bad" activities in creating inventive subject matter. Such inquiries traditionally have been irrelevant to an invention's ultimate patentability or to patent enforceability, but times are changing. This Essay, written in conjunction with a conference on boundaries in intellectual property law, identifies what is shaping up to be a new boundary in patent law: invention creation activity. (2) As in real property determinations, patent law contains numerous boundaries, or limits, delineating the criteria for obtaining patent protection and for losing it. Unfortunately, patent law boundaries tend to be difficult to ascertain (3) and are subject to both expansion (4) and contraction. (5) Whereas patent law boundary locations may change, the boundaries themselves are quite stable. Subject matter, utility, novelty, nonobviousness, and others continue to be the basis for patent limits, and it is rare to see old boundaries eliminated or new boundaries created. (6) Yet it appears that a new boundary--invention creation activity--is being erected in patent law today. (7) Recently, applicants for patents in places such as the countries of Europe, Japan, Peru, India, and Brazil have begun facing invention creation activity issues in relation to inventions involving human embryonic stem cells (raising morality concerns) and illegally obtained genetic resources. (8) New revisions to China's patent law include invention creation activity provisions as well. (9) Traditionally, inventor/owner conduct has only been relevant, if at all, in two distinct time periods: (1) after the filing of an application, and (2) before patent issuance. Even then, such conduct is relevant only to patent enforceability, not validity, based on theories derived from the equitable doctrine of unclean hands. (10) For example, in the United States, doctrines such as inequitable conduct and prosecution laches can be asserted to bar enforcement of a patent based on misconduct of the patentee in prosecuting the application; (11) and after a patent issues, the doctrines of patent misuse, equitable estoppel, laches, and more may be invoked to bar enforceability based on patentee misconduct in enforcing the patent. (12) Pre-filing: Post-Filing: Post-Issuance: Emerging Inequitable conduct Patent Misuse restrictions? Prosecution laches Estoppels The idea of patent offices engaging in a similar inquiry for pre-application filing, invention creation conduct is new, but not completely surprising. …