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Monday, August 06, 2012

Ideas and embodiments in patent law

Over the next few posts, I will be discussing a variety of patent law topics. With the Apple v. Samsung trial underway, and a recent $1 billion judgment in favor of Monsanto for patent infringement in the news, hopefully this discussion will be relevant to more than just the patent geeks among us. I should say upfront that I will not be directly discussing the Apple or the Monsanto cases, though many of the issues I will be talking about are indirectly implicated.

To set the stage, I want to first introduce a theoretical point, which is the distinction between two senses of the word “invention.” When patent law talks about an “invention,” it can mean either a concrete embodiment, or a more abstract idea. When we say that the Wright brothers invented “the airplane,” we either mean the particular wooden glider that they flew for 59 seconds at Kitty Hawk in 1903, or we mean the general idea of airplanes as in “machines that fly.” The two concepts of invention are very different.

This probably seems so obvious that I sound ridiculous emphasizing this distinction. But the conflation of these two distinct concepts pervades patent law, and it causes no end of confusion. To take a quick example—I will discuss other examples in later posts—courts routinely say that one may not patent an abstract idea, but nobody knows what this means. The “abstract idea” doctrine is one of the most confusing in all of patent law, and the Supreme Court has taken two cases in the past three terms to clarify this doctrine, without much apparent success.

Once we separate out the concepts of idea and embodiment, it becomes clear why the doctrine is so confused. Nobody really tries to “patent” an idea, in the sense of writing a patent that only says “I have invented the concept of machines that fly.” What every patentee does is first build a particular embodiment—e.g. a crummy barely-flying wooden glider—and then claim an idea more abstractly for purposes of patent scope. In the Wright brothers’ case, they claimed a monopoly over all machines that used the principle of coordinating wings and rudders for flight control, which is a technique that is used in planes even today. The reason that the abstract idea doctrine is so confused is that it relies on a conflated version of “invention.” Every patented invention both is an abstract idea (if we are talking about the scope of the monopoly claimed) and is not an abstract idea (if we are talking about the embodiment).

For those interested in this topic, I discuss it in more detail in this article.

Posted by Tun-Jen Chiang on August 6, 2012 at 06:21 PM | Permalink

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