2012]
CONCEPTION AND MISCONCEPTION IN JOINT INVENTORSHIP
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from Section 101 of the Patent Act, nonobviousness is in some ways the keystone of the definition of invention. The Patent Act, as amended by the America Invents Act, defines an invention as obvious: if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. . . . 33 The nonobviousness requirement lies so close to the heart of the definition of an invention because its purpose is to clarify the historically confused, and sometimes contradictory, judicial interpretation of the constitutional requirement of “invention.” 34 A new technology that would have been obvious to an ordinary scientist or engineer at the critical date may qualify as an innovation in the colloquial sense, but it is not an invention in the patent law sense. 35 A statutory analysis of the concept of invention might be expected to end here. Other requirements for obtaining a patent are usually considered procedural rather than substantive. The Patent Act itself classifies the novelty, utility, and nonobviousness requirements in a chapter of the Act (“Patentability of Inventions”) separate from the chapter specifying the procedural requirements (Chapter 11—“Application for Patent”). Yet, the definition of invention remains incomplete because nothing in Sections 101 to 103 obligates the inventor to understand and appreciate the significance of his own discovery. 36 An
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35 U.S.C. § 103 (2006). Prior to the 2011 amendments, the Patent Act referred to “subject matter” rather than “claimed invention”; there is no indication that this amendment was intended to change the substantive standard of patentability. 34 See Rich, supra note 25, at 497-99; Demaine & Fellmeth, supra note 1, at 365-67. 35 The Patent Act applies to “inventions” and “claimed inventions” — it nowhere creates or deals with a concept of “unpatentable inventions.” However, it may be inferred that some “inventions” are unpatentable if the applicant is either not the true inventor or fails to satisfy the procedural requirements in the patent application. 36 See Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1063 (Fed. Cir. 2005) (“[C]onception requires that the inventor be able to define the compound so as to distinguish it from other materials, and to describe how to obtain it . . . . In other words, conception requires that the inventor appreciate that which he has invented.”); see also Dow Chem. Co. v. Astro-