WISCONSIN LAW REVIEW
example, an examiner to delve into the obscure literature of dielectrophoresis and then prove, by arduous calculation, that the effect is insufficient to move an antenna in response to a distant human presence. The law, as it currently stands, requires far too much of the typical patent examiner.
Before In re Langer, the burden automatically shifted to the applicant to prove the utility of an invention when the claims were deemed to be incredible in light of accepted scientific principles.275 The presumption of inoperability where incredible claims are made may still be good law, but the USPTO takes a very conservative position on this issue, suggesting to its examiners that a mere assertion of incredible claims will not be sufficient to survive an appeal.276 Reasserting the presumption of inoperability in such cases would go a long way towards emboldening patent examiners to point out pseudoscientific deficiencies in the patents they examine.
Moreover, the current law actually increases the cost of rejecting inoperable patents by requiring the examiner to devote a significant amount of time and effort to the rejection. Not only would automatically shifting the burden to the applicant in cases of pseudoscientific claims add no additional cost to the process, it would actually decrease the overall costs of the patent rejections for the USPTO.277 Assuming that inoperable inventions have no legitimate market value, shifting the costs of patent rejections to the applicant would have a minimal effect on the efficiency of technology markets.278 Of course, the current system of quickly processing all but the most outrageous patents with wide-eyed credulity already results in significant cost savings. Yet, the thesis of this Comment is that the USPTO could benefit from a healthy dose of skepticism—reducing the cost of inoperability rejections would only help to make this skepticism more palatable.
One possibility is to amend the law to require the applicant to prove, by a preponderance of the evidence, that an invention is operable in cases where the theory of operation violates accepted scientific principles. The objection, of course, is that many current scientific principles were once thought to violate “known” principles and that such a rule might prevent the patenting of some truly
See In re Chilowsky, 229 F.2d 457, 462 (C.C.P.A. 1956).
U.S. PATENT & TRADEMARK OFFICE, supra note 90, § 2107.2(III)(B).
Applicants may also be less likely to appeal after a rejection if the burden
of proving operability is shifted to them.
This is not the case, of course, when patent examiners mistakenly classify
operable patents as inoperable. See supra Part IV.D.