inoperability rejection.58 However, there is anecdotal evidence that the inventors themselves often genuinely believe that their invention does what it claims.59 Thus, at least from the inventor’s perspective, the incentive to avoid inequitable conduct does not exist.
THE PROBLEM IS BOTH LEGAL AND INSTITUTIONAL
Finally, is the granting of patents to inoperable inventions the result of occasional human error? Or is it, instead, a symptom of a weakness in current case law or institutional problems with the USPTO? The rest of this Comment argues that the problem is indeed a legal and institutional one and suggests some possible solutions. To borrow a phrase from science, the problem appears to be systematic rather than random. Part II summarizes the current law with respect to rejection of patents for inoperability. Part III explores the law-in-action reasons that patent examiners sometimes fail to recognize or react to an inoperable invention. Part III also discusses the current procedures for patent reexamination and why they are unsuitable for after-the-fact inoperability rejections. Part IV looks at a number of patents and patent appeals in detail in an attempt to uncover the strengths and weaknesses of the current system with regard to inoperable inventions. Finally, Part V suggests some possible improvements to the current system that may help reduce the number of inoperable inventions receiving patent protection.
THE LEGAL STANDARD FOR REJECTING INOPERABLE INVENTIONS
A. InoperabilIty and the Substantive Law of Utility
In the context of patents, the concept of utility derives directly from the Constitution, which gives to Congress the power to promote the “useful Arts” by the granting of patents.60 From there, Congress figuratively cut-and-pasted the word “useful” into Title 35 of the U.S. Patent Code, which allows patents only for a “new and useful process,
See Voss, supra note 18, at 1252-53 (noting that, after nuclear science
examiners initially rejected a “cold fusion” patent, the patent attorney directed it toward the electrochemistry examiners, who accepted it); infra Part IV.B (giving an example of
how an applicant drafted a patent to avoid the taint of “perpetual motion”).
For example, dowsing, the apparent theory of operation behind the DKL
LifeGuard device, appears to work precisely because the operator believes in its efficacy. James Randi, The Matter of Dowsing, 2 SWIFT 4, 4-5 (1998), available at
U.S. CONST. art. I, § 8, cl. 8.