Guest Post by Prof. Hrdy & Dan Brean: The Patent Law Origins of Science Fiction

Guest post by Camilla A. Hrdy, Professor of Intellectual Property Law at University of Akron School of Law, and Daniel H. Brean, Senior In-House Intellectual Property Counsel, Respiratory Care, Philips.

Are inventions described in works of science fiction patentable? The answer is usually no, and for good reason. Some of the most beloved fixtures of the genre—time machines, faster-than-light space travel, teleportation, downloading memories, copying a consciousness, etcetera—are impossible or not yet possible when described by the author. This sort of science fiction is not patentable because it cannot logically be enabled or have credible utility when the patent is filed.

For similar reasons, science fiction is rarely cited as prior art against later patent filings. Science fiction can qualify as prior art under § 102(a) as a “printed publication” or as “otherwise available to the public.” It can be especially useful as “obviousness” prior art because, to quote the Federal Circuit, a “reference that does not provide an enabling disclosure for a particular claim limitation may nonetheless furnish the motivation to combine, and be combined with, another reference in which that limitation is enabled.” Raytheon Techs. Corp. v. General Electric Company, 993 F.3d 1374 (2021). However, science fiction is unlikely to be cited during examination.[1] Examiners lack the time and energy to search for on-point science fiction where there is so much more (and better catalogued) prior art among patents and scientific publications. Applicants, for their part, are not required to disclose prior art that is not material to patentability or that is cumulative of other prior art they’ve already provided. See https://www.uspto.gov/web/offices/pac/mpep/s2001.html.

It may surprise you, then, to learn that the genre of science fiction is deeply indebted to patent law and patent theory. In our new paper, The Patent Law Origins of Science Fiction, available at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4291271, we show that science fiction as a literary form was originally premised on the idea that works of science fiction are like patents. They disclose useful technical information that can give readers a “stimulus” to perfect the invention and figure out how to make it work.

The person responsible for this comparison was the so-called “father” of science fiction, Hugo Gernsback. He started the first exclusively-science fiction magazine, called Amazing Stories, in 1926. The Hugo awards, given to the best works of science fiction and fantasy writing, are named after him.

Gernsback was also an inventor and serious scientific thinker in his own right. He died with over thirty patents to his name. In the early 1900s, he started a radio and electronics equipment company in New York. To support his business, he initially published catalogs for mail-order electrical components, but the catalogs soon morphed into full-sized magazines with titles like “Modern Electrics, marketed to inventors and amateur “tinkerers.” Hugo Gernsback, The Perversity of Things, Grant Wythoff ed. (University of Minnesota Press 2016). His magazines were full of information about patents and advice on patenting—which Gernsback deemed an essential step in the commercial success of any new invention.

At first, Gernsback started publishing science fiction stories—which he then called “scientifiction”—to fill space in his electrical magazines. These stories were sometimes little more than a few paragraphs of exposition about some speculative new device that might be used in the future, plugged into a generic adventure plot. For example, one story featured a genius from the future using (what we now call) “radar” to track down a Martian who had kidnapped the protagonist’s love interest in a Space Flyer. Despite the fictional elements, science and scientific plausibility were still all-important. Gernsback was fond of saying the recipe for good scientifiction was 25% science and 75% literature.

Readers loved it, and Amazing Stories was born. Gernsback knew he was on to something, and he frequently published editorials expounding on the virtues of scientifiction. These editorials, along with his unpublished manuscripts, reveal Gernsback’s theory that a good science fiction story is like a patent, but a much more “palatable” read. Although he did not articulate it in precisely the same terms, Gernsback’s justification for scientifiction echoes the language of patent law’s disclosure theory. Scientifiction, he wrote, provides both knowledge and “stimulus.”[2] It inspires “seriously-minded” readers to learn about science and technology, and it supplies the “inventor or inventor-to-be who reads the story” with “an incentive” to “realiz[e] the author’s ambition” by perfecting the author’s science fictional inventions in the real world. Gernsback often drew the analogy to patents quite explicitly. The science fiction author, in his framework, was “an original inventor,” like the named inventor on a patent. The readers who got the author’s invention to work were like “manufacturers” who buy patents and commercialize the inventions therein “with but a few changes.” They were just there to profit from the author’s grand ambitions.

Over time, Gernsback developed a crazy idea. If science fiction authors are “inventors” who inspire others to reduce their inventions to practice, then shouldn’t science fiction authors be able to get patents for their prescient descriptions of future inventions? And shouldn’t science fiction serve as prior art against other peoples’ patents? In 1952, just after Congress had modernized the Patent Act, Gernsback made these ideas public. In a speech he gave to the World Science Fiction Convention in Chicago, he proposed that Congress should reform patent law (again) to give science fiction authors the ability to apply for “Provisional Patents.”

Gernsback’s Provisional Patents were not at all like today’s provisional patent applications. Compare 35 U.S.C. § 111. His Provisional Patents would have given science fiction authors thirty extra years in which to demonstrate their science fictional inventions worked. If they could do so, the Provisional Patent would be converted into a normal patent, presumably in force for the full patent term (which at that time meant 17 years). Otherwise, it would be abandoned. This proposal was not adopted and, we presume, was never seriously considered.

In the same speech, Gernsback also proposed that authors and publishers should start identifying works of science fiction that contained “new and feasible” inventions, so that they could send these selected works to the patent office. Gernsback’s hope was that the patent office would be deluged with science fiction and have no choice but to start reviewing and citing science fiction more often as prior art. This idea had more grounding in current law than Gernsback’s Provisional Patents, but it was not adopted either. Mechanisms for getting prior art to the patent office have certainly improved since Gernsback’s time. But we still don’t send the patent office curated collections of science fiction.

Gernsback’s ideas were iconoclastic, and his proposal to make Provisional Patents available for inventions that are not yet reduced to practice is deeply troubling from a policy perspective. Science fiction authors who make reasonably accurate predictions about future technological developments would gain the ability to sue the very people who figure out how to make those technologies. Imagine the effect on the computer industry if a science fiction author had been able to reserve the right to patent a supercomputer in the early 1920s, and then converted this into a full patent in the 1950s…

But taking Gernsback’s ideas seriously generates some surprising insights. Science fiction—of the type that Gernsback and “hard sf” writers like Jules Verne and Isaac Asimov wrote—has more in common with patents than it might seem. Publishing a work of science fiction confers no exclusive rights on the inventions it contains. But, like patents, works of science fiction are documents that disclose potentially useful information about science and technology. Like patents, science fiction stories can describe inventions that have not literally been reduced to practice; they can leave many details to skilled artisans to figure out. Both science fiction readers and patent examiners are also supposed to suspend disbelief, presuming the inventions described on the page are based on plausible scientific principles. See, e.g. In re Cortright, 165 F.3d 1353 (1999). If we think patents are an important part of the innovation ecosystem because they disseminate useful technological teachings and insights, then science fiction might be too.

How often science fiction influences innovation is an extremely interesting question. Ironically, the patent record itself is a great source of data with which to test Gernsback’s theories. In fact, one of Gernsback’s more questionable assumptions was that profit-hungry readers are “continuously” filing patents on inventions they learned about in science fiction. They remember the idea, “lard it with a few of [their] own, patent it and start a new billion dollar industry on it.” Regardless of whether that is true, if someone is inspired by science fiction to make an invention in the real world, then we should sometimes see evidence of this in the patent record.

Formal prior art citations to science fiction are rare for the reasons we said above. But we can find circumstantial evidence of science fiction’s influence by searching patents. For example, specifications sometimes reference science fiction in the body, even if they don’t formally cite to science fiction as prior art. Search the patent record for “Asimov, “Three Laws of Robotics,” or “Star Trek,” and you’ll see what we mean. We can also find more direct evidence of influence—situations where inventors expressly state that they got their inspiration from science fiction. For this, though, we usually have to look outside the patent record. Inventors’ autobiographies, interviews, speeches, and marketing efforts can reveal clues. For example, Neil Stephenson’s 1992 book Snow Crash features a virtual world called the Metaverse. Facebook and other tech companies are making their own virtual worlds and calling them by the same name. That, along with direct statements from employees that Stephenson is “our inspiration,” helps support that there was some degree of influence. Steven Levy, Neal Stephenson Named the Metaverse. Now, He’s Building It, Wired (Sept. 16, 2022).

This is surely sometimes independent invention, the result of multiple inventors responding to the same technological developments and contemporary trends. Mark A. Lemley, The Myth of the Sole Inventor, 110 Mich. L. Rev. 709 (2012). But sometimes it is not. Despite all the legal and practical barriers, science fiction appears in the patent record. It was important enough to play some small part in the journey that culminated in the invention. At the end of the day, there is only one explanation for this: Some inventors read science fiction, and some science fiction matters to those people. Its ideas inspire them in ways that traditional sources (including patents) do not. Gernsback put it best. Science fiction “fires the reader’s imagination more perhaps than anything else of which we know,” leaving readers “deeply thrilled[,]” as their “imagination is fired to the nth degree[.]” Few people would ever say that about reading patents.

Even if science fiction does not directly influence someone to make the precise inventions it discloses, it can impact peoples’ career choices, inspiring them to go into science or pursue a general line of inquiry. It can inspire them to go to space. Kristen Houser, Science fiction doesn’t predict the future. It inspires it, BigThink (Oct. 23, 2021). Arthur C. Clarke went so far as to say that “by writing about space flight we have brought its realization nearer by decades.” In Clarke’s view, science fiction both imparted useful technical information and acclimated readers to the possibility of space flight, priming them to support and accept the novel technology when it arrived.

Gernsback’s science fiction-as-patent theory also contains some wisdom for science fiction writers. A little more patent-style “enablement” in science fiction might do more for innovation than science fiction writers want to believe. There is nothing wrong with fantasy and so-called speculative fiction. It is often tremendously entertaining. But we call it science fiction (and thankfully not scientifiction) for a reason: it is based on kernels of real science. To quote Gernsback, what makes science fiction different from romance and adventure stories is that it is grounded in “scientific fact” and has the potential to be “prophetic.” It might one day come to pass. Science fiction authors who work to “enable” their stories, even just a bit, have a better chance to give a stimulus to readers to reduce their inventions to practice. There are many, many authors who already do this, and do so without compromising the quality of the narrative. They might literally affect the future in the way we imagine all inventors hope their patents will. See https://gamerant.com/best-hard-sci-fi-novels-newcomers/#the-three-body-problem-mdash-liu-cixin; https://upjourney.com/best-hard-science-fiction-novels.

For more about Gernsback’s ideas on patents and for more examples of science fiction’s impact on innovation, check out our paper here: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4291271

[1] This is not to say it does not happen. In litigation, defendants have stronger incentives to find science fiction prior art and use it to build a case for invalidity. For example, in 2011, during the “smart phone wars,” Samsung argued Apple’s iPad design patent was anticipated by what appear to be “tablet” computers in scenes from Stanley Kubrick’s 1968 film 2001: A Space Odyssey. http://www.fosspatents.com/2011/08/samsung-cites-stanley-kubricks-2001.html

[2] These quotes come from Gernsback’s editorials in Amazing Stories. The full quotes and citations can be found in the paper. https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4291271

 

23 thoughts on “Guest Post by Prof. Hrdy & Dan Brean: The Patent Law Origins of Science Fiction

  1. 7

    To me, science fiction is an admission that something can’t be done. Similar to long-felt need, it should work in favor of patentability. The inventor has provided a solution to a problem or need that was previously documented. That solution should trump any motivation to combine argument.

    I don’t seem to recall long-felt need being used as a motivation to combine.

    1. 7.1

      That’s not a bad insight.

      Of course, the issue is bit more finessed than that (detractors being in too much of a hurry to bother with such niceties).

      Can a work of fiction (ANY fiction, science, romance, or any other) contain factual items at its date of publication?

      Certainly.

      But that is not the quality that classifies the item AS fiction.

      Further, any such inclusion of fact in a work of art that is classified as fiction will necessarily have better non-fiction sources validating the item on a pure factual basis, and hence would immeasurably be better evidence (and in legal matters, all things being equal, one should always go for the better evidence).

    2. 7.2

      > To me, science fiction is an admission that something can’t be done.

      It depends on the timing, of course. Not all science fiction is crazy stuff like warp drives, transporters, planet killing weapons, etc.

      For example, 2001: A Space Odyssey, has a famous scene in which the main character uses a picturephone to make a video call to his daughter during a layover at a remote station. If you were challenging a 1975 filing date patent on video phones, you certainly could have formulated an enabling invalidity theory based on 2001: A Space Odyssey in combination with then-existing video capture and transmission systems. There are countless devices from works of science fiction that became technological realities years or decades later, such as eye scanner security systems, lasers, tablet computers, virtual reality, smart watches, and the list goes on and on.

      But to me, there are two big issues to relying on science fiction.

      First, under what circumstances would you actually rely on science fiction for an actual invalidating disclosure? Once you get to the point in the time when the technology has developed sufficiently that you could actually carry out/enable the disclosures in the sci-fi work, you’ve likely also reached a point when teachings from real/non sci-fi references exist. In the video phone example from 2001:A Space Odyssey, by the time you could actually have enabled that disclosure, there were articles from AT&T and others discussing how to build real actual devices. No one would rely on fictional disclosures to challenge a patent when those disclosures exist in the real world.

      Second and relatedly, it seems like you’d have an obstacle showing that a science fiction disclosure is actually an “analogous” reference for purposes of obviousness, etc., especially by the later filing date of the challenged patent when it could have been enabled/carried out. The universe of analogous references is broad, sure, but not unlimited. It’s not immediately clear how one could explain why a POSITA would have regarded a science fiction disclosure as falling in the same field as the invention. I am not sure if arguments about providing generic “inspiration” are going to be enough to show that the sci-fi disclosure is something a POSITA would have relied on.

      So I don’t think science fiction is categorically out as prior art, but from a practical standpoint it isn’t clear there are many scenarios where it would actually be useful. It seems that the main utility of sci-fi is thematic, to show that the underlying idea was known much, much, earlier (such as the example in the article of Samsung challenging Apple’s iPad patents and pointing to to 2001: A Space Odyssey to show handheld tablet computers). It’s hard to imagine a concrete scenario where you’d want to rely on science fiction for actual invalidating disclosures.

  2. 6

    I thought a bit about this article and it is just more anti-patent trash. The idea is to elevate science fiction to prior art with somehow enablement and reality meaning nothing.

    The crux of the misrepresentations is here:

    >>Like patents, science fiction stories can describe inventions that have not literally been reduced to practice; they can leave many details to skilled artisans to figure out.

    No. Patent applications often describe real inventions that have been reduced to practice and every person skilled in the art could reduce the invention to practice with the teachings of the patent application.

    “Science fiction” is just that–fiction. The technologies in a fiction book may or may not be able to be reduced to practice by a POSITA. Science fiction describes many things that could not at the time be reduced to practice and the how they are reduced to practice is often the invention. Goals are typically easy to write about. Stephenson’s book, which I read when it was first published, was describing–in reality–technologies that were already in R&D by DARPA.

    Anyway, the trash part of this whole article, which seems to have as the point to get brownie points from Lemley and the like, is to somehow elevate a fictional description of an invention as merely needing a “skilled artisan” to get the prosaic work of implementation done.

    Let me make this perfectly clear–no one that works in technology and is trained in science believes that. The philosophy majors who have never had to invent anything or build anything do believe that. The history of invention tells us that this article is trash.

    1. 6.1

      So, because it is “science fiction” somehow the ideas expressed are to be elevated? Just offensive shxt. The vast majority of science fiction ideas are not possible with current technologies. Also, note the way the author tries to elevate some “science fiction” authors to a super scientist status where their ideas should carry more weight. This is the infection of the Woke. The neo-Marxist ideas of the elite ruling class.

  3. 5

    Science fiction has been used as prior art and it was upheld at the Board if I recall correctly. One of my fellow examiners had his rejection appealed based on a SciFi story and it survived scrutiny at the Board. The only opinion that matter is the judge’s and the judges say science fiction is good art.

    I have even used law statutes as prior art. When some patent attorney tried to patent a criminal act, I had to cite the criminal statute’s date from the 1930s. Patent practitioners will try to patent anything and everything but most attorneys don’t see it if they work for a respectable firm. Thank goodness for the Alice/Mayo line of cases or every sci fi plot would be filed at the patent office.

    1. 5.1

      >>Thank goodness for the Alice/Mayo line of cases or every sci fi plot would be filed at the patent office.

      This is simply wrong. Alice/Mayo/KSR have made patenting less predictable and both more expansive and more restrictive.

  4. 4

    Science Fiction (or Speculative Fiction as Harlan Ellison insisted it be called) is only Desired Results unless it is enabled.

  5. 3

    Of course “science fiction” can be prior art, for exactly the reason that the Federal Circuit (and other courts) have already suggested.

    Pass the popcorn and let’s watch the usual whiners complain about this oh-so-unfair “patent weakening” concept.

  6. 2

    The one part of the paper that is the absolute worst (science fiction AS patent prior art) is the one part the authors shine up to.

    Tragic mistake.

    1. 2.1

      Science fiction is not prior art — it is prior speculation. Speculation is not enabled.

      1. 2.1.1

        I don’t underatand how a reasonable patent professional can categorically say that Science Fiction is not prior art.

        One of ordinary skill in the art could’ve built the waterbed in Stranger in a Strange land.

        Sure, the enablement of that description heavily leans on the knowledge of one of ordinary skill in the art. But a patent professional knows that that sort of enablement is bog standard. A patent professional is not the common man who might laughably believe that the inventor is required to actually document the specific techniques used to implement their invention. Or that the inventor is required to be able to implement their invention themselves.

        The patent professional also understands that prior art can enable some times but not others. Stranger in a Strange land is prior art for temperature controlled waterbeds, not for living on mars.

        I’m not saying everything in scifi is enabled. But it is a wide genre and it is not limited exclusively to fanciful ideas.

        Say there’s a science fiction book about an advanced AI that takes over the world. Perhaps chapter one mentions a lesser neural network trained to implement an already achievable goal that simply hasn’t been articulated. Of course the world conquering AI is not enabled, but perhaps the neural network that does some minor function is enabled.

        You can’t say one way or the other without seeing the idea.

        So one should not say science fiction is categorically not prior art.

        1. 2.1.1.1

          “ I don’t underatand how a reasonable patent professional can categorically say that Science Fiction is not prior art.”

          You assume there is some careful rational thinking behind the resistance. There isn’t. And you should know better by now (no offense).

          1. 2.1.1.1.1

            Certainly there is.

            It is quite disingenuous of you to pretend otherwise.

            1. 2.1.1.1.2.1

              Meh,

              Typically not (but will, of course, be situation dependent).

        2. 2.1.1.2

          Is it an enabling disclosure? If not, should not be prior art.

          And motivation? So, if someone writes one day we will harness the power of the Sun, this then means that solar panels and fusion are obvious.

          Anyway, just trashy junk thoughts from you and this author.

      2. 2.1.2

        “While a reference must enable someone to practice the invention in order to anticipate under § 102(b), a non-enabling reference may qualify as prior art for the purpose of determining obviousness under § 103.” Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991).

        As the authors note above, a “reference that does not provide an enabling disclosure for a particular claim limitation may nonetheless furnish the motivation to combine… .” Raytheon Techs. Corp. v. General Elec. Co., 993 F.3d 1374, 1380 (2021).

        1. 2.1.2.1

          Yes, this is right.

          Plus, the entire article is silly. What does it mean “science fiction”? Everything is so fact specific. It just depends what is disclosed. Many papers have sections that make wild speculations. And much in science fiction is actually already science fact.

          One must just look at what is written and evaluate it.

        2. 2.1.2.2

          On “motivation” the operative word is, I suppose, “may”.

          Is it in the USA like under the EPC, that everything made available to the public is eligible to be cited for novelty but for obviousness not every two prior art references are legitimate to combine, even when they fail to “teach away”?

          I mean, a sentence in an obscure literary work of fiction “could” have given the imaginary phone designer of ordinary skill the idea for a clamshell phone, but isn’t it possible for the court to find on the evidence that the notional designer “would” not even have encountered that sentence (let alone being motivated by it).

          It would be otherwise (I suppose) if a clam shell phone design were to have featured prominently (but not enabled) in that very famous TV science fiction series Star Trek.

          1. 2.1.2.2.1

            “ isn’t it possible for the court to find on the evidence that the notional designer “would” not even have encountered that sentence”

            Yes it’s possible. Nobody was asserting, however, that every court MUST admit or rely on the evidence in every instance.

          2. 2.1.2.2.2

            That’s a sizable turd being thrown against the wall with introducing design patents into the conversation.

  7. 1

    Maybe it’s an urban myth in the patent world but I do recall a story going around that the prop communicator used in the original Star Trek series was cited as prior art against a flip-phone application.

    Unrelated article about Star Trek and cell phones.
    link to cbr.com

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