75 Am. U. L. Rev. 1047 (2026).

Abstract

Unexpected discoveries have transformed human existence. They’ve revolutionized science and spawned entire new fields of research. While unexpected discoveries seem inventive and worthy of patent protection, they don’t formally align with traditional patent theory. The bedrock principle that an invention begins with the conception of an idea in the inventor’s mind and ends with implementation doesn’t apply to unexpected discoveries. This misalignment is most acute for pharmaceuticals, where the discovery of new uses for old drugs has tremendous social and economic importance. Since a drug can inherently treat multiple conditions in a patient—even those unknown to the patient, doctor, or manufacturer at the time of administration—it stands to reason that many purported new uses for old drugs aren’t new: the drug is actually doing what it’s always done. In other words, the serendipitous discovery of an inherent characteristic of a drug may not confer novelty. To address these problems, this Article offers an alternative theory of invention for unexpected discoveries that recognizes the practical realities of modern science. It allows those seeking to patent unexpected discoveries to obtain, maintain, or enforce patent rights that are often absent or jeopardized under the current regime.

* Centennial Professor of Law and Professor of Chemistry, Vanderbilt University. I thank Jonas Anderson, Jorge Contreras, Laura Dolbow, Paul Gugliuzza, Timothy Holbrook, Mark Janis, Mark Lemley, Amy Motomura, Lisa Larrimore Ouellette, Laura Pedraza-Fariña, Jacob Sherkow, Andrew Torrance, and participants at the Tenth Annual Patent Scholars Roundtable and the First Annual Rocky Mountain Intellectual Property Works-in-Progress Workshop for comments and criticisms on earlier versions of this Article. I also thank the late Dmitry Karshtedt for early conversations informing the development of this Article. Finally, I thank Vanderbilt Law School for its support of this project with a research grant. Portions of this Article are adapted from my article, The Invention Myth, 102 WASH. U. L. REV. 985 (2025).