I started reading Liivak's paper after Lemley's Point of Novelty (the subject of my last post) by coincidence, but there are interesting parallels between the two papers. Lemley argues that we have lost sight of what is new about an invention and remarks, as I mentioned, that "[t]he heart of the problem may be the law's focus on the language of lawyer-created claims rather than inventor-created technologies." Liivak sees a similar problem with the current definition of "invention" as "the subject matter circumscribed by a valid patent claim," rather than as "the set of embodiments that the inventor has conceived and reduced to practice." (I have also recently heard James Dabney, who represented KSR in KSR v. Teleflex, describe this same theoretical confusion between the claims and the invention as a guest in a Yale Law class, so this theme has been popping up a lot recently.)
But Liivak explores this problem – and a potential solution – in more detail than I have seen before. His historical explanation of how a substantive concept of invention was wiped out of patent law is delightfully concise, and his exploration of the problems with the "trivial view" of invention (in which the claims define the invention) seems convincing. He then argues for a "substantive view" of invention, mediated by disclosure:
[D]isclosure ... enforces the equivalence between the invented subject matter and the claimed subject matter. A claim complies with the requirements of § 112 if the specification can corroberate that the inventor invented the claimed subject matter. This ensures that the claims are indeed good proxies for the invention.Under this view, claims are "proxies for the invention" or "administrative tools," and claims can still be broad as long as the disclosure is. It isn't clear to me, though, what Liivak would think of something like the windshield wiper example in my last post. If the inventor only invents intermittent windshield wipers but claims a car using these wipers, is that claim allowed as long as the car is fully disclosed? Lemley would say yes, but that courts should recognize that only the wipers were novel; I'm not sure whether Liivak's "substantive" invention is only the wipers or if it can include the car. But in any case, it's an interesting argument, and Liivak explores a number of resulting details (like whether his claims could reach after-arising technology).
The draft of Liivak's article linked above is from the August 2010 IP Scholars Conference at Berkeley; it was clearly a work-in-progress at that point, but I'm sure it has evolved and improved over the past six months. It doesn't appear to have been accepted for publication yet, so I look forward to seeing where it ends up and reading the final version. (I'll update this post when a more recent version is available.) New law review articles editors, take note!