Tim Holbrook: Can presumptions save patents' technical nature?

Are patents legal documents or part of the technical literature? Both, but the balance is currently skewed, says Professor Timothy Holbrook (Emory Law), in Patents, Presumptions, and Public Notice (forthcoming in the Indiana Law Journal): because of patents' "Janus-like nature, reading and interpreting them can be challenging, as courts must parse both the legal and the technical." This article builds nicely on Holbrook's prior work, including Possession in Patent Law (arguing that the purpose of patents is not disclosure, but rather to show that the inventor possessed the invention).

Holbrook argues that patents are moving away from their technical role as the Federal Circuit makes "systemic efforts to emasculate the PHOSITA" (for the purpose of providing certainty and public notice to lawyers), which "is unfortunate because it transforms the patent inappropriately into a purely legal document." Part I critiques the Federal Circuit's handling of claim construction, written description, and enablement as being too focused on the perspective of lawyers, not inventors. I was particularly interested in his discussion in I.B.3 of how "the Federal Circuit has subtly remolded enablement doctrine to be virtually identical to the law of written description" by "requiring disclosure of information in the specification that is already known to the PHOSITA." Holbrook argues that while the Federal Circuit might view these rules as "information-forcing penalty defaults," they may actually be inefficient, incentivizing "vast overdisclosure." Although my latest paper draft argues that from the perspective of a PHOSITA who wants to use patents as sources of technical information, we should have more disclosure, I agree with Holbrook's general point that patents should be treated as technical documents as well as legal ones.

In Part II, Holbrook argues that the Supreme Court has taken a better approach. The nonobviousness decision in KSR was a "resuscitation of the PHOSITA," and in other cases the Court "resolved the tension between public notice and consideration of the technical through the use of presumptions." For example, in the context of prosecution history estoppel, the Court created presumptions that amendments are made for patentability reasons (in Warner-Jenkinson) and that narrowing amendments surrender equivalents (in Festo VIII). Rebuttable presumptions are important in the patent context, Holbrook argues, because they (1) "implement a policy choice" and (2) serve an "information-forcing function." Returning to the examples from Part I, Holbrook argues that in claim construction, "the intrinsic evidence should create a presumptive interpretation, rebuttable by extrinsic evidence," and that for written description and enablement, "the court should establish presumptions based on the disclosure, subject to rebuttal by extrinsic evidence." Holbrook has thought carefully about how his proposal would work with existing presumptions and burdens, and I think this article is worth a read.