Monday, September 10, 2012

Oskar Liivak—Finding Invention

Could limiting the scope of patents to the patented invention provide clear boundaries and the proper breadth of protection to inventors? Professor Oskar Liivak (Cornell Law School) convincingly argues in his article Finding Invention (forthcoming in the Florida State University Law Review) that the protection and predictability of patents may be improved by extending exclusion only to the “patented invention.” In his article, he proposes that the “patented invention” should be viewed as the set of embodiments disclosed in the patent itself, he addresses how an invention-based patent scope would be capable of reaching after arising technology, and he distinguishes the circumstances where narrow and broad protection should be available.

Patent law continually strives to provide levels of protection for inventors that effectively encourage innovation, without jeopardizing the clarity or predictability of patent boundaries. Professor Liivak argues that by making the actual invention the central focus of patent law, as opposed to focusing on the claims, both purposes can be achieved. Invention-based theories of patent scope have been dismissed in the past because protection of only the invention seems too narrow to protect inventors’ rights and limiting the scope seemingly hampers the incentives for innovation and commercialization.

Professor Liivak argues that by appropriately recognizing the invention as the set of embodiments disclosed in the patent, the invention is much broader than anticipated. He provides an elaborate conceptual understanding of the invention by recounting patent history and argues that the wide range in patent scope decisions could be explained by the extent those embodiments are disclosed. Broad patent scope would be granted in cases where the disclosed embodiments were generalized or where alternative embodiments were explicitly disclosed. Professor Liivak points out that despite their generality, instructions must provide sufficient detail for a person of skill to follow without further invention. Additionally, he notes that a broad patent scope does not inevitably cause vague boundaries. Rather, the principle of the invention is limited to the disclosed embodiments.

Professor Liivak reasons that while broad patent scope may be attained in some cases, not every patentee will be able to list alternatives or generalize the embodiments in their disclosure. In such instances, the patent scope is appropriately narrow. This may occur due to the inventor’s failure to disclose more broadly or the inventor’s inability to generalize beyond their one operable embodiment, similar to the trial and error screening in The Incandescent Lamp Patent. Professor Liivak acknowledges that biotechnology, specifically the sophisticated and elegant trial and error methods used for antibodies, would likely be impacted by his arguments of narrow inventorship due to the lack of clarity regarding the “antibody exception” after Centocor (holding the asserted claims invalid for lack of written description but not explicitly overruling the antibody exception). Professor Liivak further explains that when features of the disclosed embodiments are generalized, the invention could extend into after arising technology; whereas, patent scope would not extend in cases of narrow inventorship.

By focusing on the patented invention, patent scope should become much more predictable and consistent. Perhaps more importantly, Professor Liivak demonstrates that by returning to the invention as the focal point of patent law, adequate protection to inventors and clear boundaries are both achievable. Recent scholarship has taken particular interest in patent law’s shift in focus from the claims to the invention and the effects upon patents’ reach into after arising technology. See, e.g., Dan L. Burk & Mark A. Lemley, The Patent Crisis and How the Courts Can Solve It (2009); Oskar Liivak, Rescuing the Invention from the Cult of the Claim, 42 Seton Hall L. Rev. 1 (2012); Tun-Jen Chiang, A Novelty-of-Idea Theory of Patent Scope, Wash. U. L. Rev. (forthcoming 2012). In Finding Invention, Professor Liivak uncovers a historical focus on the invention that provides modern patent law a surprisingly rich concept capable of clear and ample protection to inventors.

Drafted by Derik Sanders (, a 2014 Juris Doctor Candidate at SMU Dedman School of Law and research assistant to Professor Sarah Tran.