Wednesday, June 26, 2013

Janis and Holbrook: Who reads patent laws?

What group of people forms patent law's audience?  In the late eighteenth century, patent law's audience reflected the pre-industrialized nature of the country and was composed of a small group of lawyers and inventors.  Today, the audience matches the modern trend of patent law towards increasing complexity.  The contemporary patent audience includes not only a larger group of lawyers and inventors but also information synthesizers like bloggers, journalists, and academics, as well as innovators' corporate management and the ever-expanding USPTO.  The result of patent law's growing complexity, however, is not only a larger audience, but also a larger audience mostly in the dark about the rules governing their activities.  In Patent Law's Audience, Mark D. Janis and Timothy R. Holbrook discuss the problem of patent law's inaccessibility and offer guides for courts to bridge the gap between patent law and its audience.

The article outlines two problems created by the disconnect between patent law and its audience.  First, inventors shape their activities upon misguided expectations of the law when the actual contours of the law are not effectively disseminated to them.  Inventors' ignorance of the law raises questions about whether the law's goals—to create incentives to invent and disseminate information regarding inventions—are being met.  Second, the complexity of patent law requires reliable intermediaries to reduce patent law's complexity into clean and actionable directives.  Without a comprehensible understanding of the patent system, innovators cannot make informed decisions.

In light of these problems, the authors propose two basic solutions.  Most importantly, they suggest that the courts remember the composition of their audience and promulgate rules to increase proximity (the directness of communication) to inventors while decreasing complexity.  The authors concede that the permissible degree of complexity may increase depending on the composition of the audience.  For example, rules addressed to a small, expert group are likely to have a high degree of proximity.  In that situation, the specific group may tolerate a heightened complexity standard.  Next, courts should respond to the problem pragmatically via intermediaries.  Like Delphic priests deciphering the oracle's prophecies, intermediaries can convey discernible standards to inventors.

The authors lament the Federal Circuit's limited efforts to increase public notice and propose reconceptualizing the specific patent doctrines to more accurately reflect the composition of patent law's audience.  First, they suggest that the court should reform patent scope-related doctrines to provide greater certainty regarding their application.  For example, the authors recommend that absent a clear alternative, courts should abandon the complex disclosure-dedication rules that grant to the public anything unclaimed yet disclosed in the patent specification.  Second, they suggest that the court adjust existing audience-oriented procedures to address their actual audience, i.e. lawyers, innovators, or the general public.  Currently, the court directs doctrines like claim construction to the hypothetical person having ordinary skill in the art (PHOSITA).  The authors argue that the use of the PHOSITA construct only superficially addresses the audience perspective and should be further developed on a case-by-case basis.  Thus, a more robust use of the PHOSITA construct in claim construction may act as an effective intermediary to the general public, while substitution of the PHOSITA construct for a reasonable patent lawyer construct may be more appropriate in the application of necessarily complex doctrines like prosecution history estoppel.  These basic examples highlight the authors' goal of promoting audience proximity to patent law doctrines to allow meaningful participation in the patent system by the actual decision-makers.

The authors raise significant concerns, and their proposals have the potential to improve the effectiveness of patent law.  Indeed, the recent Supreme Court decision in Bowman v. Monsanto Co., 106 U.S.P.Q.2d 1593 (U.S. 2013), underscores the importance of patent law's accessibility.  In Bowman, the Court ruled that the plaintiff farmer had infringed on Monsanto's soybean patent even though the farmer believed his actions were consistent with trade practice.  Increasing patent law's proximity to players within the general public, like the soybean farmer, can reduce uninformed patent infringement.

Drafted by Andria Minyard (, research assistant to Professor Sarah Tran (Southern Methodist University). While Professor Tran is on leave, Professor David Taylor (Southern Methodist University) is supervising her research assistants. Andria is a 2015 Juris Doctor candidate at SMU Dedman School of Law. She received her B.S. in Biology from the University of Texas, Austin. Prior to law school, Andria worked as a Clinical Research Technician at RCTS Labs, Inc.

No comments:

Post a Comment