Professor Janet Freilich (Fordham Law) has a fantastic forthcoming law review article, Prophetic Patents, which puts a spotlight on the common practice of submitting patent applications containing entirely hypothetical experimental results. These "prophetic examples" are permitted as long as the predicted results are not in the past tense. Using this tense rule, Freilich analyzed over two million U.S. patents in chemistry and biology, and she estimates that 17% of examples in these patents are prophetic. Prophetic examples may be familiar to patent drafters, but scientists and engineers who learn about them generally describe them as bizarre, and even some patent scholars are unfamiliar with the practice. Prophetic Patents was the one article by a lawyer selected for the 2018 NBER Summer Institute on Innovation, and the economist-heavy audience was fascinated by the concept—many were not even aware that researchers can obtain a patent without actually implementing an invention, much less that patents can contain hypothetical data.
Freilich notes the potential benefits of allowing untested ideas to be patented in terms of encouraging earlier disclosure and helping firms acquire financing, though she finds that patents with prophetic examples are not broader (based on claim word count), filed earlier (based on AIA implementation), or more likely to be filed by small entities. I'm very sympathetic to the argument that the current legal standard may allow speculative ideas to be patented too early—I've argued in prior work that all the competing policy considerations raised by Pierson v. Post about the optimal timing of property rights suggest that many patents are currently awarded prematurely. This is a challenging empirical question, however, because we cannot observe the counterfactual innovation ecosystem operating under a different legal standard.
But while pondering the hard question of the timing of patentability, patent scholars should not lose sight of the easy question: even if patenting untested inventions is socially desirable, there is no reason these patents need to be confusing. To me, Freilich's most interesting empirical result is her study of how often prophetic patents are mis-cited in scientific publications. She looked at 100 randomly selected patents with only prophetic examples that were cited in a scientific article or book for a specific proposition, and she found that 99 were not cited in a way that made clear they were prophetic. Instead, they were cited with phrases such as "[d]ehydration reaction in gas phase has been carried out over solid acid catalysts" (emphasis added). And it is not surprising that scientist readers are misled: many prophetic examples do confusingly mimic actual experiments, with specific numerical results. In prior work, I have shown that contrary to the assertions of some patent scholars, a substantial number of scientists do look to the patent literature to learn new technical information. So it is concerning that a large number of patents are written in a way that can be confusing to readers unfamiliar with the tense rule.
Freilich and I teamed up on a new project for which we interviewed patent drafters to explore whether prophetic examples have any important benefits for patentees that could not be obtained through less misleading methods of constructive reduction to practice. In Science Fiction: Fictitious Experiments in Patents—just published in last week's Science—we explain that the answer is no. Patent prosecutors who rarely use prophetic examples argued that there is no legal reason to use fictitious experiments with specific results rather than more general predictions. Those who usually use prophetic examples agreed that more explicit labeling would not affect the patents' legal strength. The only benefit to patentees that would be reduced by requiring greater clarity seems to be any benefit that comes from confusion, which does not seem worth preserving.
The USPTO already requires prophetic examples to be labeled by tense. But the tense rule is unfamiliar to many readers (including scientists and investors), and the distinction in tenses may be literally lost in translation in foreign patent offices. (For example, the form of Chinese verbs does not change with tense.) There is no good justification for not having a more explicit label, such as "hypothetical experiment." As Freilich and I conclude: "Just because some patents are not based on actual results does not mean they need to be confusing. Scientists regularly write grant applications in a way that makes clear what preliminary data they have already acquired and what the expected goal of the proposed project is. Perhaps this is an area in which the patent system could learn from the scientific community."
Showing posts with label 112. Show all posts
Showing posts with label 112. Show all posts
Tuesday, June 18, 2019
Tuesday, March 6, 2018
The Quest to Patent Perpetual Motion
Those familiar with my work will know that I am a big fan of utility doctrine. I think it is underused and misunderstood. When I teach about operable utility, I use perpetual motion machines as the type of fantastic (and not in a good way) invention that will be rejected by the PTO as inoperable due to violating the laws of thermodynamics.
On my way to a conference last week, I watched a great documentary called Newman about one inventor's quest to patent a perpetual motion machine. The trailer is here, and you can stream it pretty cheaply (I assume it will come to a service at some point):
The movie is really well done, I think. The first two-thirds is a great survey of old footage, along with interviews of many people involved in the saga. The final third focuses on what became of Newman after his court case, leading to a surprising ending that colors how we should look at the first part of the movie. The two acts work really well together, and I think this movie should be of interest to anyone, and not just patent geeks.
That said, I'd like to spend a bit of time on the patent aspects, namely utility doctrine. Wikipedia has a pretty detailed entry, with links to many of the relevant documents. The federal circuit case, Newman v. Quigg, as well as the district court case, also lay out many of the facts. The claim was extremely broad:
First, the case continues what I believe to be a central confusion in utility. The initial rejection was not based on Section 101 ("new and useful") but on Section 112 (enablement to "make and use"). This is a problematic distinction. As the Patent Board of Appeals even noted: "We do not doubt that a worker in this art with appellant's specification before him could construct a motor ... as shown in Fig. 6 of the drawing." Well, then one could make and use it, even if it failed at its essential purpose. Now, there is an argument that the claim is so broad that Newman didn't enable every device claimed (as in the Incandescent Lamp case), but that's not what the board was describing. The section 101 defense was not added until 1986, well into the district court proceeding. The district court later makes some actual 112 comments (that the description is metaphysical), but this is not the same as failing to achieve the claimed outcome. The Federal Circuit makes clear that 112 can support this type of rejection: "neither is the patent applicant relieved of the requirement of teaching how to achieve the claimed result, even if the theory of operation is not correctly explained or even understood." But this is not really enablement - it's operable utility! The 112 theory of utility is that you can't enable someone to use and invention if it's got no use. But just about every invention has some use. I write about this confusion in my article A Surprisingly Useful Requirement.
Second, this leads to another key point of the case. The failed claim was primarily due to the insistence on claiming perpetual motion. Had Newman claimed a novel motor, then the claim might have survived (though there was a 102/103 rejection somewhere in the history). One of the central themes of the documentary was that Newman needed this patent to commercialize his invention, so others could not steal the idea. He could not share it until it was protected. But he could have achieved this goal with a much narrower patent that did not claim perpetual motion. That he did not attempt a narrower patent is quite revealing, and foreshadows some of the interesting revelations from the end of the documentary.
Third, the special master in the case, William Schuyler, had been Commissioner of Patents. He recommended that the Court grant the patent, finding sufficient evidence to support the claims. It is surprising that he would have issued a report finding operable utility here, putting the Patent Office in the unenviable position of attacking its former chief.
Fourth, the case is an illustration in waiver. Newman claimed that the device only worked properly when ungrounded. More important, the output was measured in complicated ways (according to his own witnesses). Yet, Newman failed to indicate how measurement should be done when it counted: "Dr. Hebner [of National Bureau of Standards] then asked Newman directly where he intended that the power output be measured. His attorney advised Newman not to answer, and Newman and his coterie departed without further comment." The court finds a similar waiver with respect to whether the device should have been grounded, an apparently key requirement. These two waivers allowed the courts to credit the testing over Newman's later objections that the testing was improperly handled.
I'm sure I had briefly read Newman v. Quigg at some point in the past, and the case is cited as the seminal "no perpetual motion machine" case. Even so, I'm glad I watched the documentary to get a better picture of the times and hooplah that went with this, as well as what became of the man who claimed to defy the laws of thermodynamics.
On my way to a conference last week, I watched a great documentary called Newman about one inventor's quest to patent a perpetual motion machine. The trailer is here, and you can stream it pretty cheaply (I assume it will come to a service at some point):
That said, I'd like to spend a bit of time on the patent aspects, namely utility doctrine. Wikipedia has a pretty detailed entry, with links to many of the relevant documents. The federal circuit case, Newman v. Quigg, as well as the district court case, also lay out many of the facts. The claim was extremely broad:
38. A device which increases the availability of usable electrical energy or usable motion, or both, from a given mass or masses by a device causing a controlled release of, or reaction to, the gyroscopic type energy particles making up or coming from the atoms of the mass or masses, which in turn, by any properly designed system, causes an energy output greater than the energy input.Here are some thoughts:
First, the case continues what I believe to be a central confusion in utility. The initial rejection was not based on Section 101 ("new and useful") but on Section 112 (enablement to "make and use"). This is a problematic distinction. As the Patent Board of Appeals even noted: "We do not doubt that a worker in this art with appellant's specification before him could construct a motor ... as shown in Fig. 6 of the drawing." Well, then one could make and use it, even if it failed at its essential purpose. Now, there is an argument that the claim is so broad that Newman didn't enable every device claimed (as in the Incandescent Lamp case), but that's not what the board was describing. The section 101 defense was not added until 1986, well into the district court proceeding. The district court later makes some actual 112 comments (that the description is metaphysical), but this is not the same as failing to achieve the claimed outcome. The Federal Circuit makes clear that 112 can support this type of rejection: "neither is the patent applicant relieved of the requirement of teaching how to achieve the claimed result, even if the theory of operation is not correctly explained or even understood." But this is not really enablement - it's operable utility! The 112 theory of utility is that you can't enable someone to use and invention if it's got no use. But just about every invention has some use. I write about this confusion in my article A Surprisingly Useful Requirement.
Second, this leads to another key point of the case. The failed claim was primarily due to the insistence on claiming perpetual motion. Had Newman claimed a novel motor, then the claim might have survived (though there was a 102/103 rejection somewhere in the history). One of the central themes of the documentary was that Newman needed this patent to commercialize his invention, so others could not steal the idea. He could not share it until it was protected. But he could have achieved this goal with a much narrower patent that did not claim perpetual motion. That he did not attempt a narrower patent is quite revealing, and foreshadows some of the interesting revelations from the end of the documentary.
Third, the special master in the case, William Schuyler, had been Commissioner of Patents. He recommended that the Court grant the patent, finding sufficient evidence to support the claims. It is surprising that he would have issued a report finding operable utility here, putting the Patent Office in the unenviable position of attacking its former chief.
Fourth, the case is an illustration in waiver. Newman claimed that the device only worked properly when ungrounded. More important, the output was measured in complicated ways (according to his own witnesses). Yet, Newman failed to indicate how measurement should be done when it counted: "Dr. Hebner [of National Bureau of Standards] then asked Newman directly where he intended that the power output be measured. His attorney advised Newman not to answer, and Newman and his coterie departed without further comment." The court finds a similar waiver with respect to whether the device should have been grounded, an apparently key requirement. These two waivers allowed the courts to credit the testing over Newman's later objections that the testing was improperly handled.
I'm sure I had briefly read Newman v. Quigg at some point in the past, and the case is cited as the seminal "no perpetual motion machine" case. Even so, I'm glad I watched the documentary to get a better picture of the times and hooplah that went with this, as well as what became of the man who claimed to defy the laws of thermodynamics.
Friday, August 28, 2015
Dow v. NOVA: Maybe Nautilus Does Matter
In June 2014, the Supreme Court held in Nautilus v. Biosig that the Federal Circuit's "insolubly ambiguous" test for indefiniteness was "more amorphous than the statutory definiteness requirement allows," and that the proper test is whether the claims "fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." But is this actually a stricter test?
Jason Rantanen (Iowa Law) posted a nice essay this spring, Teva, Nautilus, and Change Without Change (forthcoming Stan. Tech. L. Rev.), arguing that in practice, the answer has been no: "The Federal Circuit continues to routinely reject indefiniteness challenges . . . . Indeed, with one exception, the Federal Circuit has not held a single claim indefiniteness under the Nautilus standard, and even that one exception would almost certainly have been indefinite [pre-Nautilus]." (Since then, the court also held the Teva v. Sandoz claims indefinite, but it had done the same pre-Nautilus.) Rantanen also noted that the Federal Circuit has failed to grapple with the meaning of Nautilus and has continued to rely on its pre-Nautilus cases when evaluating definiteness. In one case the court even reversed an decision that claims were indefinite for reconsideration after Nautilus—implying that the Nautilus standard might be less stringent! (I've noticed the Federal Circuit similarly undermine the Supreme Court's change to the law of obviousness in KSR.)
But the Federal Circuit's decision today in Dow Chemical Co. v. NOVA Chemicals Corp. carefully examines the change Nautilus has wrought. Dow's asserted claims cover an improved plastic with "a slope of strain hardening coefficient greater than or equal to 1.3," and NOVA argued that the patents fail to teach a person of ordinary skill how to measure the "slope of strain hardening." In a prior appeal (after a jury trial), the Federal Circuit had held the claims not indefinite under pre-Nautilus precedent. The district court then held a bench trial on supplemental damages, leading to the present appeal. In today's opinion by Judge Dyk, the Federal Circuit holds that Nautilus's change in law "provides an exception to the doctrine of law of the case or issue preclusion," and holds that the claims are indefinite under the new standard.
The Federal Circuit dismisses the hand-wringing over whether Nautilus really meant anything, stating that "there can be no serious question that Nautilus changed the law of indefiniteness." The court notes that "Nautilus emphasizes 'the definiteness requirement's public-notice function,'" and that "the patent and prosecution history must disclose a single known approach or establish that, where multiple known approaches exist, a person having ordinary skill in the art would know which approach to select. . . . Thus, contrary to our earlier approach, under Nautilus, '[t]he claims . . . must provide objective boundaries for those of skill in the art.'"
Examining the claims at issue, the court notes that the patents state that "FIG. 1 shows the various stages of the stress/strain curve used to calculate the slope of strain hardening," but the patents contain no figure showing the stress/strain curve. There were four ways to measure the slope, which could result in different results, but the patents provided no "guidance as to which method should be used or even whether the possible universe of methods is limited to these four methods." The claims thus fail the new test: "Before Nautilus, a claim was not indefinite if someone skilled in the art could arrive at a method and practice that method," but "this is no longer sufficient."
Jason Rantanen (Iowa Law) posted a nice essay this spring, Teva, Nautilus, and Change Without Change (forthcoming Stan. Tech. L. Rev.), arguing that in practice, the answer has been no: "The Federal Circuit continues to routinely reject indefiniteness challenges . . . . Indeed, with one exception, the Federal Circuit has not held a single claim indefiniteness under the Nautilus standard, and even that one exception would almost certainly have been indefinite [pre-Nautilus]." (Since then, the court also held the Teva v. Sandoz claims indefinite, but it had done the same pre-Nautilus.) Rantanen also noted that the Federal Circuit has failed to grapple with the meaning of Nautilus and has continued to rely on its pre-Nautilus cases when evaluating definiteness. In one case the court even reversed an decision that claims were indefinite for reconsideration after Nautilus—implying that the Nautilus standard might be less stringent! (I've noticed the Federal Circuit similarly undermine the Supreme Court's change to the law of obviousness in KSR.)
But the Federal Circuit's decision today in Dow Chemical Co. v. NOVA Chemicals Corp. carefully examines the change Nautilus has wrought. Dow's asserted claims cover an improved plastic with "a slope of strain hardening coefficient greater than or equal to 1.3," and NOVA argued that the patents fail to teach a person of ordinary skill how to measure the "slope of strain hardening." In a prior appeal (after a jury trial), the Federal Circuit had held the claims not indefinite under pre-Nautilus precedent. The district court then held a bench trial on supplemental damages, leading to the present appeal. In today's opinion by Judge Dyk, the Federal Circuit holds that Nautilus's change in law "provides an exception to the doctrine of law of the case or issue preclusion," and holds that the claims are indefinite under the new standard.
The Federal Circuit dismisses the hand-wringing over whether Nautilus really meant anything, stating that "there can be no serious question that Nautilus changed the law of indefiniteness." The court notes that "Nautilus emphasizes 'the definiteness requirement's public-notice function,'" and that "the patent and prosecution history must disclose a single known approach or establish that, where multiple known approaches exist, a person having ordinary skill in the art would know which approach to select. . . . Thus, contrary to our earlier approach, under Nautilus, '[t]he claims . . . must provide objective boundaries for those of skill in the art.'"
Examining the claims at issue, the court notes that the patents state that "FIG. 1 shows the various stages of the stress/strain curve used to calculate the slope of strain hardening," but the patents contain no figure showing the stress/strain curve. There were four ways to measure the slope, which could result in different results, but the patents provided no "guidance as to which method should be used or even whether the possible universe of methods is limited to these four methods." The claims thus fail the new test: "Before Nautilus, a claim was not indefinite if someone skilled in the art could arrive at a method and practice that method," but "this is no longer sufficient."
Tuesday, June 16, 2015
The Past and Future of Functional Claiming...
As Lisa predicted a couple weeks ago, the Federal Circuit issued a new en banc (11-1) opinion today in Williamson v. Citrix without argument or further briefing. Patently-O has full coverage, so I'll get right to the core issue: the Federal Circuit reversed its prior precedent on functional claiming, but not all the way.
By way of background, if you claim a "means plus function" element (e.g., means for adding two numbers) then you need to disclose the structure for your means in the specification, which includes both the hardware and the algorithm (a general purpose computer programmed to take two numbers as an input, add them together, and report the sum as an output). If you don't put that structure in the specification, your claim is invalid as indefinite. Seem absurd for easy or common functions? More on that later.
The question is what you do when the word means is replaced with something else, like "module" or "unit" or "logic." The presumption has long been that this would not be means plus function, and it would be treated like structure unless the opposing party could convince the court that it really was a means plus function in disguise. Starting in about 2004, the Federal Circuit doubled down on this rule, making this a strong presumption against means plus function that was very difficult to overcome. As a result, the courts affirmed a bunch of patents that claimed functions but didn't actually teach how to do them. More on that later.
In this case, the court backtracked to pre-2004 rules. Rather than looking at the words, we look to see whether the limitation is really just claiming a means for doing a function, or whether the limitation has sufficient structure built right in. For example, you might have a limitation "adding module programmed to take two numbers as an input, add them together, and report the sum as an output." This is clearly functional, but the structure is right there in the limitation. Judge Reyna (along with some of my colleagues in the academy) would go further and argue that any functional claiming has to be in the specification, but I've never been convinced by that argument, in part because you can always put algorithms and structure right into claims. Judge Newman would have stuck with the formalistic requirement of requiring "means" to mean "means plus function," but it is clear that this view is currently disfavored.
My thoughts on what this all means after the jump.
By way of background, if you claim a "means plus function" element (e.g., means for adding two numbers) then you need to disclose the structure for your means in the specification, which includes both the hardware and the algorithm (a general purpose computer programmed to take two numbers as an input, add them together, and report the sum as an output). If you don't put that structure in the specification, your claim is invalid as indefinite. Seem absurd for easy or common functions? More on that later.
The question is what you do when the word means is replaced with something else, like "module" or "unit" or "logic." The presumption has long been that this would not be means plus function, and it would be treated like structure unless the opposing party could convince the court that it really was a means plus function in disguise. Starting in about 2004, the Federal Circuit doubled down on this rule, making this a strong presumption against means plus function that was very difficult to overcome. As a result, the courts affirmed a bunch of patents that claimed functions but didn't actually teach how to do them. More on that later.
In this case, the court backtracked to pre-2004 rules. Rather than looking at the words, we look to see whether the limitation is really just claiming a means for doing a function, or whether the limitation has sufficient structure built right in. For example, you might have a limitation "adding module programmed to take two numbers as an input, add them together, and report the sum as an output." This is clearly functional, but the structure is right there in the limitation. Judge Reyna (along with some of my colleagues in the academy) would go further and argue that any functional claiming has to be in the specification, but I've never been convinced by that argument, in part because you can always put algorithms and structure right into claims. Judge Newman would have stuck with the formalistic requirement of requiring "means" to mean "means plus function," but it is clear that this view is currently disfavored.
My thoughts on what this all means after the jump.
Friday, June 5, 2015
Case watch: Is the Federal Circuit revising functional claiming rules in Williamson v. Citrix?
Last November, the Federal Circuit panel opinion in Williamson v. Citrix held that the district court erroneously construed the limitation "distributed learning control module" as a means-plus-function expression. The majority emphasized that failure to use the word "means" in a claim limitation creates a strong rebuttable presumption that it is not a means-plus-function limitation. In dissent, Judge Reyna argued that the limitation simply substituted the "nonce" word "module" for "means." On December 5 (exactly six months ago), Citrix et al. filed for rehearing en banc, supported by amicus briefs by the EFF and a group of IP professors (including me). The IP professor brief, written by Mark Lemley, argues that patentees have exploited the Federal Circuit's inconsistency in this area to engage in functional claiming without satisfying means-plus-function claim rules.
Based on the timelines in the Federal Circuit's internal operating procedures, it seems improbable that the court could still be deciding whether to act on the rehearing petition. So perhaps the court granted rehearing en banc without argument? Issuing an en banc decision can take a while—Akamai v. Limelight took over 9 months from argument to opinion—but that was unusual, so maybe we will hear something soon. (Here is the Williamson v. Citrix docket on Bloomberg Law, subscription required.)
Based on the timelines in the Federal Circuit's internal operating procedures, it seems improbable that the court could still be deciding whether to act on the rehearing petition. So perhaps the court granted rehearing en banc without argument? Issuing an en banc decision can take a while—Akamai v. Limelight took over 9 months from argument to opinion—but that was unusual, so maybe we will hear something soon. (Here is the Williamson v. Citrix docket on Bloomberg Law, subscription required.)
Saturday, March 21, 2015
How Courts Adjudicate Patent Definiteness and Disclosure
John Allison has done some great empirical work on patent litigation, including a recent project with Mark Lemley and David Schwartz on all substantive decisions rendered by any court in every patent case filed in 2008 and 2009 (with articles in Texas and Chicago), and a project on repeat patent litigants with Mark Lemley and Joshua Walker that I blogged about back in 2011. This fall he invited me to join his latest project, looking at all decisions on Westlaw (including denials of summary judgment and many unpublished opinions) from 1982-2012 involving any of three § 112 issues: enablement, written description, or indefiniteness. We have now posted a draft of our paper, How Courts Adjudicate Patent Definiteness and Disclosure, which is forthcoming in the Duke Law Journal. Here is the abstract:
Thursday, November 15, 2012
Patent Publication & Default Rules
Economists from the USPTO (Chief Economist Stuart Graham and former visiting scholar Deepak Hegde) recently posted a new paper to SSRN: Do Inventors Value Secrecy in Patenting? Evidence from the American Inventor's Protection Act of 1999. Their answer to their title's question is essentially that inventors don't value secrecy as much as you might think.
Tuesday, June 5, 2012
Michael Burstein: Exchanging Information without Intellectual Property
Are intellectual property rights necessary for robust innovation?
In his article, Exchanging Information Without Intellectual Property (forthcoming Texas Law Review), Professor Michael Burstein analyzes the role of intellectual property in information exchange. The article explores the range of potential strategies parties may use to enable commercially significant exchange and the ways in which those strategies interact within complex business, cultural, and legal environments.
Tuesday, April 19, 2011
Are Biotech Patents Enabled?
Stanford 3L Dmitry Karshtedt, who has guest posted on this blog, has a new post on Stanford's Law and Biosciences Blog about biologics, which are complicated drugs like erythropoietin that are typically made using living cells, as distinct from easily replicated small-molecule drugs like aspirin.
Karshtedt discusses his new paper, Limits on Hard-To-Reproduce Inventions: Process Elements and Biotechnology's Compliance with the Enablement Requirement, in which he argues that claim limitations can help enable biotech patents. I have also discussed the enablement problem for biologics starting at ¶ 106 of Access to Bio-Knowledge: From Gene Patents to Biomedical Materials, which cites Gregory Mandel's argument that many biotech patents fail enablement. What do readers think: is enablement a problem for biotech? Should biotech patents disclose more? I'd like to think about this issue more as I revise my paper on patent disclosure.
Karshtedt discusses his new paper, Limits on Hard-To-Reproduce Inventions: Process Elements and Biotechnology's Compliance with the Enablement Requirement, in which he argues that claim limitations can help enable biotech patents. I have also discussed the enablement problem for biologics starting at ¶ 106 of Access to Bio-Knowledge: From Gene Patents to Biomedical Materials, which cites Gregory Mandel's argument that many biotech patents fail enablement. What do readers think: is enablement a problem for biotech? Should biotech patents disclose more? I'd like to think about this issue more as I revise my paper on patent disclosure.
Wednesday, March 23, 2011
Do Patents Disclose Useful Information?
I recently uploaded a revised draft of my current working paper, Do Patents Disclose Useful Information?, on SSRN. I am grateful for all the feedback I have received on this paper so far, and I welcome more—please feel free to email me. Here is the abstract:
Courts often state that patents are justified by disclosure theory, the idea that patents are awarded as quid pro quo for the public disclosure of inventions. Economists have long argued that disclosure theory should be accorded no weight in the design of the patent system because patented inventions would have been disclosed anyway. Even the few legal scholars who dispute these economic arguments agree that, in practice, patents are currently not useful as technical sources for other innovators. This Article challenges all these arguments, arguing not that disclosure theory is a valid justification for the patent system, but rather that the benefits of full technical disclosures are stronger than is generally believed, and that these benefits probably outweigh any incremental loss in innovation incentives. Using results from a new survey of nanotechnology researchers and case studies of individual patents, this Article shows that patents do contain useful technical information that is not available elsewhere. This technical content could be improved, however, in at least three ways: stronger enforcement of disclosure requirements (including through an obligation to respond to good faith reproducibility questions from skilled researchers), elimination of legal barriers to using patents as technical sources, and improved access to patents through peer production. These changes will help defuse the tension between patents and the open culture of science.
Monday, March 21, 2011
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).
Tuesday, February 15, 2011
Oskar Liivak: Cult of the Claim
Does the often-used term "invention" have "zero substantive impact" in patent law? This is Professor Oskar Liivak's claim in his draft paper, Rescuing Invention from the Cult of the Claim. Liivak is an Assistant Professor at Cornell Law School, and I have been following in his academic footsteps – from a Ph.D. in Physics at Cornell to a J.D. at Yale – so it is interesting to see where this intellectual background has taken him.
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:
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!
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!
Tuesday, February 8, 2011
Sean Seymore on Novelty and Disclosure
Coming to patent law from physics, I have been interested in patent doctrines that seem crazy when I try to explain them to my physics friends. So I was intrigued to discover the work of a professor with a similar research agenda: Sean Seymore is a professor of law and chemistry at Vanderbilt, and he describes his project (in both of his papers I read) as "bridg[ing] the disconnect between patent law and the norms of science."
His latest published paper, Rethinking Novelty in Patent Law (Duke L.J. 2011), argues that the novelty test is too strict for complex technologies. He describes the "quintessential novelty problem" as trying to claim compound X when an earlier third-party patent recites the structure X as one of many compounds without additional details, leaving a question of enablement: was X already in the public's possession? He notes that the current novelty regime incentivizes the earlier patentee to conceal experimental failures and that "it appears that a third-party patent’s mere recitation of X by name or structure is, as a practical matter, sufficient to anticipate a subsequent inventor’s claim to the compound."
Seymore proposes a new novelty paradigm in which the examiner has the initial burden of proving that the disclosure of X in the earlier third-party patent is enabling, for which only documents dated earlier than the third-party patent may be used. He argues that this would promote innovation by allowing X to be patented (and thus enabled and exploited), but the article does not consider the innovation costs of this proposal. Making it easier to patent X will cause dynamic inefficiencies by increasing costs for other innovators who want to use X (in addition to creating static inefficiencies due to the increased price of X). These inefficiencies may well be outweighed by the benefits Seymore outlines, but due to the difficulty of measuring innovation, the problem should at least be acknowledged.
I also read The Teaching Function of Patents (Notre Dame L. Rev. 2010) as background for my own draft paper on patent disclosure (for which I surveyed nanotechnology researchers about how they use the technical content of patents). In this article, Seymore argues in favor of stronger patent disclosures to improve "the ability of the patent to disseminate technical knowledge." Jeanne Fromer (Fordham Law) had put forth a similar defense of robust disclosure requirements in Patent Disclosure (Iowa L. Rev. 2009), and Seymore could have more strongly recognized her contribution (rather than only citing her as part of "a limited amount of scholarship which addresses patent disclosure"). But Seymore's contribution is still valuable, as he joins Fromer in arguing against a long line of patent law theorists and economists who have critiqued the disclosure theory of patents (the idea that we award patents as quid pro quo for the patent disclosure), and he offers some different prescriptive suggestions.
Seymore's main suggestion for improving disclosure is that patent examiners should be able to require "working examples." When I read the abstract, I thought he was talking about physical models, but he actually means that "at least for complex inventions, an actual reduction to practice must become the standard of disclosure" (i.e., patents should not be awarded for "prophetic examples" through the legal fiction of "constructive reduction to practice"), and that inventors should "prove, through adequate detail in the written description, that the claimed invention has been constructed and works for its intended purpose." I think this suggestion is probably sound; as I describe in my own patent disclosure paper, many scientists are surprised to learn that patents can currently be awarded for a Gedankenexperiment, rather than only for inventions that have been shown to work. But it also seems difficult to compare the benefits of increased disclosure with the costs to innovation, which is a problem Seymore again does not address. Still, I enjoyed both articles, and I appreciate reading about patents from someone who actually knows about the technologies that they are trying to promote.
Update 2/22/11: I posted my patent disclosure paper on SSRN last week, so I added links to it. If you are planning on citing it, let me know so I can keep you apprised of updates.
His latest published paper, Rethinking Novelty in Patent Law (Duke L.J. 2011), argues that the novelty test is too strict for complex technologies. He describes the "quintessential novelty problem" as trying to claim compound X when an earlier third-party patent recites the structure X as one of many compounds without additional details, leaving a question of enablement: was X already in the public's possession? He notes that the current novelty regime incentivizes the earlier patentee to conceal experimental failures and that "it appears that a third-party patent’s mere recitation of X by name or structure is, as a practical matter, sufficient to anticipate a subsequent inventor’s claim to the compound."
Seymore proposes a new novelty paradigm in which the examiner has the initial burden of proving that the disclosure of X in the earlier third-party patent is enabling, for which only documents dated earlier than the third-party patent may be used. He argues that this would promote innovation by allowing X to be patented (and thus enabled and exploited), but the article does not consider the innovation costs of this proposal. Making it easier to patent X will cause dynamic inefficiencies by increasing costs for other innovators who want to use X (in addition to creating static inefficiencies due to the increased price of X). These inefficiencies may well be outweighed by the benefits Seymore outlines, but due to the difficulty of measuring innovation, the problem should at least be acknowledged.
I also read The Teaching Function of Patents (Notre Dame L. Rev. 2010) as background for my own draft paper on patent disclosure (for which I surveyed nanotechnology researchers about how they use the technical content of patents). In this article, Seymore argues in favor of stronger patent disclosures to improve "the ability of the patent to disseminate technical knowledge." Jeanne Fromer (Fordham Law) had put forth a similar defense of robust disclosure requirements in Patent Disclosure (Iowa L. Rev. 2009), and Seymore could have more strongly recognized her contribution (rather than only citing her as part of "a limited amount of scholarship which addresses patent disclosure"). But Seymore's contribution is still valuable, as he joins Fromer in arguing against a long line of patent law theorists and economists who have critiqued the disclosure theory of patents (the idea that we award patents as quid pro quo for the patent disclosure), and he offers some different prescriptive suggestions.
Seymore's main suggestion for improving disclosure is that patent examiners should be able to require "working examples." When I read the abstract, I thought he was talking about physical models, but he actually means that "at least for complex inventions, an actual reduction to practice must become the standard of disclosure" (i.e., patents should not be awarded for "prophetic examples" through the legal fiction of "constructive reduction to practice"), and that inventors should "prove, through adequate detail in the written description, that the claimed invention has been constructed and works for its intended purpose." I think this suggestion is probably sound; as I describe in my own patent disclosure paper, many scientists are surprised to learn that patents can currently be awarded for a Gedankenexperiment, rather than only for inventions that have been shown to work. But it also seems difficult to compare the benefits of increased disclosure with the costs to innovation, which is a problem Seymore again does not address. Still, I enjoyed both articles, and I appreciate reading about patents from someone who actually knows about the technologies that they are trying to promote.
Update 2/22/11: I posted my patent disclosure paper on SSRN last week, so I added links to it. If you are planning on citing it, let me know so I can keep you apprised of updates.
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