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Monday, August 27, 2012

Why do we have patentee-written claims?

One of the oddest features of the patent system is that it allows patentees to define their own monopoly rights by writing the “claim” of the patent. To be sure, the PTO will scrutinize the claim to see if it covers a patentable invention, but the PTO is overworked and there is no possible way it can pick up every tiny drafting trick, so allowing patentees drafting control gives them the ability to claim more than they should. If the goal of the patent system was to get the most unbiased assessment of the proper reward, then we should give this drafting control to a less biased party like the PTO or a court. And the intuition that patentee-written claims will fail to describe the real invention ties in with a lot of criticism in the academy that claim construction is a meaningless exercise that focuses on lawyer-created self-serving words over the patentee’s real invention.

My summer project has been to explain why patentee-written claims are actually a pretty efficient mechanism. Two predicate points are these: (1) the correct scope of a patent (a.k.a. the real invention) is not the patentee's embodiment (e.g. the Wright brothers’ crummy wooden airplane that flew for 59 seconds at Kitty Hawk), but a broader range of coverage (e.g. all airplanes); (2) the central premise of having a patent system at all is that the government (including a court) has no clue what that “range of coverage” should be, in terms of balancing the incentive benefits of broader coverage against the monopoly costs. The alternative to relying on patentee-written claims to define patent scope is not some Nirvana where courts magically got the right answer, but utter chaos where they took blind stabs in the dark on that question. Patentee-written claims solve this information problem by getting patentees to state an initial position, which courts and the PTO can then scrutinize, and it is easier to scrutinize someone else’s position than to state your own in the first instance. The result is that patentees will still be able to over-claim somewhat (the scrutiny isn’t perfect), but it is better than the stab-in-the-dark alternative.

Posted by Tun-Jen Chiang on August 27, 2012 at 11:27 AM | Permalink

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