Saturday, March 07, 2009

Merges/Kuhn not on same page with Bessen/Meurer

Robert P. Merges and Jeffrey M. Kuhn expound on the imprecision of patent claims in 97 Calif. L. Rev. 1 (2009).

Footnote 8 states:

See generally ADAM B. JAFFE & JOSH LERNER, INNOVATION AND ITS DISCONTENTS: How OUR BROKEN PATENT SYSTEM IS ENDANGERING INNOVATION AND PROGRESS, AND WHAT TO DO ABOUT IT (Princeton Univ. Press 2004). For a more recent example of criticisms in this genre see JAMES BESSEN & MICHAEL J., MEURER, PATENT FAILURE: How JUDGES, BUREAUCRATS, AND LAWYERS PUT INNOVATORS AT RISK (Princeton Univ. Press 2008). Bessen and Meurer purport to provide strong empirical evidence for the notion that the US patent system has ceased to function effectively, especially as an institution of intellectual property, as a consequence of what inter alia the authors see as an overly broad conception of patentable subject matter and a failure to provide appropriate and unambiguous notice of the precise boundaries of patents. Id.

Footnote 149: This Common Law sentiment appears to be alive and well today in the United States. For example, it features prominently in BESSEN & MEURER, supra note 8, in which one of the authors' indictments against the patent system is that it, in their view, inappropriately allows notions of property to be applied to intangible phenomena.

At page 360: Though other estimates are more conservative, they are consistent with the lack of substantial economic value of most patents. James Bessen and Michael J. Meurer report that more than half of all patents expire prematurely because their owners are unwilling to pay renewal fees. "This suggests that the majority of patents are not worth more than a few thousand dollars." n194

The conclusion states:

To serve the constitutional goal of patent law, "promoting the Progress of Science and useful Arts," n256 patent scope should be tailored to the patentee's inventive contribution, and should not restrain others from undertaking activities that are different from the patentee's invention. Frequently, however, inherent limitations undermine the capacity of words to capture and accurately convey the scope of the invention. Patent claims communicate for generally-accepted prototypical examples whether a factual scenario falls within [p. 372] the protected contours of a patent. n257 Beyond the limited confines of agreed prototypes, the meanings of the terms in patent claims can, and to some degree must, be unclear. In addition, in order to capture the full scope of the invention, patent scope typically must be broadened beyond the original embodiment underlying the discovery. Even if this broadening is explicit, broad terminology exacerbates uncertainty. Uniformly requiring increased investment in ex ante delineation is wasteful because the vast majority of patents yield no revenue. n258 Thus, because of the inherent limitations of language and difficulties in foreseeing and describing all of the factual scenarios that might infringe a patent, clarifying ex post whether a patent's scope encompasses one particular factual scenario is likely to be more efficient than increased ex ante efforts. n259

Many courts and commentators, however, present the uncertainty in claim construction as a breakdown in claim drafting or patent law, contending that claim construction should merely elucidate boundaries that were fully established ex ante. Certainly, some of the uncertainty in the scope of patent rights might be addressed through more explicit claim drafting or a more detailed specification. n260 Nevertheless, claim construction is at times the necessary last step in defin-ing the scope of patents, not merely a mechanism for resolving disputes regarding rights of pre-determined scope. n261 Ex ante and ex post delineation therefore must be balanced [p. 373] to promote efficiency. Courts should recognize the importance of ex post delineation of claims by adjusting certain patent law doctrines that are grounded on the incorrect assumption that patents communicate with virtual certainty patent scope ex ante. n262 Moreover, because the need for ex post delineation cannot be eliminated, it would be more efficient to adopt a new, relatively inexpensive administrative procedure to clarify claim scope without incurring the costs of full-blown patent litigation.

**Mark Lemley is also mentioned. In footnote 64: See Mullally, supra note 9, at 366; Mark A. Lemley & Carl Shapiro, Patent Holdup and Royalty Stacking, 85 Tex. L. Rev. 1991, 2008-10 (2007). A patent examiner could also misconstrue the scope of the claims in a patent application and allow an invalid patent to issue that may be used to restrict commercially beneficial activities without any concomitant boon to innovation.

IPBiz notes the patent examiner/USPTO give claims their broadest possible scope during examination.


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