49 UC Davis Law Review 1851-1880 (2016)Claims are at the heart of every major patent related issue. Most importantly, they determine a patent's potent rights of exclusion. Yet, we cannot predict how courts will set the exact boundaries of claims. This renders smooth operation of the patent system near impossible. For some time, scholars have theorized that a basic policy disagreement is a source of this uncertainty. Some judges favor narrower patents, some favor broader and judges will naturally tend toward their policy preference. Policy disagreements result in claim uncertainty. Recently, scholars Tun- Jen Chiang and Lawrence Solum have taken this view further arguing that this policy debate is the only problem preventing clear and consistent understanding of patent claims. That position is premature; there is another unnoticed and somewhat antecedent source of confusion. Patent law has not made clear what a patent claim (for lack of a better verb) claims. Patent applicants are surely delineating a boundary with their claims but patent law has not made clear what we are drawing the boundary around. When we write claims, exactly what question are we supposed to be answering? It is not clear whether a claim in a patent application is the statement "I claim to have invented the following things" or instead the request "I would like to claim exclusionary dominion over the following things." These are different in kind. Unfortunately both understandings have doctrinal support and both are operating simultaneously yet confusingly in patent law today. The proper way to handle patent claims depends on which view is correct. The uncertainty and disagreements that are plaguing patent law can be explained not just as a policy dispute but instead as confusion over this basic understanding of patent claims. This article outlines these two conflicting views, their implications for patent law and how we should resolve the ambiguity. Correctly understood, though claims are central in determining exclusion, we should nonetheless interpret initial patent claims as the statement "I claim to have invented the following things."
Of Smart Phone Wars and Software Patents