scholarly journals The Changing Meaning of Patent Claim Terms

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Patent Application ◽  
Fundamental Principle ◽  
Patent Law ◽  
Legal Rule ◽  
Patent Claim ◽  
Prior Art ◽  
Patented Invention ◽  
Sufficient Detail ◽  
One Act ◽  
Written Description

In order to construe the claims of a patent, the court must fix the meaningof the claim terms as of a particular point in time. Both the knowledge ofthe PHOSITA in a particular field and the meaning of particular terms tothat PHOSITA will frequently change over time. But at which point in timeshall we fix the meaning of the claims?It is a fundamental principle of patent law that the time at which wedetermine the meaning of claim terms varies depending on what legal rule isat issue. Where the question is one of novelty or nonobviousness - whetherthe invention is truly new - the courts compare the patented invention tothe prior art as both were understood at the time of the invention. Wherethe question is one of enablement or written description - whether theinventor understood and described the invention in sufficient detail -courts evaluate the adequacy of the disclosure based on the meaning of theclaims at the time the patent application was filed. Where the questioninvolves the meaning of a special patent claim element called ameans-plus-function claim, courts evaluate the scope of that claim elementat the time the patent issues. And where the question involves allegedinfringement of the patent, courts evaluate infringement in at least somecircumstances based on the meaning of the claim at the time ofinfringement.An equally fundamental principle of patent law is that patent claims mustbe construed as an integrated whole. In particular, patentees (or accusedinfringers, for that matter) are not permitted to argue that a patent claimmeans one thing when it comes to validity and something else entirely whenit comes to infringement. Instead, courts give claims a single meaning inany given case, engaging in only one act of claim construction for anygiven patent.These two principles contradict each other. In this paper, I seek toresolve this conflict. In Part I of this paper, I document thedistinguished pedigree of both principles. In Part II, I argue that patentclaim terms should have a fixed meaning throughout time, and that thatmeaning should be fixed at the time the patent application is first filed.Part II also discusses some complications that arise as a result of theprosecution process, and how to deal with the problem of later-developedtechnology.

scholarly journals Is Patent Law Technology-Specific?

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
New Technologies ◽  
Computer Software ◽  
Patent Law ◽  
The Other ◽  
Legal Rules ◽  
Legal Standards ◽  
Structural Problems ◽  
Prior Art ◽  
Federal Circuit ◽  
Written Description

Patent law has a general set of legal rules to govern the validity andinfringement of patents in a wide variety of technologies. With a very fewexceptions, the statute does not distinguish between different technologiesin setting and applying legal standards. In theory, then, we have a unifiedpatent system that provides technology-neutral protection to all kinds oftechnologies.Of late, however, we have noticed an increasing divergence between therules themselves and the application of the rules to different industries.The best examples are biotechnology and computer software. In biotechnologycases, the Federal Circuit has bent over backwards to find biotechnologicalinventions nonobvious, even if the prior art demonstrates a clear plan forproducing the invention. On the other hand, the court has imposed stringentenablement and written description requirements on biotechnology patentsthat do not show up in other disciplines. In computer software cases, thesituation is reversed. The Federal Circuit has essentially excused softwareinventions from compliance with the enablement and best mode requirements,but has done so in a way that raises serious questions about howstringently it will read the nonobviousness requirements. As a practicalmatter, it appears that while patent law is technology-neutral in theory,it is technology-specific in application.The paper explains how the application of the same general legal standardscan lead to such different results in diverse industries. Much of thevariance in patent standards is attributable to the use of a legalconstruct, the "person having ordinary skill in the art" (PHOSITA), todetermine obviousness and enablement. The more skill those in the art have,the less information an applicant has to disclose in order to meet theenablement requirement - but the harder it is to meet the nonobviousnessrequirement. The level of skill in the art affects not just patentvalidity, but also patent scope.We do not challenge the idea that the standards in each industry shouldvary with the level of skill in that industry. We think the use of thePHOSITA provides needed flexibility for patent law, permitting it to adaptto new technologies without losing its essential character. We fear,however, that the Federal Circuit has not applied that standard properly ineither the biotechnology or computer software fields. The court has aperception of both fields that was set in earlier cases but which does notreflect the modern realities of either industry. The changes in an industryover time present significant structural problems for patent law, bothbecause law is necessarily backward-looking and precedent-bound and becauseapplying different standards to similar inventions raises concerns abouthorizontal equity. Nonetheless, we believe the courts must take more carethan they currently do to ensure that their assessments of patent validityare rooted in understandings of the technology that were accurate at thetime the invention was made.

scholarly journals The Unresolved Interpretive Ambiguity of Patent Claims

2018 ◽  
Author(s):  
Oskar Liivak
Keyword(s):  
Patent Application ◽  
Patent Law ◽  
Patent System ◽  
Related Issue ◽  
Policy Preference ◽  
Policy Debate ◽  
Patent Claim ◽  
Basic Understanding

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."

scholarly journals Biotechnology's Uncertainty Principle

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Uncertainty Principle ◽  
New Technologies ◽  
Structural Features ◽  
Patent Law ◽  
Patent Policy ◽  
Prior Art ◽  
Practical Matter ◽  
Federal Circuit ◽  
Special Rules ◽  
Written Description

In theory, we have a unified patent system that provides technology-neutralprotection to all kinds of technologies. However, we have recently noticedan increasing divergence between the rules actually applied to differentindustries. Biotechnology provides one of the best examples. Inbiotechnology cases, the Federal Circuit has repeatedly held thatuncertainty in predicting the structural features of biotechnologicalinventions renders them nonobvious, even if the prior art demonstrates aclear plan for producing the invention. At the same time, the court claimsthat the uncertain nature of the technology requires imposition ofstringent patent enablement and written description requirements that arenot applied to patents in other disciplines. Thus, as a practical matter itappears that although patent law is technology-neutral in theory, it istechnology-specific in application. Much of the variance in patentstandards is attributable to the use of a legal construct, the "personhaving ordinary skill in the art" (PHOSITA), to determine obviousness andenablement. We do not challenge the idea that the standards in eachindustry should vary with the level of skill in that industry. We think theuse of the PHOSITA provides needed flexibility for patent law, permittingit to adapt to new technologies without losing its essential character. Wefear, however, that the Federal Circuit has not applied that standardproperly in biotechnology. The court has a static perception of the fieldthat was set in its initial analyses of biotechnology inventions, but whichdoes not reflect the realities of the industry. In the final part of thepaper, we offer a very preliminary policy assessment of theseindustry-specific patent cases. We suggest that the special rules theFederal Circuit has constructed for biotech cases are rather poorly matchedto the specific needs of the industry. Indeed, in some ways the FederalCircuit cases have it exactly backwards. We offer a few suggestions as towhat a consciously designed biotechnology patent policy may look like.

Patents, Governance and Control: Ethics and the Patentability of Novel Beings and Advanced Biotechnologies in Europe

2021 ◽  
Vol 30 (3) ◽  
pp. 529-542
Author(s):  
Aisling McMahon
Keyword(s):  
Ethical Issues ◽  
Patent Law ◽  
European Patent ◽  
Human Consciousness ◽  
Patent Holder ◽  
Patented Invention ◽  
Patent Grant ◽  
And Control

AbstractThis article focuses primarily on to what extent novel beings, and particularly, beings which display something akin to human consciousness or agency would be (or should be) patentable under current European patent law. Patents grant the patent holder a right to exclude others from using the patented invention for the period of patent grant (usually 20 years). This allows the patent holder to control how that invention can or cannot be used by others downstream, granting patent holders a governance like function over the patented technology for the duration of the patent. Accordingly, the potential for patentability of novel beings gives rise to a myriad of ethical issues including: to what extent is it appropriate for patent holders to retain and exercise patents over “novel beings”; how issues of “agency” displayed by any “novel beings” would fit within the current patent framework, if at all; and to what extent existing exclusions from patentability might exclude patents on “novel beings” or whether changes within patent law may be needed if patents in relation to “novel beings” are deemed ethically problematic. This article focuses on such issues, and in doing so, also sheds light on the role of ethical issues within the patenting of advanced biotechnologies more generally.

scholarly journals The Fractioning of Patent Law

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Patent Law ◽  
Patent Claim ◽  
Holistic Manner ◽  
Patent Right

Patentees overwhelmingly lose their cases, despite a seeming host ofprocedural advantages. The same is not true of other IP plaintiffs. Why? Inthis article, I suggest that the explanation lies in the "fractioning" ofpatent law into smaller and smaller issues. Claim construction afterMarkman is the clearest example, but there are others. We no longer decidein a holistic manner what a patent claim covers. Instead, we decide whateach word of a claim covers. Because there are more and more such issues,and the patentee must win each of them, patentees face a form of multiplejeopardy. It is ironic that patent claims, developed to broaden andstrengthen the patent right, have instead become obstacles to thepatentee's success.

scholarly journals Patent Scope and Innovation in the Software Industry

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Network Effects ◽  
Software Industry ◽  
Patent Law ◽  
Fair Use ◽  
Sequential Innovation ◽  
Reverse Engineer ◽  
Prior Art ◽  
Software Patents ◽  
Software Patent ◽  
Experimental Use

Software patents have received a great deal of attention in the academicliterature. Unfortunately, most of that attention has been devoted to theproblem of whether software is or should be patentable subject matter. Withroughly 40,000 software patents already issued, and the Federal Circuitendorsing patentability without qualification, those questions are for thehistory books. The more pressing questions now concern the scope to beaccorded software patents. In this paper, we examine the implications ofsome traditional patent law doctrines for innovation in the softwareindustry. We argue that patent law needs some refinement if it is topromote rather than impede the growth of this new market, which ischaracterized by rapid sequential innovation, reuse and re-combination ofcomponents, and strong network effects that privilege interoperablecomponents and products. In particular, we argue for two sorts of new rulesin software patent cases.First, we advocate a limited right to reverse engineer patented computerprograms in order to gain access to and study those programs and toduplicate their unprotected elements. Such a right is firmly established incopyright law, and seems unexceptional as a policy matter even in patentlaw. But because patent law contains no fair use or reverse engineeringexemption, patentees could use the grant of rights on a single component ofa complex program to prevent any "making" or "using" of the program as awhole, including those temporary uses needed in reverse engineering. Whilepatent law does contain doctrines of "experimental use" and "exhaustion,"it is not at all clear that those doctrines will protect legitimate reverseengineering efforts. We suggest that if these doctrines cannot be readbroadly enough to establish such a right, Congress should create a limitedright to reverse engineer software containing patented components forresearch purposes.Second, we argue that in light of the special nature of innovation withinthe software industry, courts should apply the doctrine of equivalentsnarrowly in infringement cases. The doctrine of equivalents allows afinding of infringement even when the accused product does not literallysatisfy each element of the patent, if there is substantial equivalence asto each element. The test of equivalence is the known interchangeability ofclaimed and accused elements at the time of (alleged) infringement. Anumber of factors unique to software and the software industry - a cultureof reuse and incremental improvement, a lack of reliance on systems offormal documentation used in other technical fields, the short effectivelife of software innovations, and the inherent plasticity of code -severely complicate post hoc assessments of the "known interchangeability"of software elements. A standard for equivalence of code elements thatignores these factors risks stifling legitimate, successful efforts todesign around existing software patents. To avoid this danger, courtsshould construe software claims narrowly, and should refuse a finding ofequivalence if the accused element is "interchangeable" with prior art thatshould have narrowed the original patent, or if the accused improvement istoo many generations removed from the original invention.

Pharmaceutical Law and Patent Law

2021 ◽  
Vol 3 (2) ◽  
Author(s):  
Carlo A. Piria ◽  
Carlo A. Piria
Keyword(s):  
Clinical Trials ◽  
Medicinal Product ◽  
Legal System ◽  
Active Substance ◽  
Patent Law ◽  
Efficacy And Safety ◽  
Patent Claim ◽  
Laws And Regulations

The patent law and pharma laws and regulations need to be coordinated. The interpretative proposal of the author is that a patent claim aiming at protecting the invention as a medicinal product must necessarily be expressed using the appropriate terms provided for by the laws and regulations concerning the industrial medicinal product, such as “medicinal product” and “active substance”; otherwise the patent may not be considered as covering a “medicinal product” or an “active substance”. Moreover, as a consequence, the presentation of a product in a patent claim as a medicinal product or an active substance implies that the enforceability of such claim is conditioned upon the demonstration of the efficacy and safety of the product through the preparation and approval by the competent authorities of a dossier of pharmacological and clinical trials. The legal system taken into consideration by the author is the European one, but the interpretative proposal is, mutatis mutandis, applicable to other systems of law.

16. Ownership of patents

2019 ◽  
pp. 389-399
Author(s):  
Stavroula Karapapa ◽  
Luke McDonagh
Keyword(s):  
Patent Law ◽  
Common Goal ◽  
Patented Invention ◽  
The Right

This chapter assesses the ownership of patents. Teams of researchers often work together towards a common goal. This means that there are sometimes disputes about who actually invented the product or process covered by a patent. Resolving these disputes is of significance because under patent law the owner possesses the right to grant licences to make use of the patented invention in exchange for a fee or royalties, and the right to sue for infringement. Before deciding who is entitled to the ownership of an invention it is first necessary to examine what is meant in law by the word ‘inventor’. Having examined the criteria used by the courts to identify an inventor, one must now consider the special statutory rules concerning employee–inventors. Once it has been decided who owns an invention, there is a scheme of compensation for employee–inventors.

Patents for plants and genes under the European Patent Convention

1992 ◽  
Vol 99 (3-4) ◽  
pp. 141-152
Author(s):  
Noel Byrne
Keyword(s):  
Western Europe ◽  
Patent Application ◽  
Plant Biotechnology ◽  
European Patent ◽  
European Patent Convention ◽  
National Patent ◽  
The Cost ◽  
Biotechnological Invention ◽  
Written Description ◽  
Skilled Person

SynopsisThe cost of patenting an invention should be incurred only where the patent is likely to give the inventor an economic or a tactical advantage. Where it is practicable, secrecy may be preferable to patenting. If an advantage from patenting can be envisaged, then in Western Europe the inventor can apply either for a European patent under the European Patent Convention or for a national patent. The inventor in plant biotechnology faces a ban on patenting certain inventions, including plant varieties and essentially biological processes for the production of plants. But since this ban is interpreted strictly, there are opportunities for patenting what at first glance might seem not patentable. A patent application must give a written description of the invention that is complete enough for a skilled person to reproduce it. The inventor may be required to supplement the description in a patent specification for a biotechnological invention, by depositing a sample of relevant biological materials. A European patent is treated as a national patent in the country for which it was granted. Since a patent may be invalidated in enforcement proceedings, patenting may turn out to have been a costly mistake.

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