Abstract: INTRODUCTIONWhen, exactly, does invention occur? That is the question at the heart of Mark Lemley's perceptive article, Ready for Patenting.1 Patent law, Lemley shows, usually treats invention as occurring before the inventor has built a prototype or tested the new idea, systematically favoring those who quickly file a patent application over those who do the messy work of actual implementation.2 Lemley argues that the legal incentives for early filing cause significant harm, including, most relevant to this Symposium on notice failure, that patents issued from early-filed applications tend to be overly broad because the applicant does not yet know how the claimed invention works.3Lemley offers several recommendations to help solve this problem of overclaiming. To begin with, he would reduce incentives for early filing by ensuring that experimental uses or noncommercial sales of an invention (such as sales to beta testers) do not defeat the inventor's right to a patent so long as the inventor is diligently trying to perfect the invention.4 He would also constrain patent scope directly by, for example, restricting patentees' ability to engage in functional claiming, a practice that essentially allows a patentee to claim to own any technology that solves a particular problem, rather than limiting the patentee to the particular solution he or she devised.5Lemley makes a persuasive argument that patent law should, in general, offer more protection to who build their inventions than it offers to the mere paper patentees who never practice their inventions.6 But, as I explain in the first part of this essay, protecting builders is not without cost. One of the primary legal incentives for early filing is the rule that, when several persons seek to patent an identical invention, the first person who filed a patent application gets the patent.7 That priority rule can dissuade inventors from building their inventions (at least until they file a patent application), but it has the benefit of providing a clear, bright-line test. Similarly, although the experimental use doctrine (which protects experimental uses of an invention from defeating a patent's claim to novelty) can encourage inventors to perfect their invention before seeking a patent, applying that doctrine raises hard questions about whether a prior use of an invention was genuinely experimental. To be sure, the social costs of overbroad and underdeveloped patents that result from the early-filing incentives embedded in current law may outweigh the costs of the occasional fights over priority and novelty that would occur under the regime Lemley prefers. But his argument against early filing would be even stronger if it engaged the tradeoff between clear rules and fuzzy standards.Lemley's critique of functional claiming as a source of overly broad patent protection is also persuasive, and it has already found traction in the courts. In June 2015, the Federal Circuit issued an en banc decision, Williamson v. Citrix Online, LLC,8 that made the relevant law of claim construction more standardlike and less rule-like, offering courts newfound discretion to constrain the scope of patents drafted in functional terms.9 Building on Lemley's critique of functional claiming, the second part of this essay considers the consequences of Williamson by looking at early district court decisions applying it. Those decisions confirm that Williamson provides a ground to narrow or even to invalidate the broadest functional patent claims. But the decisions also show how the new, standard-like law of claim construction offers courts ample discretion to maintain the status quo, if they so choose. Moreover, the early decisions applying Williamson provide a roadmap for future patent applicants to draft around the Federal Circuit's opinion and obtain broad, functionally defined claims. Accordingly, doctrines outside the sphere of claim construction, such as the requirement of patentable subject matter under § 101 of the Patent Act, will continue to be important to combating notice failure in patent law. …
Publication Year: 2016
Publication Date: 2016-05-01
Language: en
Type: article
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