The Interpretation-Construction Distinction in Patent Law

The ambiguity of claim language is generally considered to be the most important problem in patent law today. Linguistic ambiguity is believed to cause tremendous uncertainty about patent rights. Scholars and judges have accordingly devoted enormous attention to developing better linguistic tools to help courts understand patent claims. In this article, we explain why this diagnosis is fundamentally wrong. Claims are not often ambiguous, and linguistic ambiguity is not a major cause of the uncertainty in patent law today. We shall explain what really causes the uncertainty in patent rights, how the erroneous diagnosis of linguistic ambiguity has led the literature off-track, and what will get us back on track to solving the uncertainty problem

Rehabilitating the Property Theory of Copyright\u27s First Amendment Exemption

A continuing controversy in copyright law is the exemption of copyright from First Amendment scrutiny. The Supreme Court has justified the exemption based on history and the intentions of the Framers, but this explanation is unpersuasive on the historical facts. There is an alternative explanation: copyright is property, and private property is generally exempt from scrutiny under standard First Amendment doctrine. Many scholars have noted this theory, but they have been harshly dismissive towards it. For example, Mark Lemley and Eugene Volokh view the property theory as so clearly wrong as to be a “non sequitur,” because it supposedly implies that Congress can declare anything to be property and thereby circumvent the First Amendment. This Article aims to rehabilitate the property theory. Contrary to its critics, the property theory does not say that anything labeled “property” is exempt, but rather contains two internal limits. First, the government-created rules of the property system must be content and viewpoint neutral, though the private enforcement of those rules can be viewpoint motivated. Second, even within the context of private enforcement, there must still be some protection against excessive ownership power. Understanding the property theory, including its internal limits, then provides a powerful legal justification for the Court’s treatment of copyright law—one that is far better than what the Court has itself articulated

Defining Patent Scope by the Novelty of the Idea

Patent law defines novelty by the creation of a new embodiment, not an idea. For example, the Wright brothers are deemed to have invented the airplane because nobody made an airplane before, not because they were the first to think of flying. Patent law then defines monopoly scope through a theory of disclosure of embodiments: despite the airplane being new, the Wright brothers could not patent every airplane, ostensibly because they did not teach how to make every airplane embodiment (such as a jet fighter). Disclosure theory, however, is incoherent. Patent law cannot confine the Wright brothers to the embodiment they actually taught—a barely-flying wooden glider—since doing so would eviscerate incentives. But once we say that patents can cover more, disclosure theory provides no limit. If the Wright brothers could cover some undisclosed airplanes, why not all undisclosed airplanes? I argue in this Article for a different theory. In order to be fairly credited as the inventor of something, the patentee must be the first to articulate the idea of that thing. The Wright brothers could not patent all airplanes under this theory, not because they did not disclose how to build every airplane, but because the idea of airplanes was old. By keying patent scope to the novelty of the idea rather than the disclosure of embodiments, my rule provides a fairer and more accurate measure of the patentee’s contribution

Forcing Patent Claims

An enormous literature has criticized patent claims for being ambiguous. In this Article, I explain that this literature misunderstands the real problem: the fundamental concern is not that patent claims are ambiguous but that they are drafted by patentees with self-serving incentives to write claims in an overbroad manner. No one has asked why the patent system gives self-interested patentees the leading role in delineating the scope of their own patents. This Article makes two contributions to the literature. First, it explicitly frames the problem with patent claims as one of patentee self-interest rather than the intrinsic ambiguity of claim language. Second, it provides a counterintuitive answer to the question of why the patent system relies on patentee-drafted claims. Although giving patentees claim-drafting power undoubtedly leads to overbroad patent rights, such an allocation of drafting power is nonetheless socially efficient. This is because the Patent and Trademark Office (“PTO”) and the courts lack the information necessary to determine the correct scope of a patent in the first instance. Requiring patentees to write claims forces them to take a position, a process that discloses some of the patentee’s private information and reduces the complexity of subsequent decisionmaking by courts and the PTO. While patentees will overclaim, they cannot overclaim too much, and relying on an imperfect claim is better than having a court or the PTO make an uninformed guess in the first instance. The Article concludes by explaining the implications of this insight for the debate over claim construction

Fixing Patent Boundaries

The claims of a patent are its boundaries, defining the scope of exclusion. This boundary function of claims is undermined by the fact that claims can be changed throughout the life of the patent, thereby moving the patent boundary. A boundary that can be moved at-will is one that the public cannot rely upon. This Article explores the problems of malleable patent boundaries. If a claim can be amended to permit a patentee to capture something he did not foresee when filing the patent application, the amendment confers an unexpected windfall that did not contribute to incentives to invent before filing. If a claim is amended so that a patentee can capture something he did foresee but mistakenly failed to claim initially, the amendment allows the patentee to shift the loss of his own mistake to third parties. Either way, the amendment is inefficient. This Article proposes that patent boundaries should be fixed upon patent issuance, and postissuance claim amendment disallowed. Because claims before issuance do not create public reliance, preissuance amendment should be retained. Nonetheless, the possibility of inefficient windfalls requires that preissuance amendment not be given retroactive priority in order to limit the ability to capture later developments