Claim Re-Construction: The Doctrine of Equivalents in the Post-Markman Era

In the post-Markman era, the Federal Circuit has focused attention on the public notice function of patent claims in equivalents cases, and it has come to emphasize precision and accuracy in claim drafting. This Article argues that recent judicial emphasis on the public notice function of patent claims is an inappropriate innovation policy. The demand for highly refined patent claims increases patent acquisition expenditures that are unlikely to increase social welfare, cause patent rights to be distributed unevenly, and are inconsistent with the structural features of the patent system. This Article presents two mechanisms to accommodate the doctrine of equivalents in the post-Markman era. One is the reinvigoration of the reissue proceeding. The other is allowing judicial amendment of patent claims during infringement litigation proceedings, much like the longstanding British practice. This shift would allow courts to pursue the policy goals of Markman for literal and equivalent infringement alike

Liberty and Property in the Patent Law

Patents have seldom troubled civil libertarians. A specialized form of property, patents seemed pertinent to the technologies of traditional industry but little else. Patent instruments offered their readers mere technical documentation; patent cases presented no more than the mapping of a text onto an instantiated artifact; patent policy was principally oriented toward economic optimization of the length and scope of protection. Unbound from technology, contemporary patent law now seems a more robust discipline. Modern patent instruments appropriate a diverse array of techniques that span the entire range of human endeavor. Patent claims, cut loose from physical moorings, have grown more abstract and oriented toward human behavior. We have yet to realize fully the consequences of postindustrial patenting, but the potential impact of the patent law upon personal liberties is becoming more apparent and more worthy of concern. Although the principles of the patent canon demonstrate sufficient flexibility to regulate uses of such inventions as software, business methods, and genetic fragments, they persist in bearing little regard for civil rights. The private rule making, made possible through the patent law, holds the potential to impinge upon individual liberties in ways not previously considered possible

The Role of Trade Secrets in Innovation Policy

[Excerpt] This report provides an overview of the law and policy of trade secrets. It discusses the role of trade secrets in U.S. innovation policy. It then reviews the sources of trade secret law and the substantive rules that they provide. The report then provides a more detailed review of existing federal legislation that pertains to trade secrets. In its next section, the report then discusses the relationship between patent law and trade secret law. The report closes with an identification of congressional issues and options within this field