Forcing Patentee Claims

Abstract:     
One of the oddest features of the patent system is that it allows — indeed requires — patentees to write the claims of their own patent and thereby define their own monopoly rights. On its face, this arrangement allows self-interested patentees to aggrandize their rights over the public and claim more than their actual invention. The fact that claim text fails to describe the real invention then leads to numerous practical problems. Accordingly, many prominent commentators have argued that courts should either abolish patentee-written claims, or ignore claims in favor of a direct inquiry into the actual invention when determining patent scope.

This Article explains why patentee-written claims are in fact efficient and desirable, even though they systematically cover more than the actual invention. The key point is that courts do not have enough information to determine what the actual invention is from scratch. Requiring patentees to write claims forces them to divulge an approximation of the actual invention, which courts can then more meaningfully evaluate for accuracy. While patentees will over-claim, they cannot over-claim too much, and an imperfect approximation of the actual invention is better than having courts make an uninformed arbitrary guess on the correct scope of the patent from scratch. The Article then explains the implications of this insight for the long-running debate over claim construction.

Number of Pages in PDF File: 58

Keywords: claim interpretation, patent scope, central claiming, peripheral claiming, adhesion contracts, Pacific Gas, Autogiro

JEL Classification: O34

working papers series