Fence Posts or Sign Posts: Rethinking Patent Claim Construction

57 Pages Posted: 13 Mar 2009 Last revised: 3 Oct 2015

See all articles by Dan L. Burk

Dan L. Burk

University of California, Irvine School of Law

Mark A. Lemley

Stanford Law School

Date Written: March 12, 2009


Patent law is bogged down in the minutia of claims construction. Claim construction is central to every patent dispute, but it has not provided the hoped-for certainty or notice to competitors. Quite the contrary: disputes about the importance of inventions and the scope of patents have been replaced by labyrinthine wrangling over words written by lawyers. The flaws of claim construction result largely from the problems attending "peripheral claims," that is, claims that purport to set the outermost boundaries of patent rights. In this paper, we argue that the way for the patent system to move ahead may be by looking behind, to the practice of "central claiming" that was prevalent before 1870, and which was used in many countries through the late twentieth century. Rather than relying on the illusion of peripheral "fence posts," patent law may do better to once again look to stability of central "sign posts." We examine the failure of peripheral claiming, the benefits of central claiming, and several hybrid measures that might be adopted, either in the process of moving from fence-posting to sign-posting, or as improvements over the current system that still stop short of fully adopting central claiming.

Keywords: patents, intellectual property, claim construction, peripheral claiming, central claiming, Markman

JEL Classification: K19, K29, O31, O32, O34

Suggested Citation

Burk, Dan L. and Lemley, Mark A., Fence Posts or Sign Posts: Rethinking Patent Claim Construction (March 12, 2009). University of Pennsylvania Law Review, Vol. 157, p. 1743, 2009, UC Irvine School of Law Research Paper No. 2009-10, Stanford Public Law Working Paper No. 1358460, Available at SSRN: https://ssrn.com/abstract=1358460

Dan L. Burk

University of California, Irvine School of Law ( email )

4500 Berkeley Place
Irvine, CA 92697-1000
United States
949-824-9325 (Phone)

Mark A. Lemley (Contact Author)

Stanford Law School ( email )

559 Nathan Abbott Way
Stanford, CA 94305-8610
United States

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