RES or Rules? Patents and the (Uncertain) Rules of the Game

58 Pages Posted: 16 Sep 2011 Last revised: 18 Jul 2016

See all articles by Emily Michiko Morris

Emily Michiko Morris

University of Maine - School of Law; Shanghai University of Political Science and Law (SHUPL)

Date Written: September 14, 2011


The stakes at play in modern-day patent infringement suits can be worth hundreds of millions of dollars. Just take a look at the $612.5 million that Research in Motion, Ltd., paid to settle NTP, Inc.’s patent infringement suit against it. How could RIM have made such an expensive mistake? After all, patents are public records, so ideally patent infringers should simply do their homework and avoid such massive liability. In reality there are a multitude of reasons why some technology companies find themselves infringing others’ patents, but perhaps the most commonly cited reason is the fact that the boundaries of a patent are not neatly drawn lines the way real property boundaries are. But are real property metes and bounds a fair comparison for patent boundaries? Several significant differences between the patent system and real property regimes suggest otherwise. First, as is widely recognized, patents protect intangible and nonrivalrous ideas, not physical assets, but this is just one of many differences between patentable inventive ideas and real property. Inventive ideas are also novel, short-lived and easily invalidated, and difficult to define in clear terms. Perhaps most importantly, patents are not just ways of protecting “property” but also rules of governance regulating how others can use their own property. And regardless of whether they are property boundaries or rules of governance, patent claims must protect inventive ideas from a future much more uncertain than that faced by any real property plot. Patents boundaries are therefore impossible to draw with perfect clarity and will often have to rely on judicial resolution ex post. In this way, patent claims share much in common with standards and not just rules, an insight that should influence the way that we interpret patent claims.

Keywords: patents, patent claims, certainty, patent claim construction, rules and standards

Suggested Citation

Morris, Emily Michiko, RES or Rules? Patents and the (Uncertain) Rules of the Game (September 14, 2011). 18 Mich. Telecomm. Tech. L. Rev. 481 (2012).; Indiana University Robert H. McKinney School of Law Research Paper No. 2012-10. Available at SSRN:

Emily Michiko Morris (Contact Author)

University of Maine - School of Law ( email )

246 Deering Avenue
Portland, ME 04102
United States


Shanghai University of Political Science and Law (SHUPL) ( email )

7989 Wai Qingsong Road
Shanghai, P.R 201701


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