The Integrated Patent Instrument

59 Pages Posted: 14 Aug 2015 Last revised: 15 Oct 2015

Date Written: August 12, 2015


Inventors who apply for a patent at the U.S. Patent and Trademark Office (PTO) routinely negotiate with the PTO over the patent’s scope. The written record of that negotiation is called the prosecution history. For the past three decades, courts have held (and many scholars have assumed) that this written record is “intrinsic evidence” to a patent. On that basis, the U.S. Court of Appeals for the Federal Circuit reviews de novo a trial court’s findings based on a prosecution history when construing the scope of a patent — as if such findings were pure determinations of law. That approach to prosecution history recently won the U.S. Supreme Court’s approval in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. But by blessing the Federal Circuit’s approach, the Court perpetuated a review system that encourages appeals, discourages settlement, and prolongs expensive litigation when trial courts determine the outcome of a case based on a prosecution history. In short, de novo review of the prosecution history foments litigation and taxes innovators.

This Article argues that treating prosecution history as intrinsic evidence is incorrect in concept and inconsistent with a patent as an integrated legal instrument. Instead of the prevailing view, this Article suggests that contract principles provide a coherent paradigm through which courts and scholars can understand a patent and its history. Those principles frame patents as integrated instruments; prosecution histories as extrinsic evidence; and findings based on those histories as determinations of fact, not law. This paradigm suggests a sea change in how the Federal Circuit should review patent constructions — namely, the court should review findings based on prosecution histories for clear error only, like other factual questions, not de novo, like pure questions of law. By reviewing such findings for clear error, the Federal Circuit can discourage appeals, avoid unnecessary remands, and thereby reduce costs in cases where factual inquiries based on the prosecution history drive the final construction of a patent.

Keywords: patents, intellectual property, contracts

Suggested Citation

Funk, Christopher, The Integrated Patent Instrument (August 12, 2015). Available at SSRN: or

Christopher Funk (Contact Author)

Independent ( email )

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