Patent Disclosures and Time
59 Pages Posted: 28 Jul 2016 Last revised: 30 May 2017
Date Written: July 27, 2016
Patents by their very nature are pregnant with considerations of time. The exclusive rights they afford only last for a finite period — generally from issuance until twenty years from the filing date of the application. Moreover, since patents necessarily engage with the evolution of technology, patents reflect various “snap shots” in time that reflect the state of the art at a particular moment. Patent law must constantly wrestle with time.
Many of these topics have been explored extensively in both judicial decisions and the academic literature. The most obvious example of considering the temporal aspect of patent law is…obviousness. The Courts have discussed at length concerns about hindsight bias. Because obviousness is assessed at the present time based on the state of the art in the past, the problem may arise that, with the patent in hand, one may inappropriately conclude that the invention is obvious. The literature has explored the hindsight problem both theoretically and experimentally.
In contrast, the relationship between time and patent disclosures is surprisingly underdeveloped. Little literature has explored rigorously, for example, the hindsight bias that also arises in the context of patent disclosure requirements, which are assessed at the time of the filing date. This Article explores how the nature of patent disclosures vary significantly based on the particular temporal context for which the disclosure is being considered.
This Article explores five moments that implicate a form of disclosure. The scope of the disclosure at the first moment – the date that a disclosure is viewed as prior art – is relatively unimportant. The second – the moment of assessing novelty and non-obviousness – provides some interesting and underappreciated aspects of the nature of prior art disclosures. This Article suggests that the importance of hindsight bias is present in ways for anticipation that has only been addressed in the obviousness context. It also suggests that current doctrine undervalues the importance of the knowledge of one of ordinary skill in the art, then offers ways to properly account for this knowledge, drawing on past practice that has fallen by the wayside in the modern era.
The third moment – that of the date of the relevant patent application – also creates interesting temporal dynamics regarding the requisite proof that a particular patent application adequately discloses the patented invention. This moment in time involves the classic patent disclosure: that of 35 U.S.C. § 112(a). In this context, the disclosure is viewed as static. Satisfaction of the disclosure obligations is measured solely against the state of the art as of the filing date. Given this demanding focus on the filing date, the Article addresses a problem that has vexed the law for some time: what type of post-filing evidence can be used to demonstrate whether the disclosure is sufficient, particularly with respect to utility and enablement? In particular, when, if ever, is it appropriate to consider scientific evidence that was created after the filing date to determine whether the disclosure is sufficient. The Article offers four possible alternative approaches and ultimately recommends a bright-line rule against the introduction of post-filing generated evidence.
Finally, the Article explores fourth and fifth moments in time, both related to patent scope. The fourth moment is the point in time at which the court construes the claims of the patent, known as claim construction. The fifth moment is that of an act of infringement, which takes place after the patent issues. Considering these two moments in time, the Article posits that courts have not adequately consulted the specification of the patent at issue to properly assess the scope of the patent, particularly for purposes of the doctrine of equivalents. Here, again, we see a somewhat odd dynamic. For purposes of claim construction and literal infringement, the disclosure is in theory (though perhaps not in practice) frozen in time, limited to the state of the art as of the filing date. But, with respect to the doctrine of equivalents, the disclosure is permitted to grow to ensnare new technologies. In this way, the teachings of the patent grow over time and allow the patent to ensnare later-developed technologies.
Keywords: patent, disclosure, hindsight, anticipation, novelty, obviousness, enablement, written description, utility, infringement, doctrine of equivalents
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