48 Pages Posted: 29 Sep 2005
An examination of the systemic importance of information necessary for defining the topography and contours of patented property reveals that such information is fundamental to the proper functioning of the patent system. Indeed, the question, What is the thing that is patented? is perhaps the single most important inquiry in patent law. For example, the cost of obtaining and understanding information that defines the boundaries of the property sought must be paid as a prerequisite to the decisionmaking that underlies the patent grant, to the determination that certain conduct is unlawful, and in substantive cases, to the determination that a patent should not have issued. Moreover, when the boundaries of the property are not well-defined, the resulting uncertainty causes cost inefficiencies that are felt by all of the participants in the patent system. This Article examines information costs and information cost allocation in the U.S. patent system. It explains how the Patent Office's performance of its information functions is largely responsible for how information costs are allocated in the patent system. From that perspective the Article suggests that efforts to improve Patent Office decisionmaking which rely primarily on getting examiners more prior art, more time with prior art, or which involve administrative litigation procedures may be misguided because they are not well-tailored to address the more fundamental and prerequisite inquiry into the nature of the boundaries of patented property. The Article then sets forth a novel theory-based, low-cost approach directed to improving information cost allocation in the patent system.
Keywords: Patent, Information Costs, Claim Interpretation, Claim Construction, Patent Office, Patent Quality, Patent Prosecution, Patent Examination
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