A Brief Look at the "patent Bargain" and the Patent Office's Brokerage Between Inventors and the Public

• Publication year: 2022
• Author: Morgan Chu

A BRIEF LOOK AT THE "PATENT BARGAIN" AND THE PATENT OFFICE'S BROKERAGE BETWEEN INVENTORS AND THE PUBLIC

AUTHORS

Morgan Chu

Dominik Slusarczyk

In this Article about recent developments in intellectual property, we have occasion to examine a key policy underlying patents that protect the fruits of invention.

How do we justify our extension of property rights, which are by definition rights to exclude, to products of one's intellect? What, if anything, should we require inventors to give up in exchange for granting them such rights?

Two cases on the Supreme Court's docket in 2022 explored these questions at the heart of our patent system. Both dealt with the extent of the education—known in this context as disclosure—that an inventor must provide about their invention, in exchange for securing their patent rights, to the public.

In the Biogen case, the United States Court of Appeals for the Federal Circuit reversed Biogen's issued patent rights on the ground that the inventors' disclosure did not show that they had actually invented what they had claimed as their patent rights, at least as of the time that they submitted their applications for patent.¹ The Supreme Court last year denied Biogen's petition for certiorari.

In the Amgen case, the Federal Circuit reversed Amgen's issued patent rights on the ground that the inventors' disclosure failed to describe with sufficient breadth how to practice the claimed invention.² No decision has yet issued from the high Court, with oral argument imminent as of the time of this writing.

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We discuss below some of the specific questions implicated in these cases. Those questions live at the heart of the goals of our patent system.

PATENT RIGHTS AND THE INVENTORS' BARGAIN WITH THE PUBLIC

Patent rights arise under acts of Congress pursuant to its Constitutionally granted power to "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."³ That grant on its face simultaneously enumerates a legislative power and the policy standing behind that power.

Federal statutes vest the owner of a patent with the ability to exclude others from making, using, offering to sell, or selling the patented invention.⁴ They also deem activity of that type by others to be patent infringement subject to injunctive and monetary remedies in federal courts.⁵

The right to exclude others from practicing a patented invention may in and of itself "promote the Progress of Science," by protecting inventors' investment into engineering useful new ideas from "copycats." For example, left to their own devices, an actor could intercept the invention—by observation, reverse engineering, or any number of other means—after the inventor had already invested the labor, ingenuity, and resources to bring their idea to the market. That type of risk is thought to stifle investment in many kinds of innovation, and our system of patent rights tries to minimize that risk. Patents are sometimes for that reason described as grants of monopoly, although use of that fraught term in this context is sometimes criticized as insufficient and inaccurate.⁶

The statute does more, however, than merely permit inventors to obtain patent rights to their invention. As a precondition for securing those rights, the statute requires the inventor to disclose their invention to the public—and with sufficient specificity and completeness.⁷ This disclosure is hoped to seed still newer ideas in the nation's creative minds, exponentially furthering innovation.

By requiring disclosure, the patent statutes set up a kind of bargain between inventors and the public. In effect, the public agrees to forego rights to the patented subject matter, for a limited period of time, in exchange for education from the inventor about how the invention works and how it is believed to be beneficial.

Patent rights expire with time,⁸ and all patented inventions ultimately pass wholly to the public domain. The inventor's disclosure is meant to ensure that when such time comes, the public possesses the information needed to enjoy free use of the formerly patented subject matter.

THE "MONOPOLY" GRANT OF PROPERTY RIGHTS TO AN INVENTION

A patent conveys to its owner⁹ a time-limited bundle of rights to exclude others from the use of the patented invention, and is considered both by statute and long-standing American jurisprudence a form of property.¹⁰

CLAIMS

The metes and bounds of the patent's bundle of rights to exclude are defined by the claims (hereafter Claims) of an issued patent. The Claims are drafted by the inventor or, commonly, the inventor's attorney, as part of the application for patent. By statute, the Claims are to "particularly point[] out and distinctly claim[] the subject matter which the inventor . . . regards as the invention."¹¹

Examiners at the Patent Office review patent applications to ensure that they comply with various statutory requirements, such as novelty and non-obviousness, as well as the written-description requirements discussed below. Often, the review takes years. The Patent Office may engage in multiple rounds of rejections of the application—for example, if an examiner determines that the

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proposed Claims do not set forth a novel and non-obvious invention.¹²

SPECIFICATION

The application is also required to provide a thorough disclosure of the invention—the vehicle that educates the public about the invention. It is typically published to the public 18 months of the filing of the application.¹³

Whereas a patent's Claims are designed to succinctly articulate the scope of invention for which the inventor claims credit (and to which the inventor seeks exclusivity rights), the application's specification must disclose how to make and use that invention. In other words: "Specifications teach. Claims claim."¹⁴

Section 112 sets out the statutory requirements pertaining to what an inventor must disclose. It requires the application to include a "written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same."¹⁵ Two key aspects of this requirement are discussed in the sub-sections below.

WRITTEN DESCRIPTION

The written description required by Section 112 is an important element of the bargain that an inventor strikes with the public to obtain their time-limited patent right. It "put[s] the public in possession of what the party claims as his own invention, so as to ascertain if he claim[s] anything that is in common use, or is already known."¹⁶

To put the public in possession of the invention, naturally, the inventor must have possession. They actually need to have actually invented—rather than, say, distantly theorized about—what is claimed.

In some cases, timely possession is disputed. In fact, the Biogen case discussed below provides an example of facts that gave rise to a dispute about whether the written description demonstrated the inventors' possession of a particular issued patent Claim as of the time of their application.

ENABLEMENT

Enablement is a related, but distinct, requirement of the inventor's disclosure. The statute requires the disclosure to "enable any person skilled in the art . . . to make and use" the invention. The purpose of this aspect of the Section-112 disclosure "is to ensure that the public is told how to carry out the invention."¹⁷

To fulfill the bargain between the inventor and the public, this aspect of the written description must allow a person of ordinary skill in the art to practice the invention "without undue experimentation."¹⁸ To determine whether the disclosure clears this hurdle, courts apply the so-called "Wands factors":

1. The quantity of experimentation necessary;
2. The amount of direction or guidance presented;
3. The presence or absence of working examples;
4. The nature of the invention;
5. The state of the prior art;
6. The relative skill of those in the art;
7. The predictability or unpredictability of the art; and,
8. The breadth of the Claims.¹⁹

A PRACTICAL DISTINCTION

An important practical distinction between the specification and the Claims relates the "priority date" of each Claim.

The priority date of a Claim is a cutoff for prior art that can be used to show the Claim is not novel or obvious; for example, written publications available to the public before the priority date—but typically not after—can be used to mount a challenge to the patent's novelty or non-obviousness. In simpler cases, the priority date of a Claim is the filing date of

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the application, although in some cases the priority date might be different.²⁰

Claims can be amended during prosecution of the patent without automatically changing their priority date. For example, in response to an examiner's rejection of a Claim as obvious or not novel over the prior art, the applicant might amend the Claim to narrow it, so that it ceases to overlap with the prior art. In some cases, the Claims sought in an application might be amended to add new Claims not previously requested. Sometimes, an amendment is sought and approved years after the filing of the application.

Specifications, too, may be amended during prosecution. If the specification is amended, however, Claims that rely on the amended portions of the...