In theory, a patent serves the public good because the disclosure of the invention brings new ideas and technologies to the public and induces inventive activity. But while these roles inherently depend on the ability of the patent to disseminate technical knowledge, the teaching function of patents has received very little attention. Indeed, when the document publishes, it can serve as a form of technical literature. Because patents can, at times, communicate knowledge as well as, or better than, other information sources, patents could become a competitive source of technical information. Presently, however, patents are rarely viewed in this manner. There are several reasons for this, including the lack of a working example requirement and the pervasive use of ambiguous or opaque language.
My primary objective is to transform patents into readable teaching documents. Importantly, if patents are to compete with the technical literature, then they must provide the same quality of teaching. For this to happen, two things must occur. First, at least for complex inventions, an applicant must prove, through adequate detail, that the claimed invention has been constructed and works for its intended purpose. Second, applicants must be allowed to draft the document using clear and concise language, without the fear of litigation troubles. To achieve both, I contend that working examples should replace language as the principal measure of claim scope. To implement this idea, I propose a new examination protocol which gives the U.S. Patent Office the ability to request working examples when the disclosure's teaching appears dubious. In exploring criticisms, I argue that, in contrast to the current disclosure framework, which can itself thwart innovation, the proposed regime will produce more technically robust patents, which will make it easier for subsequent inventors to improve upon existing patented technology, promote the diffusion of knowledge across disciplines, and serve as a driver for more creative innovation.
INTRODUCTION I. IDENTIFYING THE PROBLEM A. No Experimentation Required! 1. Constructive Reduction to Practice 2. Prophetic Examples B. "Patentese" 1. What Is It? 2. Why Is It Used? 3. Drawbacks II. IMPROVING THE TEACHING FUNCTION OF PATENTS A. Imposing a Working Example Requirement 1. Raising the Standard of Disclosure 2. A New Examination Protocol B. Drawing Support from History C. Potential Benefits 1. It Will Simplify the Enablement Inquiry 2. It Will Yield More Robust Patents 3. It Will Bridge the Disconnect Between Science and Patent Law 4. It Will Make Patents a Competitive Source of Technical Knowledge III. CRITICISMS AND LIMITS OF THE TEACHING FUNCTION A. Conflicting Policy Concerns B. Teaching Whom? C. The Disclosure-Dedication Rule CONCLUSION INTRODUCTION
The patent document serves several stated functions. First, it discloses the invention to the public. (1) This disclosure must be sufficiently detailed to enable one of ordinary skill in the art to practice the invention and provide the best way to do so. (2) Second, it includes claims which define the scope of the exclusory right and notify interested members of the public of the activities that will infringe. (3) Third, the document serves as a starting point for patent prosecution, (4) as well as a court's adjudication of patent validity and infringement. (5)
Yet patents perform functions which extend beyond the legal sphere. These include, for example, signaling research and development (R&D) strength to customers and competitors (6) and inducing inventive activity. (7) This Article focuses on one function that has received considerably less attention: teaching. The basic idea is that, while the patentee can exclude others from practicing the invention until the patent term expires, the technical information disclosed in the patent document has potential immediate value to the public, (8) which can use the information for any purpose that does not infringe upon the claims. (9) Thus, the patent document itself can serve as a form of technical literature and add to the storehouse of knowledge.10
But while patents are in many ways quite similar to other technical information sources, (11) it is fair to say that they are not often viewed as an important channel for information flow. (12) Several commentators speculate as to why this is so. (13) Yet patents can, at times, communicate knowledge as well as, or better than, other information sources, and serve as a rich font of technical knowledge. (14) Yet, for a variety of reasons, the patent literature is often overlooked or ignored. First, scientists and engineers are not trained to read patents. In college and graduate school they learn that research funding, reputation, and tenure decisions turn on publications in peer-reviewed technical journals. (15) This influence often carries over into industry. (16)
Second, many companies, as a matter of policy, have discouraged their employees from reading the patent literature out of fear that knowledge of a patent could lay the groundwork for a finding of willful infringement if that patent were litigated. (17) With this in mind, companies have had to weigh the potential benefits of reading a patent against the risk of enhanced damages. (18) However, a recent decision from the U.S. Court of Appeals for the Federal Circuit makes it substantially more difficult for a patentee to prove willfulness and suggests that simply reading a patent will not trigger the doctrine. (19) Third, a disclosure which cannot teach a person having ordinary skill in the art (PHOSITA) (20) how to practice the invention has little substantive value. (21) Indeed, one criticism of patents is that they "seldom teach enough so that someone can actually go out and actually do the invention without some additional work." (22) This is true, at least in part, because an inventor need not create a working embodiment, (23) or engage in any experimentation, before obtaining the patent. Rather, an inventor can describe an invention with fictitious, constructed examples. And, if these examples lack sufficient detail, a PHOSITA can presumably rely on knowledge in the field to fill in the missing information. (24) But when this presumption fails, the PHOSITA can spend a lot of time and effort figuring out how to make and use the invention.
Fourth, jargon and formalism often make patents indecipherable, even to those with specialized knowledge. (25) So, even if a patent disclosure satisfies the statutory disclosure requirements, the document itself has little technical value if it is unreadable. (26) In a practical sense, this incomprehensibility could become relevant when a patentee tries to attract and negotiate terms with potential licensees. (27)
It is now time to transform the patent into a readable teaching document. This Article seeks to show that a new standard of disclosure will allow patents to achieve this goal. This Article, the first to closely consider teaching as an important function of the patent system, (28) is the next piece in a larger project, undertaken to bridge the disconnect between patent law and the norms of science. (29) Part I begins by elucidating why patents are difficult to understand. Part II proposes that raising the standard of disclosure, by allowing the U.S. Patent and Trademark Office (Patent Office) to request working examples, will improve the teaching function of patents. In this Part, I contend that changing the examination protocol will allow patents to quickly become competitive sources of technical information. Part III explores some of the concerns that accompany the proposal. I argue that, in contrast to the current disclosure framework, which can itself thwart innovation, the proposed regime will produce more technically robust patents, which will make it easier for subsequent inventors to improve upon existing patented technology.
IDENTIFYING THE PROBLEM
No Experimentation Required!
Constructive Reduction to Practice
In contrast to the norms of scientific research, which focus on work actually performed, an inventor can obtain a patent without conducting a single experiment. (30) It is well settled in U.S. patent law that conception, (31) and not any physical act, is the key facet of the inventive process. (32) Thus, an applicant who "constructively" reduces an invention to practice by merely filing a patent application presumably has complied with the disclosure requirements of 35 U.S.C. [section] 112, (33) including the obligation to enable a PHOSITA to make and use the invention without undue experimentation. (34)
Constructive reduction to practice plays a unique role in patent law, as Judge Pauline Newman describes:
[It] is a legal status unique to the patent art. Unlike the rules for scientific publications, which require actual performance of every experimental detail, patent law and practice are directed to teaching the invention so that it can be practiced. The inclusion of constructed examples in a patent application is an established method of providing the technical content needed to support the conceived scope of the invention. (35) Yet courts acknowledge that the doctrine is legal fiction. (36) As Professors Dan Burk and Mark Lemley have pointed out, the doctrine recognizes that "the inventor is in some sense speculating or guessing about the features of an invention not yet built." (37) Nonetheless, "the underlying assumption in patent law is that the inventor 'has' the invention mentally, and so can give a sufficiently detailed description of that inventive conception--[thus] physically creating the invention is straightforward." (38) This legal fiction probably emerged during the early days of the patent system when inventions were simple and easy to describe. (39)
Since the doctrine is legal fiction, it is not surprising that constructive reduction to practice has several inherent problems. First, some...