Author:Freilich, Janet
Position:Symposium: Intellectual Property and the New Private Law

TABLE OF CONTENTS I. INTRODUCTION 233 II. BACKGROUND 235 A. Economics of Standardization 235 B. Notice 237 C. Enablement and Written Description 238 III. PATENT STANDARDIZATION 240 A. Formal Mandates 240 1. Disclosures of Biological Sequences 240 2. Patent Classification Systems 241 3. The Patent Document 242 B. Voluntary Mechanisms 242 1. Industry Norms in the Chemical and 242 Life Sciences 2. Informal USPTO Guidance 245 3. Private Standardization Mechanisms 245 C. The Power of Standardization: A Case Study 245 IV. TOWARDS STANDARDIZATION 250 A. Previous Work 250 B. New Methods 251 1. Representational Language in 251 Software Patents 2. Private ordering Mechanisms 253 3. Increased Use of Templates or Standardized 254 Disclosure Sections V. CONCLUSION 255 I. INTRODUCTION

Among the most important purposes of patents are to provide clear notice to third parties of the patent's boundaries and to disclose helpful information to researchers seeking to replicate or further develop the patented invention. Unfortunately, patents often fail at both of these tasks, in part because of lack of uniformity of language and format. (1) Use of idiosyncratic language in patent claims renders it difficult to find relevant patents and, once a patent is found, to interpret its claims. As there is no customary set of information that must always be included in a patent, researchers often find reading a patent to be a frustrating and fruitless task.

Standardizing the language and format of patents can improve their notice and disclosure functions. Standardization has been discussed at length in many institutional and legal contexts, but has been discussed little in relation to patent content. (2) Similarly, while problems arising from the lack of standardization are well documented, practical suggestions for improving standardization have been absent. This Article provides the first comprehensive discussion of patent content standardization.

The Article's key intuition is that standardization can be achieved through a wide variety of mechanisms. In particular, standardization does not need to be mandated by formal rules; rather, it can arise through voluntary informal mechanisms, which provide an easier goal than statutory or regulatory interventions do. This Article also offers strategies for increasing standardization in less tractable patent environments, such as software. (3) Specifically, the Article discusses representational languages, which are already prevalent in software design, though not in resultant patents, as well as the role of standard setting organizations ("SSOs") and other private organizations in encouraging standardization and the increased use of templates. When patent protection is sought in different countries all over the world, typically through the Patent Cooperation Treaty ("PCT") system, the description of the invention in the patent document stays the same. Consequently, greater standardization in the patent document will also result in greater global uniformity in the description of patented inventions.

Standardization relates to private law, the theme of this Symposium, because standardization is fundamentally about solving problems of notice and disclosure, which are needed to facilitate interactions between private parties. Further, this Article advocates for the achievement of standardization at least partially through private mechanisms.

Part II provides background on the economics of standardization and problems with patent notice and disclosure. Part III describes currently existing standardization, and is divided between standardization achieved through mandates or formal mechanisms in Section III.A, and standardization achieved through voluntary or informal mechanisms in Section III.B. Section III.C is a case study illustrating how a combination of mandates and voluntary mechanisms contributes to standardized units in patents. The case study is followed in Part IV by a discussion of how further standardization can be achieved, although this Article is merely the beginning of efforts towards standardization. Part V concludes.


    1. Economics of Standardization

      There is a large body of literature on the economics of standardization. (4) "Standardization" is used in a variety of ways; (5) here, it is used broadly to refer to a way of doing something that is agreed upon because it is beneficial. Standards reduce certain market externalities. They can promote innovation and economic progress by reducing transaction costs and improving interchangeability and communication through greater transparency. (6) Standards also reduce transaction costs by facilitating division of labor in complex projects. (7) Standards aid knowledge codification by providing a common language, and help knowledge about a field travel easily. (8) For consumers, standards can reduce cost of products and services, (9) allow interoperability of devices, (10) and promote safety and environmental minimums. (11)

      The relationship between innovation and standardization is complex. (12) Standards both help and hinder innovation. (13) Standardization constrains potential options, but can also reduce the time required for companies to bring products to market, promote the diffusion of products and ideas, and provide platforms for downstream innovation. (14) Standardized language can influence learning and network externalities. (15)

      While some standards are mandated rules, most are not. (16) Many works compare formal and informal standards, also termed institutional and market standards or de jure and de facto standards. (17) Informal standards need not be backed by a particular entity; standardization can arise because adoption of a system provides increasing returns to the adoptees. (18) Formal standards can be of higher quality and incorporate more stakeholders, but they are also generally slower to implement. (19)

      Standards may also contribute to undesirable behavior. They may facilitate the formation of monopolies, create consumer lock-in, or increase switching costs. (20) Compliance with standards is often costly. (21) And the process of standard-setting is fraught with potential problems. It may become a "political or economic power game" (22) and does not always represent all relevant parties--in particular, downstream users are often excluded. (23)

      Legal scholars have discussed standards in many contexts. (24) In patent law, standardization appears primarily in the context of SSOs, and the use (and abuse) of patents therein. (25)

    2. Notice

      A patent must clearly set out the boundaries of its claims, providing notice to third parties of the patent's scope. (26) Adherence to this prescription has become a persistent challenge to patentees, courts, and policymakers. (27) Part of the problem is intrinsic: intangible assets are simply hard to define. (28) Part of the problem is incentives: patentees perceive some benefit from ambiguous boundaries. (29) Poor notice creates externalities, as third parties must either pay to determine boundaries of competitors' products or must pay for inadvertent infringement if they are unable to find and resolve those boundaries. (30)

      There are two primary types of notice failure. (31) First, there is the problem of too many patents. (32) There are often thousands of patents relating to a particular technology and, because patentees can choose non-standard language to describe their inventions, keyword searches for patents are challenging and may not be effective. (33) For example, a company trying to find patents on tables might conduct a keyword search for "tables" but may not think to search for "horizontal surfaces capable of supporting dishes." Second, there is the problem of fuzzy boundaries. It is famously difficult to know the precise meaning of terms or words in a patent. (34) For example, if a patent claim contains the term "about 0.9 to 1 inch," (35) does it encompass products measuring 0.85 inches? 0.8 inches?

    3. Enablement and Written Description

      Under [section] 112 of the Patent Act, a patent's specification must contain a written description of the invention, setting forth "the manner and process of making and using it" and employ such "full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains." (36) In theory, at least, these two requirements constitute the disclosure component of the patent system--the quid pro quo for which society is willing to exchange the valuable exclusive rights of a patent. (37) But it is unclear if the disclosure requirement is truly producing valuable dissemination of knowledge that may facilitate further innovation. (38)

      A patent should describe useful advances in science and technology. However, patent law struggles with ensuring that patents convey a high-quality and useful description and that others in that technological area are able to use relevant patents in the course of advancing technology and innovation. An empirical study by Professor Lisa Ouellette suggests that patent disclosures in the United States, while not useless to scientists, are likely falling short of the statutory enablement requirement. (39) Authors on high-impact nanotechnology publications were surveyed about their use of patents (40) and, while sixty percent of the patent-reading respondents felt that a given patent contained useful technical information, only thirty-eight percent of the patent-reading respondents felt that the patent's invention could be reproduced. (41)

      often, disclosure problems arise because, while patent law sets out general patentability standards, applying these general standards to an area of technology poses problems specific to that technology. This includes the historical treatment of inventions in that technology under the patent laws and the consistency with which general patent standards are policed in that arena. (42) Computer software is a prominent example of a technological...

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