What is the "invention"?

• Author: Cotropia, Christopher A.

ABSTRACT

Patent law is in flux, with recent disputes and changes in doctrine fueled by increased attention from the Supreme Court and en banc activity by the Federal Circuit. The natural reaction is to analyze each doctrinal area involved on its own. Upon a closer look, however, many patent cases concern a single, fundamental dispute. Conflicts in opinions on such issues as claim interpretation methodology and the written description requirement are really disagreements over which "invention" the courts should be considering.

There are two concepts of invention currently in play in patent decisions. The first is an "external invention" definition, in which courts define the invention by the detailed technology discussion in the patent specification's descriptions and drawings. Other decisions invoke a "claim-centered invention" definition, which relies almost exclusively on the claim, a single sentence at the end of the patent. Judging these two definitions against common patent theories can help to determine which best fits the theories' narratives. This Article concludes that the external invention is more favorable because it grounds exclusivity in what the inventor has actually done or plans to do and, accordingly, is more likely to comport with common patent theories.

TABLE OF CONTENTS INTRODUCTION I. TWO MODERN CONFLICTS IN PATENT LAW DOCTRINE AND THE UNDERLYING DEFINITIONS OF INVENTION A. Conflict in Claim Interpretation Methodology B. Conflict in Application of the Written Description Requirement C. The Common Thread--Two Competing Definitions of Invention--"External" Versus "Claim-Centered" Invention 1. "External Invention" Defined a. External Invention in Claim Interpretation b. External Invention and the Written Description Requirement 2. Claim-Centered Invention a. Claim-Centered Invention in Claim Interpretation b. Claim-Centered Invention and the Written Description Requirement II. USING PATENT THEORY TO CHOOSE A DEFINITION OF INVENTION A. Incentive-to-Invent Theory 1. The Story 2. Which Invention Definition Best Fits This Story? B. Prospect Theory 1. The Story 2. Which Invention Definition Best Fits This Story? III. DOCTRINAL IMPLICATIONS OF CHOOSING THE EXTERNAL INVENTION A. Dictates Specific Results in Current Doctrinal Conflicts 1. Claims Should Be "Read in Light of the Specification". 2. Disclosure Must Comply with an Independent Written Description Requirement B. Repositions Other Doctrines 1. Construing Claims to Meet the Disclosure Requirements 2. Greater Use of the Doctrine of Equivalents CONCLUSION INTRODUCTION

Patent law has changed dramatically over the past ten years. The Supreme Court is now more active than it once was in reviewing patent cases. (1) The Federal Circuit goes en banc more frequently in attempts to resolve disconnects in doctrine or simply to clarify them. (2) These disputes and changes impact all aspects of patent law. Each is interesting in its own right and prompts much discussion among patent scholars. (3) The presence of so many conflicts and changes in patent doctrine raises the question of whether these disputes share a common theme. Is there an underlying fundamental disagreement in patent law?

This Article contends that there is. The discourse in various doctrinal areas revolves around a single question--what is the "invention"? (4) The concept of invention sits at the center of patent law. Patent law begins any inquiry by testing the invention for whether it is worthy of patent protection--that is, whether it is patentable. (5) Then, if the invention is patent eligible, the inquiry shifts to determining the scope of exclusivity awarded to the invention and whether others have infringed upon those relevant rights. (6) Given the invention's central role, determining what exactly is the invention being considered becomes crucial to any patent inquiry.

To unearth whether disputes over the concept of invention sit at the middle of recent doctrinal conflicts, this Article looks at two major doctrinal questions in dispute in recent years. The first is how patent claims, which define the patent's exclusivity, are interpreted. Patent claim methodology is always a source of contention between parties. (7) And although the Federal Circuit went en banc in 2005 in an attempt to dispel any ambiguities, follow-on panel opinions still vary in their approaches to interpreting claims. (8) The second doctrinal area is the written description requirement--a patentability requirement dictating what needs to be described in the patent document to qualify for patent protection. (9) The exact contours of this validity requirement, and even whether it actually exists, have garnered much judicial and academic attention over the last twenty years, prompting the Federal Circuit to go en banc in 2009 to clarify the doctrine. (10) Whether the court's 2009 decision squelched any disagreement over the requirement is still in question given recent written-description decisions that prompted dissents on the issue. (11)

These are disputes in two very different doctrinal areas--one focused on interpreting claims and defining the scope of exclusivity, and the other asking whether the patent is eligible for protection to begin with. But both are also perfect examples of the basic disagreement driving most doctrinal conflicts in patent law today: a disagreement over the definition of invention in patent law.

The two competing definitions of invention are the "external invention" and the "claim-centered invention." Under the external invention, the technical information and discussion contained in the patent's specification define the invention. (12) The specification is the more robust part of the patent and includes descriptions and drawings of the state of the relevant technology, references to what has been done before, any specific implementations of the invention known to the inventor, and a general description of the purpose or goal of the invention. (13) All of this information provides insight into the inventor's actual activities and appreciations regarding the invention. That is, what the inventor considers to be her invention and how she has implemented it, or at least plans to implement it, define the external invention. The claim-centered invention, in contrast, is defined by the patent's claims. (14) A claim is a single sentence at the end of a patent that describes what the inventor wishes to have exclusivity over. (15) The claim-centered invention views the claim itself as the invention for patent law purposes. (16) The claim creates the invention and, accordingly, defines it.

Identifying these two definitions that sit at the center of the claim interpretation methodology and written description disputes has two main advantages. First, the definitions have significant explanatory power to distill doctrinal disputes to their core--the meaning of invention in patent law. Second, the definitions allow doctrinal choices to be judged against basic patent theory.

This Article makes use of both advantages. The usage of these definitions--the external and claim-centered invention definitions--is first identified in the context of recent claim interpretation methodology and written description decisions. The two definitions are then examined against patent theory to determine which definition better advances the reasons behind the patent system. This Article concludes that the external definition of invention comes closer to defining exclusivity in a manner assumed by both the incentive-to-invent and prospect theories. (17) Both of these theories suppose that patent protection is at least centered on the inventor's actual inventive activities and understandings, not on a legal fiction such as the patent claim. (18) Thus, the external invention, although not perfect, produces the best fit with these common patent narratives. (19)

Finally, explicitly choosing a definition of invention has numerous doctrinal ramifications. The correct answers to the existing debates on claim interpretation methodology and the written description requirement become clear once one uses the external invention. (20) Under the external invention approach claims should be interpreted in light of the specification and a robust, independent written description should be required. Using the external invention also makes second-order effects on other patent doctrines become evident. An external invention means that claims should be construed to preserve their validity. (21) The external invention links the specification and its embedded disclosure requirements with claim meaning, forcing validity to be considered early. (22) The resulting narrow, literal claim meaning, tied tightly by the external definition to the specification's particular description of the invention, will leave room for a rebirth of, and reinvigorated reliance on, the doctrine of equivalents. (23) Broader protection will be needed to further patent policy in some cases, and the doctrine of equivalents will be needed once again to play this role.

The Article begins in Part I by describing the disagreements that are present in current case law in both claim interpretation methodology and the written description requirement. Then, the Article describes the underlying competing definitions of invention--external and claim-centered--and identifies those two competing definitions within these two doctrinal disputes. Part II presents the two most common justifications for the patent system: the incentive-to-invent and prospect theories. In light of these theories, the Article evaluates the two invention definitions to see which definition best fits with the theories' assumptions regarding patent exclusivity. Part III of the Article then looks back at the doctrinal conflicts described earlier and determines how the selection of a definition of invention resolves any open issues. The Article concludes by investigating the secondary...