Written by: Charles Dresser
The object [of patent protection] is . . . to encourage the few inventive minds among us to take the risks inherent in introducing new products and arts . . . for the ultimate benefit of the many.
(Emphasis added.) Robert H. Rines, Create or Perish, 12 (Preliminary Ed., 1964).¹
Like Create or Perish, which was a textbook at both M.I.T. and Harvard Law School, the author of this blog hopes to reach the “few inventive minds among us.”
As a result of economic and legal considerations described below, (and others left out for brevity,) a patent will seldom capture the creativity, ingenuity, and beauty of the innovation it protects. Thankfully, this is not the patent’s function. Nevertheless, for inventors, patents can represent the fruits of their labor, public recognition, and even expression of their personhood.² Accordingly, many inventors may feel dissatisfied with their patent’s ineloquent legalistic representation of their invention. This paper attempts to comfort these inventors, first, by explaining why patent language is written the way it is and, finally, analogizing a patent application to a caricature (with a caricature of the author provided in solidarity to inventors).
Patent Language
Inventors, like all of us, are proud of their accomplishments, and being a named inventor on an issued patent is an accomplishment many inventors hold dear.³ Unfortunately, the language of the resulting patent document is seldom (if ever) as artful or elegant as the invention itself. The reason for this is because of the function of a patent.
A patent application is not a journal article, technical specification, or marketing publication that is written for an audience of peers, colleagues, or potential customers. As a result, patent applications can be found wanting in context, precision, and readability. Instead of being written to artfully explain an invention, a patent application is written, primarily, to claim a technical scope that has economic value and, secondarily, to satisfy legal disclosure requirements.
Claim Scope
The primary function of a patent is to claim a property right having an intangible technical scope for a limited duration of time. Just as the owner of real estate can remove trespassers, the holder of a patent has the right to exclude all others from using the invention as claimed in the patent, for as long as the patent remains enforceable. As a result, a more valuable patent will cover more desirable technical scope; and carefully claiming the technical scope is the most important function of a patent.
The section of the patent which claims the technical scope of the invention is, aptly called, the Claims section. Each claim is a single, run-on sentence which describes the elements of the invention (claim elements). Once issued, a patent owner has the right to exclude others who are practicing the invention, so long as they are practicing each and every claim element. If a product lacks just one claim element, it does not infringe the patent and the patent owner has no right to exclude the product. The claims must, therefore, be broad enough to cover future anticipated use of the technology. However, the claims cannot be too broad.
The United States Patent and Trademark Office (U.S.P.T.O.) ensures only patent claims that are novel and non-obvious, when viewed in the light of earlier publications, are granted. See 35 U.S.C. §§ 102–103. Thus, a talented claim drafter will select capacious claim language that avoids previously published elements from related teachings.
The patent claims are, therefore, of paramount importance when drafting a patent application, and claim language is chosen—not to best describe the fruits of the inventor’s creativity—but to cover future technical practices while avoiding past teachings.
Legal Requirements
The function of the patent application is to claim valuable technical scope. Additional disclosure within the patent explains the claims, but this language is constrained by legal requirements. These legal requirements arise out of the public policy of patent law.
The object [of patent law is] . . . to encourage the few inventive minds among us to take the risks inherent in introducing new products and arts or processes into the stream of commerce, for the ultimate benefit of the many. This encouragement t[akes] the form of a contract: the [government] offering the inventor limited protection against copying in return for publication of the details of his invention; and it rest[s] upon the theory . . . that rewards to the individual may benefit the public at large.
(Emphasis added.) Rines, 12.
Thus, in order for the government to grant patent protection, the patent application is legally required to include sufficient details of the claimed invention to allow the public to benefit from the disclosure. There are a number of laws and rules which dictate how much and what kind of disclosure is required, see 35 U.S.C. § 112, but, generally, the patent application must include enough details so that an ordinary technical person in the field could—theoretically—copy the invention after reading the patent.
These disclosure requirements are examined under a pass-fail test by the Patent Office. Seldom will a disclosure that better explains the technology yield a more economically valuable patent. And in some cases, better explaining the importance of an invention can negatively affect the patent application’s likelihood of being allowed.
Patent applications will typically include a Background section; this Background, if overly verbose, can impede a patent application’s likelihood of being allowed. The Background section is used to explain the current state of the art; thus, telling the story why the invention is beneficial. Unfortunately, the background section may be considered an admission of prior art in patent examination. For example, where the invention represents an improvement on another invention, describing the earlier invention in the background section could help the examiner formulate an argument for why the patent application claims are obvious, and not entitled to patent protection. For this reason, Background sections in patents have been shrinking over the years, and modern patent practice is to explain little of the importance of the invention and not discuss any related publications.
Caricature
When reviewing a patent application, inventors should temper their expectations and consider the function of the patent, which is to retain property rights on valuable technology. The scope of these rights must be covered in a one-sentence claim (and further explained in a disclosure according to the legal requirements). Attempts at contextualizing the invention in light of the state of art is discouraged, as any discussion of the prior art poses a substantial legal risk of admitting prior art. Accordingly, the resulting patent often reads as an inartful representation of the inventor’s hard work.
In some cases, a patent will exaggerate some attributes and downplay or leave out others. For instance (1) a lot of patent applications may focus on technical elements that are the most novel, non-obvious, and broad; and (2) ingenious embodiments of the invention having many clever details may be deemphasized or explained in more general terms. Thus, the resulting patent application can resemble a less flattering caricature of an idea, which the inventor knows deserves better. As a showing of solidarity to the inventors, a less flattering caricature of the author is shown below, in a work by Harry “Dutch” Dresser Jr.
The Patent Application
The Benefit of Many
In the past, the public response to inventors who shared creative new ideas was potentially disastrous, Galileo was arrested and Alan Turing was chemically castrated.⁴ Thankfully today, patent policy seeks to reward the few inventive minds among us with potentially valuable property rights, albeit enshrined in awkward language.
We patent practitioners appreciate these inventors who bring these new ideas into the world so that we all may benefit and are grateful when they tolerate the manner in which we must write.
1. Robert Rines was a lecturer at both the Electrical Engineering Department at M.I.T. and Harvard Law. In 1973, Rines founded Franklin Pierce School of Law to address short-comings with the training of patent lawyers. Rines was also a musician, composing music for Broadway and off-Broadway shows. Nevertheless, Rines is perhaps best known for his efforts to find and identify the Loch Ness Monster.
2. Intellectual property can be justified under Lockean labor theory that maintains that a person has a “natural right” to the fruits of their labor or under Kantian and Hegelian philosophies which recognize an inventor’s right to dominion over his invention, as a product of his will, personality, and freedom, to fully realize their personhood. See Frye, Brian L., A Brief Introduction to United States Intellectual Property (May 11, 2017). Available at SSRN: https://ssrn.com/abstract=2967115 or http://dx.doi.org/10.2139/ssrn.2967115
3. The author, Charles Dresser, is a named inventor on over 170 patent applications and issued patents; he is proud enough to mention it here.
4. Olivia Solon, WIRED, “Galileo to Turing: The Historical Persecution of Scientists,” (June 2012). Available at https://www.wired.com/2012/06/famous-persecuted-scientists/