The teaching function of patents

Notre Dame Law Review

Volumn 85, Issue 2, 2010, Pages 621-669

  Seymore, Sean B ^a  

^a Department of Law ^*  (United States)

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EID: 77950398964     PISSN: 07453515     EISSN: None     Source Type: Journal    
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References (471)

1. The courts often refer to disclosure as the quid pro quo for the inventor's right to exclude. See Pfaff v. Wells Elees., Inc., 525 U.S. 55,63 (1998) ("[T]he patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time.").
2. The statutory disclosure requirement has four parts, which appear in the first and second paragraphs of 35 U.S.C. § 112: The specification shall contain 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, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 U.S.C. § 112 (2006) (emphasis added). A the statute indicates, the key elements of an issued patent (or patent application) are: (1) the written description, which completely describes the invention, and (2) the claims, which define the scope of protection.
3. See id.;
4. McClain v. Ortmayer, 141 U.S. 419, 424 (1891) ("The object of the patent law in requiring the patentee to [distinctly claim his invention] is not only to secure to him all to which he is entitled, but to apprise the public of what is still open to them.");
5. Merrill v. Yeomans, 94 U.S. 568, 573-74 (1876) ("It seems to us that nothing can be more just and fair, both to the patentee and to the public, than that the former should understand, and correctly describe, just what he has invented, and for what he claims a patent").
6. Patent law consists of several branches. Patent prosecution describes the process by which an inventor, usually through the help of an attorney, files an application with the U.S. Patent and Trademark Office (Patent Office) for examination. The application contains essentially the same elements as an issued patent, including a written description, drawings, and claims. The patent prosecutor's interaction with the patent examiner is ex parte. See generally ALAN L. DURHAM, PATENT LAW ESSENTIALS § 5 (3d ed. 2009) (explaining the patent prosecution process). Patent litigation focuses on issued patents. A patent owner whose rights have been infringed can compel an accused infringer to stop the infringing activity and pay for damages arising from the infringement that has already occurred.
7. See id. §11. On the other hand, a potential infringer can launch a "preemptive strike" against the patentee to seek a declaratory judgment that the patent is invalid.
8. Id. Finally, patent licensing allows patent owners to generate royalty income by allowing others to practice the invention.
9. Id. § 6.3
10. See supra note 4;
11. see also Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (explaining that the patent's written description "'is always highly relevant to the claim construction analysis ... [and usually is] dispositive [because] it is the single best guide to the meaning of a disputed [claim] term'"
12. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996))).
13. See Clarisa Long, Patent Signab, 69 U. CHI. L. REV. 625, 647-649 (2002).
14. See, e.g., Edmund W. Kitch, The Nature and Function of the Patent System, 20 J.L. & ECON. 265, 267-271 (1977) (articulating the prospect theory of patent law).
15. CRAIG ALLEN NARD, THE LAW OF PATENTS 50 (2008). Reading patent applications also has practical advantages: Because every patent application contains a complete description of someone's technology, and because patent applications are published, and now appear in on-line databases, you can trawl [through them] for information vital to your own research and development efforts. Why struggle to solve a technical problem already solved by another and published in an application?
16. Anthony Murphy, Intellectual Property, in INNOVATION: HARNESSING CREATIVITY FOR BUSINESS GROWTH 87, 92 (Adam Jolly ed., 2003).
17. Kirin-Amgen Inc. v. Hoechst Marion Roussel Ltd., [2004]
18. UKHL 46, [2005]
19. R.P.C 9 at 1 77 (Hoffmann, L.J.);
20. see also Diane Leenheer Zimmerman, Is There a Right to Have Something to Say? One View of the Public Domain, 73 FORDHAM L. REV. 297, 303 n.23 (2004) ("A patent application must disclose the nature of the invention in detail, and although the public cannot practice the art during the period of the patent, it can use the information disclosed in a variety of other ways.").
21. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 481 (1974) (explaining that as the information disclosed in a patent becomes publicly available it adds to the "general store of knowledge" and, assumedly, "will stimulate ideas and the eventual development of further significant advances in the art");
22. Graham v. John Deere Co., 383 U.S. 1, 6 (1966) (noting that the Intellectual Property Clause of the Constitution, U.S. CONST, art. I, § 8, cl. 8, requires htat patents add to knowledge).
23. Like technical journals, for example, patents show the state of technology, set forth what others have already achieved, and provide technical information that others can avoid repeating. THOMAS T. GORDON & ARTHUR S. COOKFAIR, PATENT FUNDAMENTALS FOR SCIENTISTS & ENGINEERS 51 (2d ed. 2000).
24. For additional similarities, see infra notes 217-219 and accompanying text.
25. See Wesley M. Cohen et al., R&D Spillovers, Patents and the Incentives to Innovate in Japan and the United States, 31 RES. POL'Y 1349, 1362-1364 (2002) (presenting empirical research which shows that among information sources for diffusing research and development, in the United States, patents rank third behind publications and informal information exchange).
26. See infra note 227.
27. See discussion infra Part II.C.4.
28. See infra note 223 and accompanying text.
29. See GORDON & COOKFAIR, supra note 11, at 52. It appears that attitudes are changing in the academy, in part due to decreased federal funding, industrial collaborations, and potential revenue streams from patent licensing.
30. See Sean B. Seymore, The "Printed Publication " Bar After Klopfenstein : Has the Federal Circuit Changed the Way Professors Should Talk About Science?, 40 AKRON L. REV. 493, 499-501 (2007) (discussing the rise and impact of university technology transfer offices).
31. Michael Risch, The Failure of Public Notice in Patent Prosecution, 21 HARV. J.L. & TECH. 179, 213 & n.198 (2007)
32. Edwin H. Taylor & Glenn E. Von Tersch, A Proposal to Shore Up the Foundations of Patent Law that the Underwater Line Eroded, 20 HASTINGS COMM. & ENT. LJ. 721, 737 (1998);
33. see also Note, The Disclosure Function of the Patent System (or Lack Thereof), 118 HARV. L. REV. 2007, 2017-23 (2005). For a broader discussion of the doctrine and its ill effects on the dissemination of knowledge,
34. see FED. TRADE COMM'N, TO PROMOTE INNOVATION 28-31 (2003);
35. Mark A Lemley & Ragesh K. Tangri, Ending Patent Law's Willfulness Game, 18 BERKELEY TECH. L.J. 1085, 1101-02 (2003).
36. See Kimberly A. Moore, Empirical Statistics on Willful Patent Infringement, 14 FED. CIR. B.J. 227, 232 (2004);
37. The Disclosure Function of the Patent System, supra note 17, at 2019.
38. See In re Seagate Tech., 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc) (holding that "proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness").
39. The PHOSITA is a hypothetical construct of patent law akin to the reasonably prudent person standard used in torts. Factors relevant to constructing the PHOSITA in a particular technical field include the sophistication of the technology and the educational level of active workers in the field. See Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983) (listing six factors relevant to a determination of ordinary skill in the art).
40. See, e.g, Mark A Lemley, Ignoring Patents, 2008 MICH. ST. L. REV. 19, 22 n.16 ("[R]esearch suggests that scientists don't in fact gain much of their knowledge from patents, turning instead to other sources.").
41. See The Disclosure Function of the Patent System, supra note 17, at 2025 & n.103
42. (quoting Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy: Hearing Before the Fed. Trade Comm'n 49-50, 53 (Mar. 20, 2002) (statement of Daniel McCurdy)). Unfortunately, there are times when the patentee deliberately provides an inadequate disclosure.
43. See infra note 62.
44. An "embodiment" is a concrete form of an invention (like a chemical compound or a widget) described in a patent application or patent. ROBERT PATRICK MERGES & JOHN FITZGERALD DUFFY, PATENT LAW AND POLICY 26-27 (3d ed. 2002).
45. The specification need not "necessarily describe how to make and use every possible variant of the claimed invention, for the artisan's knowledge of the prior art and routine experimentation can often fill gaps." AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003).
46. See, e.g., Daniel C. Munson, The Patent-Trade Secret Decision: An Industrial Perspective, 78 J. PAT. & TRADEMARK OFF. SOC'Y 689, 713-14 (1996) (observing that chemical patents tend to be "shrouded in chemical nomenclature," which makes them hard to comprehend);
47. The Disclosure Function of the Patent System, supra note 17, at 2022 (explaining that patents "'are notoriously hard to interpret'"
48. (quoting Matthew D. Powers & Steven C. Carlson, The Evolution and Impact of the Doctrine of Willful Patent Infringement, 51 SYRACUSE L. REV. 53, 102 (2001))). Peer-reviewed scientific publications have faced similar criticisms, but the journals are taking steps to tackle the problem.
49. See, e.g., Jonathan Knight, Clear as Mud 423 NATURE 376, 376-78 (2003) (describing various efforts to help scientists improve their manuscripts).
50. Cf. Martin W. Gregory, Commentary, The Infectiousness of Pompous Prose, 360 NATURE 11, 12 (1992) (making a similar argument for scientific journal articles).
51. Several commentators contend that licensing to non-inventors works best when the technical information disclosed in the patent is understandable. See, e.g., SCOTT SHANE, ACADEMIC ENTREPRENEURSHIP 111 (2004). When it is not, potential licensees might seek to involve the inventor in the contracting relationship to gain access to the latter's know-how or tacit knowledge.
52. See Ashish Arora, Contracting for Tacit Knowledge: The Provision of Technical Services in Technology Licensing Contracts, 50 J. DEV. ECON. 233, 246 (1996);
53. Dan L. Burk, The Role of Patent Law in Knowledge Codification, 23 BERKELEY TECH. L.J. 1009, 1021 (2008).
54. There is a limited amount of scholarship which addresses patent disclosure issues. See, e.g., Jeanne C. Fromer, Patent Disclosure, 94 IOWA L. REV. 539, 563-94 (2009) (proposing a two-layered patent document consisting of a technical layer and a legal layer);
55. Timothy R. Holbrook, Possession in Patent Law, 59 SMU L. REV. 123, 131-46 (2006) (arguing that disclosure plays a limited role in patent theory);
56. Katherine J. Strandburg, Users as Innovators: Implications for Patent Doctrine, 79 U. COLO. L. REV. 467, 485-88 (2008) (arguing that disclosure is not an issue when the invention is self-disclosed through commercialization);
57. The Disclosure Function of the Patent System, supra note 17, at 2013-2017 (contending that the patent system fails in its mission to disseminate information).
58. See generally Sean B. Seymore, Heightened Enablement in the Unpredictable Arts, 56 UCLA L. REV. 127 (2008) (analyzing the enablement inquiry that is essential to the disclosure requirement).
59. See, e.g., Gould v. Quigg, 822 F.2d 1074,1078 (Fed. Cir. 1987) ("'The mere fact that something has not previously been done clearly is not, in itself, a sufficient basis for rejecting all applications purporting to disclose how to do it'"
60. (quoting In re Chilowsky, 229 F.2d 457, 461 (CCPA 1956))).
61. Conception, often referred to as the "touchstone" of inventorship, is the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." 1 ROBINSON ON PATENTS 532 (1890);
62. see also Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-1228 (Fed. Cir. 1994) ("Conception is 'the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention . . . .'")
63. (quoting Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986))).
64. See Pfaff v. Wells Elees., Inc., 525 U.S. 55, 60 (1998) (explaining that "the word 'invention' in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea").
65. See 35 U.S.C. § 112 (2006).
66. Hybritech, 802 F.2d at 1376. Although the term "undue experimentation" does not appear in the statute, "it is well established that enablement requires that the specification teach those in the art to make and use the invention without undue experimentation."
67. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
68. Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1377 (Fed. Cir. 2003) (Newman, J., dissenting).
69. See, e.g., Elan Pharms., Inc. v. Mayo Found., 346 F.3d 1051, 1055 (Fed. Cir. 2003) ("'Even the act of publication or the fiction of constructive reduction to practice will not suffice if the disclosure [is inadequate].'"
70. (quoting In re Borst, 345 F.2d 851, 855 (CCPA 1965))). Nonetheless, the Federal Circuit regularly reiterates that constructive reduction to practice is an established method of disclosure, even in the experimental sciences.
71. See Falkner v. Inglis, 448 F.3d 1357,1366-1367 (Fed. Cir. 2006);
72. Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 926 (Fed. Cir. 2004).
73. Dan L. Burk & Mark A Lemley, Is Patent Law Technology-Specific?, 17 BERKELEY TECH. L.J. 1155, 1174 n.77 (2002).
74. Id.
75. See William D. Noonan, Patenting Medical Technology, 11 J. LEGAL MED. 263, 264-269 (1990) (presenting a historical perspective of the patent system's bias toward inventions in applied technologies like mechanical engineering).
76. The courts refer to the experimental sciences as " unpredictable" because PHOSITA in these fields often cannot predict if a reaction protocol that works for one embodiment will work for others. See infra note 113 and accompanying text. On the other hand, inventions in applied technologies like electrical and mechanical engineering are often regarded as "predictable" arts because they are rooted in welldefined, predictable factors. For a deeper exploration of the predictable-unpredictable dichotomy, see Seymore, supra note 29, at 136-54;
77. Sean B. Seymore, The Enablement Pendulum Swings Back, 6 Nw. J. TECH. & INTELL. PROP. 278, 282-284 (2008).
78. See, e.g., In re Gardner, 427 F.2d 786, 789 (CCPA 1970) (determining that applicant's disclosure, which lacked a single specific example or embodiment, fell into the category of "an invitation to experiment" in order to determine how to make use of the alleged invention). The U.S. Court of Customs and Patent Appeals (CCPA) was a predecessor to the Federal Circuit. The Federal Courts Improvement Act of 1982 abolished the CCPA
79. See Pub. L. No.97-164, 96 Stat. 25 (1982) (codified as amended in scattered sections of 28 U.S.C). Soon after its creation, the
80. Federal Circuit adopted the C.C.P.A. decisional law as binding precedent
81. See South Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc).
82. Christopher A Harkins, Fending Off Paper Patents and Patent Trolls: A Novel "Cold Fusion" Defense Because Changing Times Demand It, 17 ALB. L.J. SCI. & TECH. 407, 453 (2007).
83. See In re Epstein, 32 F.3d 1559, 1570 (Fed. Cir. 1994) (Plager, J., concurring);
84. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992);
85. In re Marzocchi, 439 F.2d 220, 223-24 (C.C.P.A. 1971).
86. U.S. PATENT & TRADEMARK OFFICE, DEP'T OF COMMERCE, MANUAL OF PATENT EXAMINING PROCEDURE § 2164.04 (8th ed. 2001, rev. 2008)
87. [hereinafter MPEP], available at http://www.uspto.gov/web/offices/pac/ mpep/mpep.htm.
88. The MPEP provides guidance to patent examiners. While the MPEP does not have the force of law, it is entided to judicial notice as the Patent Office's official interpretation of statutes and regulations.
89. Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995).
90. UMC Elees. Co. v. United States, 816 F.2d 647, 664-65 (Fed. Cir. 1987) (Smith, J., dissenting) (emphasis added),
91. abrogated by Pfaff v. Wells Elees., Inc., 525 U.S. 55 (1998).
92. Id. at 665. A "paper patent" refers to a patent issued for an invention that has not been actually reduced to practice.
93. See In re Holladay, 584 F.2d 384, 386 (C.C.P.A. 1978).
94. See In re Argoudelis, 434 F.2d 1390, 1394 (C.C.P.A. 1970) (Baldwin, J., concurring) (explaining that the full and complete disclosure of how to make and use the claimed invention "adds a measure of worthwhile knowledge to the public storehouse");
95. cf. Ad. Works v. Brady, 107 U.S. 192, 200 (1882) ("The design of the patent laws is to reward those who make some substantial discovery or invention, which adds to our knowledge.... It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea ....").
96. See In re Borkowski, 422 F.2d 904,908 (C.C.P.A. 1970) (explaining that there is no statutory basis for a working example requirement);
97. In re Long, 368 F.2d 892, 894-95 (C.C.P.A. 1966) (same).
98. Holbrook, supra note 28, at 158;
99. see also MPEP, supra note 44, at § 608.01 (p) (permitting the use of prophetic examples). The key benefit of prophetic examples is their use in provisional patent applications, which allows an applicant to obtain an early filing date for the invention before the applicant is ready to draft a claim or a full application.
100. See 35 U.S.C. § 111 (2006). But the provisional application must include a written description which satisfies the requirements of § 112.
101. See New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002).
102. See Atlas Powder Co. v. E.I. Du Pont de Nemours & Co., 750 F.2d 1569, 1577 (Fed. Cir. 1984). Patentees must set forth prophetic examples in the present tense to signal that they were not carried out.
103. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1376 n.1 (Fed. Cir. 2003)
104. (citing Atlas Powder, 750 F.2d at 1578).
105. See Seymore, supra note 29, at 144 46.
106. The courts recognized long ago that chemical compounds that are similar in structure can differ radically in their properties, even when they belong to the same chemical class. If an applicant seeks to claim the class, "it must appear in the [written description]... that the chemicals or chemical combinations included therein [are] generally capable of accomplishing the desired result." In re Walker, 70 F.2d 1008, 1011 (C.C.P.A. 1934) (internal quotation marks omitted).
107. The "written description" requirement of § 112 ensures that the applicant was in possession of the invention as of the filing date.
108. See Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005) (noting that the written description requirement "serves both to satisfy the inventor's obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention that is claimed");
109. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (explaining that the written description must convey with "reasonable clarity" to the PHOSITA that the applicant possessed the claimed invention as of the filing date sought). An actual reduction to practice is one way to show possession.
110. See Guidelines for Examination of Patent Applications Under the 35 U.S.C. 112, ¶ 1, "Written Description" Requirement, 66 Fed. Reg. 1099, 1105 (Jan. 5, 2001);
111. see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (listing additional ways to show possession). A with enablement, compliance with the written description requirement does not turn on the use of prophetic examples.
112. See, e.g., Ariad Pharms., Inc. v. Eli Lilly & Co., 560 F.3d 1366,1375 (Fed. Cir. 2009) ("Prophetic examples are routinely used in the chemical arts, and they certainly can be sufficient to satisfy the written description requirement"), vacated 2009 WL 2573004 (Fed. Cir. Aug. 21, 2009).
113. According to the Federal Circuit, claims are not necessarily invalid if they encompass inoperative embodiments because "'[i]t is not a function of the claims to specifically exclude... possible inoperative substances.'" Atlas Powder, 750 F.2d at 1576 (quoting In re Dinh-Nguyen, 492 F.2d 856, 858-59 (C.C.P.A. 1974)).
114. But, "if the number of inoperative [embodiments] becomes significant, and in effect forces [a PHOSITA] to experiment unduly in order to practice the claimed invention, the claims might indeed be invalid."
115. Id. at 1576-77;
116. see also Duřel Corp. v. Osram Sylvania Inc., 256 F.3d 1298, 1306-07 (Fed. Cir. 2001) (determining that if the accused infringer shows that a "significant percentage" of embodiments encompassed by the claims are inoperable, that might be sufficient to prove invalidity).
117. Harkins, supra note 42, at 453;
118. Holbrook, supra note 28, at 158. To make matters worse, the prophetic examples themselves can be asserted as prior art against future inventors.
119. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) ("In patent prosecution the examiner is entitied to reject application claims as anticipated by a prior art patent without conducting an inquiry into whether or not [the subject matter disclosed in the] patent is enabled....");
120. Seymore, supra note 29, at 145;
121. see also discussion infra Part III A (discussing the drawbacks of undue patent scope on ex post improvement activity).
122. See, e.g., Brenner v. Manson, 383 U.S. 519, 534 (1966) (referring to drafting as a "highly developed art"). Only registered patent attorneys and agents may draft patent applications.
123. See Changes to Representation of Others Before the United States Patent and Trademark Office, 73 Fed. Reg. 47,650 (Aug. 14, 2008) (to be codified at 37 C.F.R. pt 11).
124. The Supreme Court has recognized the difficulty of transforming an invention into words: "An invention exists most importantly as a tangible structure or a series of drawings. A verbal portrayal is usually an afterthought written to satisfy the requirements of patent law. This conversion of machine to words allows for unintended idea gaps which cannot be satisfactorily filled. Often the invention is novel and words do not exist to describe it.... Things are not made for the sake of words, but words for things."
125. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002)
126. (quoting Autogiro Co. of Am. v. United States, 384 F.2d 391, 397 (Ct Cl. 1967)).
127. Claims are of little value unless they can ensnare or deter a potential infringer. Patentees achieve this goal by obtaining broad claims which cover "all expected and unanticipated [variants] that competitors and others may later develop and all intentional and unintentional copies of the claimed invention which embody the inventor's concept" ROBERT C FABER, LANDIS ON MECHANICS OF PATENT CLAIM DRAFTING § 10:1.1 (5th ed. 2006). Thus, the claims must cover not only competing products envisioned at the time of filing, but also competing products that the patentee could barely imagine which employ the concept of the invention.
128. See id.;
129. George F. Wheeler, Creative Claim Drafting Claim Drafting Strategies, Specification Preparation, and Prosecution Tactics, 3 J. MARSHALL REV. INTELL. PROP. L. 34, 38-40 (2003).
130. The written description is the part of the patent (or patent application) that completely describes the invention. See 35 U.S.C. § 112 (2006) ("The specification shall contain a written description.... It shall conclude with one or more claims ...."). Although I will not do so in this Article, it is worth noting that the terms "written description" and "specification" are often used interchangeably (and mistakenly) in patent law.
131. DONALD S. CHISUM ET AL., PRINCIPLES OF PATENT LAW 156 n.4 (3d ed. 2004).
132. It is a bedrock principle of patent law that claims are construed in light of the written description.
133. See Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 547 (1870);
134. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-81 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996).
135. Although patentese often appears throughout the patent document, this Article focuses on its use in the written description.
136. See Brenner v. Manson, 383 U.S. 519, 534 (1966) (explaining that the patentee has an incentive to withhold information, which can be achieved through "the highly developed art of drafting patent [documents] so that they disclose as little useful information as possible.");
137. WILLIAM D. NORDHAUS, INVENTION, GROWTH, AND WELFARE 89 (1969) ("It is well known that a firm tries not to disclose key parts of the invention in order to reduce the chance of imitation, thereby reducing the effective diffusion of knowledge.");
138. see also Rebecca S. Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56 U. CHI. L. REV. 1017, 1029 & n.52 (1989) (suggesting that many published patents are of little use to others as a result of information suppression);
139. Robin Feldman, Plain Language Patents, 17 TEX. INTELL. PROP. L.J. 289, 291-92 (2009) ("Jargon is also the perfect vehicle for strategic behavior. It allows legal actors to use broad open-ended language and then argue later that whatever position they wish surely falls within the language chosen.").
140. See 35 U.S.C. § 112 (2006).
141. In re Sarett, 327 F.2d 1005, 1006 (C.C.P.A. 1964).
142. O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1854);
143. Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999);
144. see also In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983) (emphasizing that § 112 requires that "the enabling disclosure... be commensurate in scope with the claim under consideration").
145. See In re Moore, 439 F.2d 1232, 1236 (C.C.P.A. 1971) (referring to this test as the relevant enablement inquiry);
146. cases cited supra note 65. The scope of enablement is the sum of what is taught in the written description plus what is known by a PHOSITA without undue experimentation. Nat'l Recovery Techs., 166 F.3d at 1196. As I discuss below, one result of the proposal might be a shift toward narrower claiming. In other words, there will likely be a closer correspondence between the disclosed embodiments and the claim scope sought. For example, applicants in the chemical arts will be less inclined to draft claims encompassing millions or billions of compounds because it is unlikely that the disclosure will include enough working examples to enable claims of that breadth.
147. See Seymore, supra note 40, at 292.
148. See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993).
149. U.S. Patent No. 7,249,538 col. 2 11. 62-70 (filed Aug. 16, 2005).
150. See Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000) (explaining that one purpose of examining the written description is to determine if the patentee has limited the scope of the claims). In addition, patentees must be mindful of the disclosure-dedication rule.
151. See discussion infra Part III.C.
152. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (describing instances where the court interprets a claim more narrowly than it other-wise would to give effect to the inventor's intent to disavow a broader claim scope).
153. See, e.g, Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1380-82 (Fed. Cir. 2000) (affirming summary judgment of noninfringement);
154. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998) (determining that a written description which recited that " [an] extremely important aspect of the present device resides in the configuration of the acetabular cup as a trapezoid or a portion of a truncated cone" only supported conical shaped cups and not the broad cup shape recited in the claims)
155. (quoting U.S. Patent No. 4,681,589 col. 3 1. 63 (filed June 1, 1984));
156. Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 141 F.3d 1084, 1090-91 (Fed. Cir. 1998) (holding that if the written description clearly emphasizes the importance of a specific function, and the accused device is incapable of performing that function, then there can be no infringement);
157. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) (determining that a written description indicating the central location of controls and lacking any variation of their position implicitly indicated that the central location was essential).
158. Specific examples include words like "critical," "superior," "preferably," "must," "important," "peculiar," and "significant."
159. See Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1252-54 (Fed. Cir. 2000) (collecting cases and providing examples of words that serve as a clear and unmistakable surrender of subject matter).
160. For a detailed exploration of "patent profanity," see Allen R. Jensen & Stacy D. Lewis, Patent Profanity: Watch Your Mouth!, PAT. WORLD, Feb. 2002.
161. See, e.g., Inpro II Licensing, S.AR.L. v. T-Mobile USA, Inc., 450 F.3d 1350, 1356-57 (Fed. Cir. 2006) (affirming the district court's narrow construction of the term "host interface" in a claim directed to a PDA device);
162. Atrazeneca AB v. Mutual Pharm. Co., 384 F.3d 1333, 1340 (Fed. Cir. 2004) (explaining that when the written description describes a feature of the invention and criticizes other products that lack that same feature, this operates as a clear disavowal of the other products and processes using these products);
163. SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344-45 (Fed. Cir. 2001) (affirming a district court's narrow claim construction because the written description specifically identified and criticized the prior art device, thereby disclaiming the subject matter);
164. Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997) (noting that characterizing the invention over the prior art often, by implication, indicates what the claims do not cover and, therefore, surrenders protection).
165. See, e.g., J & M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360, 1362-68 (Fed. Cir. 2001) (determining that patentee's statements in the written description that the claimed invention avoided problems of the prior art served as a disclaimer of subject matter).
166. On one hand, the patent rules say that the tide of the invention "must be as short and specific as possible." 37 C.F.R. § 1.72 (2009).
167. Nonetheless, in Exxon Chemical Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553 (Fed. Cir. 1995), the Federal Circuit used the patent's tide, "Lubricating Oil Compositions Containing Ahless Dispersant, [ZDDP], Metal Detergent and a Copper Compound," to support its holding that the claim should cover a specific product with particularly defined ingredients.
168. See id. at 1557-58. A few years later, Chief Judge Michel attempted, at great lengths, to confine Exxon to its facts.
169. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1312-13 (Fed. Cir. 1999). Not surprisingly, the patent bar remains cautious.
170. See 1 IRAH H. DONNER, PATENT PROSECUTION § 1.V (5th ed. 2007).
171. See The Disclosure Function of the Patent System, supra note 17, at 2014-28. Notwithstanding the disclosure requirements of § 112, many patentees adopt the view that the written description does not define the invention but rather provides examples or embodiments of the invention. For instance, rather than using language which explicitly describes what "the invention" is, a savvy drafter would say something like: "In an embodiment, one aspect of the invention relates to...."
172. See Wheeler, supra note 58, at 43.
173. Ch. 230, § 26, 16 Stat 198, 201 (codified as amended at 35 U.S.C. § 171 (2006))
174. In central claiming, there is a close correlation between the working embodiments disclosed and the embodiments that are claimed.
175. See Alan L. Durham, Patent Symmetry, 87 B.U. L. REV. 969, 982 (2007);
176. C. Leon Kim, Transition from Central to Peripheral Definition Patent Claim Interpretation System in Korea, 77 J. PAT. & TRADEMARK OFF. SOC'Y 401, 402-03 (1995) (describing the central claiming regime);
177. Toshiko Takenaka, Doctrine of Equivalents After Hilton Davis : A Comparative Law Analysb, 22 RUTGERS COMPUTER & TECH. L.J. 479, 503 (1996) (noting that under the central claiming regime, the claim merely identified examples of the invention). So, in contrast to peripheral claiming, central claiming "requires that the scope of the patent protection be determined by defining the principle forming the inventive idea or solution underlying the claim language."
178. TOSHIKO TAKENAKA, INTERPRETING PATENT CLAIMS: THE UNITED STATES, GERMANY AND JAPAN 3 (1995). When the patent is enforced, the "[c]ourts use the wording of the claims as a guideline to determine the scope of protection, but are not strictly bound by claim limitations."
179. Id.
180. The 1870 Act introduced the requirement to "particularly point out and distinctly claim the part... which [the applicant] claims." Patent Act of 1870 § 26, 16 Stat at 201;
181. see also Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989) (explaining that the claim provides the metes and bounds of the patentee's right to exclude).
182. For an in-depth discussion of the transition from central to peripheral claiming, see Ex Parte Fressola, 27 U.S.P.Q2d 1608, 1609-11 (B.P.A.I. 1993).
183. Kim, supra note 78, at 404;
184. see also Dan L. Burk & Mark A. Lemley, Quantum Patent Mechanics, 9 LEWIS & CLARK L. REV. 29, 53-54 (2005) (discussing the shortcomings of peripheral claiming);
185. Clarisa Long, Information Costs in Patent and Copyright, 90 VA. L. REV. 465, 542 & n.187 (2004) (recognizing that applicants deliberately build ambiguity into the patent document);
186. Douglas R. Nemec & Emily J. Zelenock, Rethinking the Role of the Written Description Requirement in Claim Construction: Whatever Happened to "Possession b Nine-Tenths of the Law?, "8 MINN. J. L. SCI. & TECH. 357, 406 (2007) (contending that in spite of the statutory mandate that a patentee's exclusive rights extend only to the clearly described subject matter of his claim, "current claim construction practice allows the patentee to unfairly benefit from incomplete, unclear, and imprecise descriptions of its own invention since such descriptions are less likely to be construed to represent unequivocal narrowing language").
187. R. Carl Moy, Subjecting Rembrandt to the Rule of Law: Rule-Based Solutions for Determining the Patentability of Business Methods, 28 WM. MITCHELL L. REV. 1047, 1082 (2002) (internal citations omitted);
188. cf. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002) ("Unfortunately, the nature of language makes it impossible to capture the essence of a thing in a patent application. The inventor who chooses to patent an invention and disclose it to the public, rather than exploit it in secret, bears the risk that others will devote their efforts toward exploiting the limits of the patent's language....").
189. See Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). Several commentators have criticized this weak standard.
190. See Michael J. Meurer & Craig Allen Nard, Invention, Refinement and Patent Claim Scope: A New Perspective on the Doctrine of Equivalents, 93 GEO. L.J. 1947, 1975-78 (2005) (exploring drafting strategies that preserve claim scope);
191. Samson Vermont, Taming the Doctrine of Equivalents in Light of Patent Failure, 16 J. INTELL. PROP. L. 83, 85 (2008) (arguing that the standard should be changed to "something along the lines of 'not particular and distinct.'"
192. (quoting Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1340 (Fed. Cir. 2003)).
193. See The Disclosure Function of the Patent System, supra note 17, at 2025-26. As a normative matter, this claiming practice runs afoul of the definiteness requirement of § 112, whose primary purpose is to provide notice to others and "to guard against unreasonable advantages to the patentee and disadvantages to others arising from uncertainty as to their [respective] rights."
194. Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 (1938). If the ambiguous claim has at least two reasonable meanings, the court may choose to adopt a narrow meaning, which is unfavorable to the patentee.
195. See Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996). If the language is unintelligible, the court may invalidate the claim under § 112.
196. See Craig Allen Nard, A Theory of Claim Interpretation, 14 HARV. J.L. & TECH. 1, 81 (2000)
197. (citing Athletic Alternatives, 73 F.3d at 1583 (Nies, J., concurring)).
198. Id.
199. See Holbrook, supra note 28, at 146 (explaining that patents may even encourage disclosure through pre-patent disclosures and publications).
200. See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993).
201. During prosecution, the examiner must prove nonenablement because the disclosure is presumed sufficient In re Marzocchi, 439 F.2d 220, 224 (C.C.P.A. 1971) ("[I]t is incumbent upon the Patent Office, whenever [an enablement] rejection... is made, to explain why it doubts the truth or accuracy of any statement in a supporting disclosure and to back up assertions of its own with acceptable evidence or reasoning which is inconsistent with the contested statement");
202. see also In re Budnick, 537 F.2d 535, 537 (C.C.P.A. 1976) ("Where an applicant asserts that a specification [is enabled]... but the examiner is of the opinion that the disclosure is nonenabling, he has the burden of substantiating his doubts concerning enablement with reasons or evidence.").
203. Since an issued patent is presumed valid, see 35 U.S.C. § 282 (2006), the challenger must prove nonenablement by clear and convincing evidence.
204. See Morton Int'l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464,1470 (Fed. Cir. 1993). In addition, the presumption of validity remains intact and the burden of proof remains on the challenger throughout the litigation, and the clear and convincing standard does not change.
205. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375 (Fed. Cir. 1986).
206. See supra note 62.
207. A the late Chief Judge Helen Nies once pointed out, "We have made the infringement analysis so convoluted [that] it is impossible for most district court judges untrained in 'patentese' to follow, much less jurors." Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1563 (Fed. Cir. 1995) (Nies, J., dissenting), rev'd sub nom.
208. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997).
209. For a trial judge's perspective, see Rexnord, Inc. v. Laitram Corp., 628 F. Supp. 467, 473 (E.D. Wis. 1986) (admitting that while the court has expertise in discovering truth based on the actions of litigants, "its expertise in ascertaining truth from technical patent documents is not as glowing").
210. See A Panel Discussion: Claim Construction from the Perspective of the District Judge, 54 CASE W. RES. L. REV. 671, 682 (2004) ("I have heard trial judges claim that they dislike patent litigation, partly because it is hard. Patent litigation is like the neurosurgery of litigation: it is hard scientifically and it is hard legally.") (statement of Judge Patti Saris);
211. Janice M. Mueller, Crafting Patents For The Twenty-First Century: Maximize Patent Strength and Avoid Prosecution History Estoppel in a Post-Markman /Hilton Davis World, 79 J. PAT. & TRADEMARK OFF. SOC'Y 499, 503 (1997) (presenting several reasons for the judicial dislike of patent cases);
212. Edited & Excerpted Transcript of the Symposium on Ideas Into Action: Implementing Reform of the Patent System, 19 BERKELEY TECH. L.J. 1053, 1108-09 (2004) (statement of Lynn Pasahow) (describing how some judges hate to hear patent cases and try to devote as little time to them as possible).
213. See, e.g., ADVISORY COMM'N ON PATENT LAW REFORM, A REPORT TO THE SECRETARY OF COMMERCE 107-10 (1992) (exploring arguments for and against jury trials in patent cases);
214. Kimberly A. Moore, Jury Demands: Who's Asking?, 17 BERKELEY TECH. L.J. 847, 852 (2002) ("If juries are unable to understand the technology or apply the law, their decisions will be based on less meritorious influences such as bias, likeability, or emotion.");
215. Philippe Signore, On the Role of Juries in Patent Litigation (Part 1), 83 J. PAT. & TRADEMARK OFF. SOC'Y 791, 824-29 (2001) (discussing juror competence in patent cases).
216. For a trial judge's perspective, see Judicial Panel Discussion on Science and the Law, 25 CONN. L. REV. 1127, 1145 (1993) ("Honest to God, I don't see how you could try a patent matter to a jury. Goodness, I've gotten involved in a few of these things. It's like somebody hit you between your eyes with a four-by-four. It's factually so complicated."
217. (statement of Judge Alfred V. Covello)).
218. See generally Jack E. Brown, The Advantages and Disadvantages of Juries in Technical Cases, 9 SANTA CLARA COMPUTER & HIGH TECH. L.J. 403 (1993) (arguing that juries are capable of handling complex, technical cases, and suggesting procedural improvements);
219. Kimberly A. Moore, Judges, Juries, and Patent Cases - An Empirical Peek Inside the Black Box, 99 MICH. L. REV. 365 (2000) (using empirical data to assess the relative competitiveness of judges and juries in patent cases);
220. Arti K Rai, Specialized Trial Courts: Concentrating Expertise on Fact, 17 BERKELEY TECH. L.J. 877 (2002) (advocating for the creation of a patent trial court).
221. Thermo King Corp. v. White's Trucking Serv., Inc., 292 F.2d 668, 675 (5th Cir. 1961). Athough the judge was commenting on claim language, his remarks are also applicable to the language in the written description.
222. Cf. Aghnides v. F. W. Woolworth Co., 335 F. Supp. 370, 379 (D.C. Md. 1971) ("[I]t is... beneficial in patent cases to strip away the shroud of jargon ... in order to see the legal issues involved."),
223. aff'd mem., 475 F.2d 1399 (4th Cir. 1973).
224. See, e.g., George Gore, On Practical Scientific Instruction, 7 Q. J. SCI. 215, 228 (1870) (asserting that one who teaches a technical subject must teach with examples which should be full of practical applications and familiar illustrations).
225. See generally VERNON BOOTH, COMMUNICATING IN SCIENCE (2d ed. 1993) (communicating the importance of science writing);
226. ROBERT A. DAY & BARBARA GASTEL, How TO WRITE AND PUBLISH A SCIENTIFIC PAPER (6th ed. 2006) (same).
227. Mazzari v. Rogan, 323 F.3d 1000, 1005 (Fed. Cir. 2003)
228. (citing Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998)).
229. See 35 U.S.C. § 112 (2006);
230. discussion supra Part I.B.2.
231. See Moy, supra note 81, at 1081.
232. See discussion supra Part I.B.2 (discussing the current disclosure regime).
233. A patent holder can prove infringement in either of two ways: by demonstrating that every element of a claim (1) is literally infringed or (2) is infringed under the judicially created doctrine of equivalents (DOE). Literal infringement requires that the accused product or process falls precisely within the terms of the asserted patent claim.
234. See Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1405 (Fed. Cir. 1996). The DOE recognizes that in order to adequately protect a patentee, sometimes it is appropriate to extend the right to exclude beyond the literal boundaries of the claim.
235. See Graver Tank & Mfg. Co. v. Linde Ar Prods. Co., 339 U.S. 605, 609 (1950). Thus, the DOE allows a patentee "to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes."
236. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002).
237. The DOE emerged under the central claiming regime. See Winans v. Denmead, 56 U.S. (15 How.) 330, 342 (1854) (explaining that a patentee intends to claim not only the precise embodiment disclosed, but other forms which embody the invention);
238. TAKENAKA, supra note 78, at 9-10.
239. The patent statute permits the examiner to request a working model of an invention. See 35 U.S.C. § 114 (2006) ("The Director may require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention."). In cases where the invention involves a composition of matter, the Director "may require the applicant to furnish specimens or ingredients for the purpose of inspection or experiment."
240. Id. Curiously, the Patent Act of 1836, ch. 356, § 6, 5 Stat. 117 (amended 1839), required applicants to submit models at the time of filing.
241. See also In re Breslow, 616 F.2d 516, 522 (C.C.P.A. 1980) (recounting the history of the requirement). The Patent Act of 1870 made the submission of models discretionary.
242. See Patent Act of 1870 §§28-29, ch. 230, §§28-29, 16 Stat 198;
243. In re Breslow, 616 F.2d at 522. In practice, the examiner only requests a working model in extreme cases where an invention defies fundamental laws of science and inoperativeness is incredibly clear.
244. See 37 C.F.R. § 1.91(b);
245. MPEP, supra note 44, § 608.03.
246. For specific examples, see generally Newman v. Quigg, 877 F.2d 1575 (Fed. Cir. 1989) (perpetual motion machine);
247. Patendy-O, http://patentlyo.com/patent/2006/02/pto-requests-mo.html (Feb. 19, 2006, 05:58 CST) (discussing the file history for the Worsley-Twist warp drive, U.S. Patent No. 182,373 (filed Oct. 25, 2002) (abandoned Jul. 20, 2006)). Although this proposal does not go as far as §114, it is similar in that it too requires an actual reduction to practice. More importantly, a working example requirement probably falls within the Patent Office's statutory authority.
248. Cf. Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997) ("[Reasonable detail must be provided in order to enable members of the public to understand and carry out the invention.");
249. discussion infra Part II.B.
250. This would, of course, require the Federal Circuit and the Patent Office to adopt a more flexible view of what constitutes "new matter." To elaborate, when an applicant amends the written description, the Patent Office instructs examiners to be on the alert for "new matter."
251. See 35 U.S.C. § 132(a) (2006) ("No amendment shall introduce new matter into the disclosure of the invention.");
252. C.F.R. § 1.121;
253. MPEP, supra note 44, § 706.03(o) (alerting examiners). The new matter prohibition of 35 U.S.C. § 132 and its corollary, the written description requirement of 35 U.S.C. § 112, "both serve to ensure that the patent applicant was in full possession of the claimed subject matter on the application filing date."
254. TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001).
255. Schering Corp. v. Amgen Inc., 222 F.3d 1347, 1352 (Fed. Cir. 2000);
256. accord TurboCare, 264 F.3d at 1118. Exacdy what constitutes new matter must be determined on a case-by-case basis. In re Oda, 443 F.2d 1200, 1203 (C.C.P.A. 1971).
257. One might ask if the amendment would unfairly give the applicant a "second bite at the apple" with respect to compliance with § 112.
258. See In re Hogan, 559 F.2d 595, 604 (C.C.P.A. 1977) (explaining that compliance with enablement is gauged as of the applicant's effective filing date). Possibly, but as discussed in the main text, this examination protocol is designed to strike a balance between early disclosure and the need to transform the patent into a substantive technical document which can itself promote innovation.
259. See infra Part III.A. If anything, allowing the amendment would yield claims that are certainly narrower than those that would likely issue under the current regime because the added working examples themselves will further constrain claim scope.
260. See discussion supra Part IIAl;
261. supra note 42 and accompanying text.
262. This may ultimately lead to narrower claiming and, possibly, to patenting strategies which involve prosecuting smaller, discrete applications. See Seymore, supra note 40, at 290 (suggesting that a series of recent Federal Circuit enablement cases may induce this result).
263. See In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991) (noting that the requisite level of disclosure for an invention involving a " predictable" factor such as a mechanical or electrical element is less than that required for the unpredictable arts).
264. See U.S. Patent No. 3,078,652 (filed Sept 1, 1961).
265. See generally R. A KEPNER ET AL., PRINCIPLES OF FARM MACHINERY (3d ed. 1978) (discussing agricultural machinery).
266. Cf. Slip Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1265 (Fed. Cir. 2002) (recognizing that proof that an invention works for its intended purpose is not required in certain cases because "'[s]ome devices are so simple and their purpose and efficacy so obvious that their complete construction is sufficient to demonstrate their workability'"
267. (quoting E. Rotorcraft Corp. v. United States, 384 F.2d 429, 431 (Ct Cl. 1967)).
268. See Karen S. Canady, The Wright Enabling Disclosure for Biotechnology Patents, 69 WASH. L. REV. 455, 458 (1994);
269. see also Cedarapids, Inc. v. Nordberg, Inc., No. 95-1529, 1997 WL 452801 at *2 (Fed. Cir. Aug. 11, 1997) (explaining that in the chemical arts, "a slight variation... can yield an unpredictable result or may not work at all.");
270. In re Prutton, 200 F.2d 706, 712 (C.C.P.A. 1952) (holding that claims to a class of chemical compounds, which were sufficiently broad to involve some speculation, lack enablement, notwithstanding the presence of the operative specific examples within the class);
271. DAN L. BURK & MARK A LEMLEY, THE PATENT CRISIS & How THE COURTS CAN SOLVE IT 115 (explaining that if the art is uncertain, "the court will be inclined to require greater disclosure to satisfy the requirements of § 112, and correspondingly narrow the scope of claims permissible for any given disclosure").
272. But see Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1374 n.10 (Fed. Cir. 1999) ("In view of the rapid advances in science, we recognize that what may be unpredictable at one point in time may become predictable at a later time."). Since enablement is closely tied to the PHOSITA's identity, this helps to explain why it is a shifting, unstable doctrine.
273. See Holbrook, supra note 28, at 176.
274. See Seymore, supra note 29, at 138.
275. See generally Herbert H. Goodman, The Invalidation of Generic Claims by Inclusion of a Small Number of Inoperative Species, 40 J. PAT. OFF. SOC'Y 745 (1958) (oudining several problems which arise in drafting chemical claims involving inductive reasoning from limited examples).
276. Chiron Corp. v. Genentech, Inc., 363 F.3d 1247,1254 (Fed. Cir. 2004);
277. see also In re Strahilevitz, 668 F.2d 1229,1232 (C.C.P.A. 1982) (explaining that working examples are desirable in complex technologies).
278. See In re Driscoll, 562 F.2d 1245, 1249 (C.C.P.A. 1977) (explaining that the practice of describing a class of chemical compounds in terms of structural formulas, where the substituents are recited in the claim language, has been sanctioned by the courts). This style of claiming is called Markush practice.
279. See In re Harnisch, 631 F.2d 716, 719-20 (C.C.P.A. 1980) (explaining the history and current law of Markush practice).
280. For an example of this style of claiming, see U.S. Patent No. 4,801,613 (filed June 17, 1987) [hereinafter '613 patent]. Claim 1 of the '613 patent refers to "[a] modified bradykinin type peptide having the formula A-Arg-B-C-D-W-X-Y-Z-Arg," where the variables A B, C, D, W, X, Y, Z are each generic substructures reciting smaller peptides or amino acids. Thus, the primary generic structure contains eight smaller generic substructures.
281. See id. cols. 19-20, II. 21- 41. Al together, this claim covers 10,235,904 formulations of a peptide.
282. For an extreme example, see generally U.S. Patent No. 5,422,351 (filed June 21, 1991) (including a structural formula in claim 1 which encompasses at least one novemdecillion (which is ten followed by sixty zeroes) chemical compounds).
283. See BRADLEY C. WRIGHT, DRAFTING PATENTS FOR LITIGATION AND LICENSING 457 (2008) (advising drafters of chemical patent applications to provide adequate support for claims that often covers billions of species).
284. A functional group is a group of atoms within a molecule that represents a potential reaction site in an organic compound. Functional groups determine a molecule's chemical reactivity.
285. See generally RICHARD C. LAROCK, COMPREHENSIVE ORGANIC TRANSFORMATIONS (1999) (providing a systematic collection of synthetic transformations and reactions).
286. As stated above, in enforcing the patent the patentee could rely on the doctrine of equivalents to obtain coverage for variations that embody the inventive concept, beyond those specifically described in the written description.
287. See supra note 101 and accompanying text.
288. For a detailed history of the role of an actual reduction to practice in patent law, see generally 3A DONALD S. CHISUM, CHISUM ON PATENTS § 10.06 (2005);
289. William C. Rooklidge & W. Gerard von Hoffmann, III, Reduction to Practice, Experimental Use, and the "On Sale" and "Public Use" Bars to Patentability, 63 ST. JOHN'S L. REV. 1 (1988).
290. Patent rights are only awarded to the first inventor. 35 U.S.C. § 102(g) (2006) (barring issuance of a patent when another inventor has made the invention before the applicant). When two parties claim the same invention, a Patent Office intraoffice tribunal, known as the Board of Patent Appeals and Interferences, institutes an "interference" proceeding to determine which party is entitled to a patent. 35 U.S.C. § 135 (2006). The party who was first to reduce the invention to practice usually wins; however, a party who was first to conceive the invention but last to reduce to practice will win if that party demonstrates reasonable diligence toward the reduction to practice.
291. See Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). Although filing a U.S. patent application establishes a constructive reduction to practice, a party can obtain an earlier date by proving that the invention was actually reduced to practice before the filing date.
292. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986).
293. See, e.g., Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996) (holding that a catalog was not patent-defeating prior art because the invention was conceived and actually reduced to practice prior to the publication date of the catalog).
294. See Pfaff v. Wells Elees., Inc., 525 U.S. 55, 66-68 (1998) (articulating the "ready for patenting" prong for determining when the 35 U.S.C. § 102(b) bar to patentability is triggered). If the invention was actually reduced to practice before being sold, offered for sale, or was in public use more than one year before filing of the application, a patent will be barred.
295. See Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1379 (Fed. Cir. 2005);
296. Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1366-67 (Fed. Cir. 2000).
297. See supra note 53 (discussing possession).
298. The claimed invention must be "capable of being used to effect the object proposed." Mitchell v. Tilghman, 86 U.S. (19 Wall.) 287, 396 (1874).
299. An invention which is inoperative fails to satisfy the utility requirement of 35 U.S.C. § 101 (2006).
300. See In re Harwood, 390 F.2d 985, 989 (C.C.P.A. 1968).
301. See infra notes 128-39 and accompanying text.
302. See Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1366-67 (Fed. Cir. 2006) (reiterating that an actual reduction to practice is not required). In the case of operability, the Federal Circuit has explained that the Patent Office "has the initial burden of challenging a presumptively correct assertion of utility in the disclosure."
303. In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995). Likewise, a patent application is presumptively enabled at the time of filing.
304. See In re Marzocchi, 439 F.2d 220, 223 (C.C.P.A. 1971). The Pfaff'Court pointed to the patent for Alexander Graham Bell's telephone, which was upheld even tfiough he filed the application before the invention was actually reduced to practice because "'[i]t is enough if he describes his method with sufficient clearness and precision to enable those skilled in the matter to understand what the process is, and if he points out some practicable way of putting it into operation.'"
305. Pfaff, 525 U.S. at 62 (quoting The Telephone Cases, 126 U.S. 1, 536 (1888)). Arguably, other language in the 1888 opinion suggests that this enablement standard is best suited for inventions in the predictable arts.
306. See id. ("'A good mechanic of proper skill in matters of the kind can take the patent and, by following the specification strictly, can, without more, construct an apparatus which, when used in the way pointed out, will do all that it is claimed the method or process will do....'" (quoting The Telephone Cases, 126 U.S. at 536) (emphasis added)).
307. For a general discussion of the history and rationale for the unwritten rule of including examples in patent applications, see generally Bratislav Stankovic, The Use of Examples in Patent Applications, 18 INTELL. PROP. & TECH. L.J. 9 (2006).
308. See, e.g., Chiron Corp. v. Genentech, Inc., 363 F.3d 1247 (Fed. Cir. 2004) (patent for monoclonal antibodies capable of fighting breast cancer);
309. Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361 (Fed. Cir. 1997) (patent for a cleavable fusion process for creating human growtii hormone).
310. Aside from any heightened disclosure standard that attaches with unpredictability, there may also be an underlying public policy rationale. See, e.g., Canady, supra note 113, at 462 (describing the tension in balancing the need to grant broad claims to meaningfully reward valuable advances against the concern that granting broad claims will hinder further advances or disproportionately reward those who make small, but timely, contributions).
311. 108 F.3d 1361 (Fed. Cir. 1997).
312. This field encompasses technologies related to modifying biological materials to benefit humankind. Inventions range from tailor-made drugs to biofuels, and cures for acquired and genetic diseases. Perhaps not surprisingly, the courts classify the field as "highly unpredictable."
313. See Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1372 (Fed. Cir. 1999).
314. For an interesting commentary on the Federal Circuit's jurisprudence in biotechnology cases, see Lawrence M. Sung, Stranger in a Strange Land: Biotechnology and the Federal Circuit, 2 WASH. U. J.L. & POL'Y 167 (2000).
315. Genentech, 108 F.3d at 1363.
316. Id. at 1365.
317. See id. Genentech relied, to its detriment, on the oft-cited statement that "a patent need not teach, and preferably omits, what is well known in the art." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986);
318. see also Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007) (explaining that the written description need not necessarily describe how to make and use every embodiment of the invention because the PHOSITA's "'knowledge of the prior art and routine experimentation can often fill in the gaps'"
319. (quoting AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003));
320. In re Eynde, 480 F.2d 1364, 1370 (C.C.P.A. 1973) (explaining that an applicant can use references to establish the knowledge in the art).
321. For a list of relevant considerations, see infra note 160 and accompanying text.
322. Genentech, 108 F.3d at 1366 (emphasis added)
323. (quoting Brenner v. Manson, 383 U.S. 519, 536 (1966));
324. see also Auto. Techs. Int'l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283-84 (Fed. Cir. 2007) (extending this reasoning to predictable technologies).
325. Genentech, 108 F.3d at 1366-67;
326. see also Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371-72 (Fed. Cir. 1999) (explaining that in both prosecution and litigation, the enablement determination "is made retrospectively, i.e., by looking back to the filing date of the patent application and determining whether undue experimentation would have been required to make and use the claimed invention at that time");
327. In re Glass, 492 F.2d 1228, 1232 (C.C.P.A. 1974) (explaining that sufficiency is judged on an application's filing date).
328. Genentech, 108 F.3d at 1366.
329. Id. at 1368;
330. see also Chiron Corp., v. Genentech, Inc. 363 F.3d 1247, 1254-56 (Fed. Cir. 2004) (affirming the district court's conclusion of nonenablement because the written description for the claimed monoclonal antibodies lacked a "specific and useful teaching"
331. (quoting Genentech, 108 F.3d at 1368)).
332. See supra note 125.
333. If a claimed invention fails to satisfy the utility requirement of 35 U.S.C. § 101 (2006), the written description, as a matter of law, lacks enablement under § 112 because a PHOSITA cannot practice the invention.
334. See Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1358 (Fed. Cir. 1999);
335. In re Ziegler, 992 F.2d 1197, 1200-01 (Fed. Cir. 1993).
336. 419 F.2d 918 (C.C.P.A. 1970).
337. Isotopes are atoms of a particular element with an atypical number of neutrons in their nuclei.
338. In re Eltgroth, 419 F.2d at 918-19.
339. The C.C.P.A. was the predecessor to the Federal Circuit.
340. See supra note 41.
341. The Board of Patent Appeals was the predecessor to the Board of Patent Appeals and Interferences ("Board").
342. See supra note 121. In its appellate role, the Board reviews adverse decisions of examiners.
343. See 35 U.S.C. § 6(b) (2006). An applicant whose claims have been twice rejected by the examiner may appeal to the Board.
344. Id. § 134(a) (2006). The Board can affirm a rejection or reverse and remand to the examining corps. 37 C.F.R. § 1.197 (2009) (promulgating Patent Office regulations pertaining to the Board). An applicant dissatisfied with a Board decision can appeal to the Federal Circuit 35 U.S.C. § 141 (2006).
345. In re Eltgroth, 419 F.2d at 921.
346. Id.
347. See In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995) (articulating the presumption of utility and the burden-shifting framework).
348. See In re Chilowsky, 229 F.2d 457, 462 (C.C.P.A. 1956) (articulating the strong presumption of operability).
349. For more examples of "incredible utility" cases, see generally In re Swartz, 232 F.3d 862 (Fed. Cir. 2000) (generating energy with "cold fusion"), cert, denied, 539 U.S. 916 (2003);
350. Newman v. Quigg, 877 F.2d 1575 (Fed. Cir. 1989)
351. (perpetual motion machine), cert, denied, 495 U.S. 932 (1990);
352. Fregeau v. Mossinghoff, 776 F.2d 1034 (Fed. Cir. 1985) (using a magnetic field to alter the taste of food);
353. In re Ruskin, 354 F.2d 395 (C.C.P.A. 1966) (increasing the energy output of fossil fuels through exposure to a magnetic field).
354. For example, working examples helped the C.C.P.A. conclude that the scientific community would recognize that cancer is curable. Compare In re Citron, 325 F.2d 248, 249-53 (C.C.P.A. 1963) (explaining that applicants' invention relating to an alleged effective treatment for cancer, which lacked specific tests, experiments, or clinical data, asserted incredible utility in the light of the knowledge of the art), with In re Jolles, 628 F.2d 1322, 1326-28 (C.C.P.A. 1980) (concluding that clinical tests, combined with the close structural similarity of the claimed compounds with chemotherapeutics known in the art, would allow a PHOSITA to accept the claimed utility).
355. 668 F.2d 1229 (C.C.P.A. 1982).
356. Id. at 1230.
357. Id. at 1231.
358. Id. (quoting examiner's findings).
359. Id. (quoting Patent and Trademark Office Board of Appeals).
360. Id. at 1232;
361. see also In re Eynde, 480 F.2d 1364,1370 (C.C.P.A. 1973) ("A patent applicant may offer evidence, such as patents and printed publications, to show the knowledge possessed by those skilled in the art, and thereby establish that a given disclosure is enabling.").
362. In re Strahilevitz, 668 F.2d at 1232 (emphasis added).
363. See In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000).
364. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The list, commonly referred to as the Wands factors, found its roots in the Patent Office. Cf. Ex parte Forman, 230 U.S.P.Q. 546, 547 (B.P.A.I. 1986) ("The factors to be considered [in a determination of what constitutes undue experimentation] have been summarized as the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in that art, the predictability or unpredictability of the art and the breadth of the claims."
365. (citing In re Rainer, 347 F.2d 574 (C.C.P.A. 1965)). The Federal Circuit has noted that the Wands factors are "illustrative [and] not mandatory."
366. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991). What is relevant depends on the facts of each case.
367. See id.
368. For deeper discussion of the predictable-unpredictable dichotomy, see generally Seymore, supra note 29;
369. Seymore, supra note 40.
370. See In re Bowen, 492 F.2d 859, 861-862 (C.C.P.A. 1974).
371. See, e.g., Sitrick v. DreamWorks, LLC, 516 F.3d 993,1000 (Fed. Cir. 2008) (noting that an enablement analysis begins with the disclosure).
372. 164 Dennis Crouch contends that "enablement should begin with the knowledge of one skilled in the art and move forward from there." Patendy-O, http://www.patentiyo.com/patent/2008/02/enablement-cont.html (Feb. 4, 2008, 03:43 CST).
373. See MPEP, supra note 44, §2164.04 (instructing an examiner who suspects that one or more claims lack enablement to first construe the claims to determine their scope); AKSteel Corp. v. Sollac, 344 F.3d 1234,1241 (Fed. Cir. 2003) (explaining that because a patent's written description must enable the full scope of the claimed invention, the enablement inquiry typically begins with a construction of the claims).
374. The presence (or absence) of working examples is particularly important for complex inventions. See supra Part II.A.2.
375. See Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999) (holding that "the scope of the claims must be less than or equal to the scope of enablement"); Moy, supra note 81, at 1081 (discussing the benefits of central claiming). As I have written elsewhere, a patent application which lacks working examples can raise a presumption of undue experimentation, particularly in the unpredictable arts. See Seymore, supra note 29, at 154-158
376. Cf. In re Lorenz, 305 F.2d 875, 878 (C.C.P.A. 1962) (stating that the strong and comprehensive language of §112 evinces Congress's intent for applicants to "make a full and complete disclosure of their invention, leaving nothing to speculation or doubt"); In re Folkers, 344 F.2d 970, 975 (C.C.P.A. 1965) ("The specification must leave nothing to 'speculation or doubt,' or require one skilled in the art to experiment at great lengths before he can [practice] the invention." (quoting In re Lorenz, 305 F.2d at 878).
377. See note 23 (defining "embodiment").
378. Athough the patent laws encourage prompt filing, "the public interest is also deemed to be served by allowing an inventor time to perfect his invention." TP Labs., Inc. v. Prof 1 Positioners, Inc., 724 F.2d 965,968 (Fed. Cir. 1984). So, while public use of the invention more than one year prior to filing can bar issuance of a patent under 35 U.S.C. §102(b), a judicially created doctrine known as the experimental use exception can negate the bar by affording the inventor time to improve and perfect the invention.
379. See City of Elizabeth v. An. Nicholson Pavement Co., 97 U.S. 126, 134-38 (1877) (articulating the doctrine); Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336,1353 (Fed. Cir. 2002) (listing objective criteria for determining if a use is experimental).
380. Likewise, further tweaking may lead the inventor to conclude that it is not worth the time and expense of prosecuting a patent application. See In re Hamilton, 882 F.2d 1576, 1581 (Fed. Cir. 1989).
381. For example, a competitor can attempt to design around the invention or find flaws in the disclosure to invalidate it. See infra note 231 and accompanying text.
382. Brief of Amicus Curiae American Intellectual Property Law Association in Support of Petitioner at 9, Pfaff v. Wells Elees., Inc., 525 U.S. 55 (1998) (No.97-1130).
383. Even research grant proposals, which are inherently speculative because they propose research, often include some actual experimental results because it is virtually impossible to obtain a favorable review without strong preliminary data. See, e.g., William Gerin, Writing the NIH Grant Proposal 82 (2006) (suggesting that the presence of preliminary data that "bear[s] directiy on the research question at hand" is crucial to obtaining NIH funding); LIANE REIF-LEHRER, GRANT APPLICATION WRITER'S HANDBOOK 28 (4th ed. 2005) (stating that having "substantive preliminary results" improve the chances of getting funded).
384. See, e.g., ADIL E. SHAMOO & DAVID B. RESNIK, RESPONSIBLE CONDUCT OF RESEARCH 51 (2d ed. 2009) ("The ability of other investigators to replicate the experiments by following the method in the published report is crucial to the advancement of science.").
385. Peer review "is quite efficient at screening out papers that are too speculative or where there are serious errors in the design of the study or in the analysis of data." KENNETH R. FOSTER & PETER W. HUBER, JUDGING SCIENCE 171 (1997);
386. see also COMM. Sci., ENG'G, & PUB. POLICY, NAT'L ACAD, OF Sas., ON BEING A SCIENTIST 33 (3d ed. 2009) (explaining that vetting research results through peer review improves the quality of scientific publications). For a deeper discussion of peer view in science,
387. see ELIZABETH WAGER ET AL., How TO SURVIVE PEER REVIEW 1 (2002) (describing the concept of peer review as "an important milestone [ ] of funding and publication, the concept of critical discussion of ideas and findings [which] runs through the entire scientific process").
388. See Diamond Rubber Co. v. Consol. Rubber Tire Co., 220 U.S. 428, 435-36 (1911) ("It is certainly not necessary that [the inventor] understand or be able to state the scientific principles underlying his invention ...."); Newman v. Quigg, 877 F.2d 1575, 1581 (Fed. Cir. 1989) ("[I]t is not a requirement of patentability that an inventor correctly set forth or even know, how or why the invention works . . . ."); In re Libby, 255 F.2d 412, 415 (C.C.P.A. 1958) ("It is not necessary that a patentee should understand the scientific principles underlying his invention, so long as he makes a sufficient disclosure to enable other persons skilled in the art to practice the invention.").
389. See Hyatt v. Boone, 146 F.3d 1348,1352 (Fed. Cir. 1998) ("[T]he inventor need not provide evidence of either conception or actual reduction to practice when relying on the content of the patent application."); discussion supra Part I.A. A narrow exception arises in "incredible utility" cases. See supra note 150 and accompanying text
390. See Eames v. Andrews, 122 U.S. 40, 56 (1887) (explaining that an inventor's ignorance of the scientific principles is immaterial as long as the patent's disclosure sets forth the "thing" to be done so that it can be reproduced); Life Techs., Inc. v. Clontech Labs., Inc., 224 F.3d 1320,1325 (Fed. Cir. 2000) ("'Patentability shall not be negatived-by the manner in which the invention was made.'" (quoting 35 U.S.C. §103(a))); Radiator Specialty Co. v. Buhot, 39 F.2d 373, 376 (3d Cir. 1930) ("It is with the inventive concept, the thing achieved, not with the manner of its achievement or the quality of the mind which gave it birth, that the patent law concerns itself.");
391. cf. Earle v. Sawyer, 8 F. Cas. 254, 256 (C.C.D. Mass. 1825) (No.4,247) (Story, J.) ("It is of no consequence, whether the tiling be simple or complicated; whether it be by accident, or by long, laborious thought. . . that it is first done [because] [t]he law looks to the fact, and not to the process by which it is accomplished ....").
392. See supra note 84 and accompanying text.
393. See discussion supra Part I.
394. Articles in peer-reviewed scientific publications tend to include an abstract, introduction, experimental section, results, discussion, and conclusion. A the name implies, the experimental section discloses working examples and other experimental details. See sources cited supra note 96.
395. Charles R. McManis & Sucheol Noh, The Impact of the Bayh-Dole Act on Genetic Research and Development: Evaluating the Aguments and Empirical Evidence to Date 35 (Aug. 13, 2006) (unpublished manuscript, on file with the Berkley Center for Law & Technology) (manuscript at 35), available at http://www.law.berkeley.edu/institutes/bclt/ipsc/papers2/mcmanis.doc McManis and Noh also evaluate an empirical study which suggests that, due to an anticommons effect, in cases where scientific research is published and subsequently patented, citations to the journal article may drop off once the corresponding patent issues. Id.;
396. see Fiona Murray & Scott Stern, Do Formal Intellectual Property Rights Hinder the Free Flow of Scientific Knowledge? An Empirical Test of the Anti-Commons Hypothesis, 63 J. ECON. BEHAV. & ORG. 648, 664-68 (2007). In rejecting this hypothesis, McManis and Noh argue in the alternative that when the patent publishes, communication among researchers "might to some extent shift from the scientific literature to the patent record, with the issued patent becoming a focus of citations both in the scientific literature and in subsequent patent applications of academic researchers seeking to distinguish their follow-on innovation from the prior art." McManis & Noh, supra (manuscript at 33).
397. See U.S. Patent & Trademark Office, Patent Full-Text and Full-Page Image Databases, http://patft.uspto.gov (last visited Nov. 22, 2009) (providing free access for patents issued since 1790 and patent applications published since March, 2001).
398. GORDON & COOKFAIR, supra note 11, at 52. One excellent historical example is the case of the two inventions which shared the 1963 Nobel Prize in Chemistry: The discoveries of Ziegler and Natta in the field of olefin polymerization did not appear in the general chemical literature until about 1960, while their patents were filed in 1953 and published in several countries in 1955. People following the patent literature found the work, were able to base their research on the examples given in the patents, and started to expand on these famous inventions long before their appearance in the chemical journals. Id. Nowadays many technical journals have electronic submission and expedited peer-review processes designed to facilitate quick dissemination. Similarly, relatively recent amendments to the patent statutes also facilitate quicker dissemination. Specifically, since 1999, most patent applications publish eighteen months after the earliest effective filing date. 35 U.S.C. §122(b)(1)(A) (2006).
399. The norms of science dictate that scientists engage in full and open communication when they disclose research. See ROBERT K. MERTON, THE SOCIOLOGY OF SCIENCE 274 (Norman W. Storer ed. 1973). While researchers should respect diis norm when drafting the experimental section of their journal articles, the details provided may be insufficient to replicate the experiment because the researcher can obtain a competitive advantage by choosing to keep certain techniques secret. Diana Hicks, Published Papers, Tacit Competencies and Corporate Management of the Public/Private Character of Knowledge, 4 INDUS. & CORP. CHANGE 401, 408 (1995). Indeed, academics and others who publish in journals "manage the release of their knowledge by choosing how much they disclose." Id. In contrast, the patent laws require, at least in theory, that the inventor fully disclose the invention. 35 U.S.C. §112 (2006). For a recent investigation of the relationship between patenting and faculty publishing behavior, see generally Kira R. Fabrizio & Aberto Di Minin, Commercializing the Laboratory: Faculty Patenting and the Open Science Environment, 37 RES. POL'Y 914 (2008).
400. See infra note 233 and accompanying text.
401. Nonetheless, the courts' recent eagerness to invalidate patents for nonenablement suggests that the winds of change are possibly afoot. See Seymore, supra note 40, at 284-289
402. See, e.g., Hormone Research Found., Inc. v. Genentech, Inc., 904 F.2d 1558, 1568 (Fed. Cir. 1990) (arguing that limiting the scope of the claims to the specific embodiments disclosed is a poor way to stimulate invention and discourages early disclosure). But see Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480-481 (1974) (explaining that one purpose of the patent system is to promote disclosure of inventions which stimulates further innovation and permits the public to practice the invention once the patent expires).
403. Judge Newman argues that a patentee's obligation to disclose should not destroy the incentive to innovate: A implemented by the patent statute, the grant of the right to exclude carries the obligation to disclose the workings of the invention, thereby adding to the store of knowledge without diminishing the patent-supported incentive to innovate. But the obligation to disclose is not the principal reason for a patent system .... The reason for the patent system is to encourage innovation and its fruits .... Paulik v. Rizkalla, 760 F.2d 1270, 1276 (Fed. Cir. 1985) (en banc).
404. Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512,1536 (Fed. Cir. 1995) (en banc) (Newman, J., concurring), rev'd on other grounds, 520 U.S. 17 (1997); see also Edlyn S. Simmons, Prior Art Searching in the Preparation of Pharmaceutical Patent Applications, 3 DRUG DISCOVERY TODAY 52, 52 (1998) (explaining the importance of drafting broad generic claims which include hypothetical compounds in order to prevent competitors from developing them). In addition, some would even argue that the ability to obtain patent protection at the early stages of the inventive process is necessary in order to maintain the incentive for the investment of venture capital in research and development. See Dana Rohrabacher & Paul Crilly, The Case for a Strong Patent System, 8 HARV. J.L. & TECH. 263, 271 (1995). But while an actual reduction to practice may lead to a delay in filing, it may also yield a more robust patent which better protects the embodiment that is potentially marketed. See discussion supra Part II.C.2.
405. For example, an applicant must file a patent application within one year of disclosing the invention in a printed publication. 35 U.S.C. §102(b) (2006). Likewise, if the invention is used in public, sold, or subject to an offer for sale in the United States, the applicant must file within one year of the event Id. A fundamental purpose of the §102(b) "statutory bar" is to encourage prompt filing. Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370 (Fed. Cir. 1998); DURHAM, supra note 4, at 121-23 (explaining the threefold policy rationale for §102(b)). In addition to the statutory bar, §102(g) acts to "penalize [ ] the unexcused delay or failure of a first inventor to share the 'benefit of the knowledge of [the] invention' with the public after the invention has been completed." Checkpoint Sys., Inc. v. U.S. Int'l Trade Comm'n, 54 F.3d 756, 761 (Fed. Cir. 1995) (quoting Paulik, 760 F.2d at 1280 (Rich, J., concurring)). Professor Mark Lemley explains that: By waiting too long to file a patent application or inventing without giving the world the benefit of the invention, inventors lose not only their own rights to file for a patent but also the ability to prevent a second inventor who does give the world the benefit of the invention from obtaining her own patent. Lemley & Tangri, supra note 17, at 1102 (citations omitted).
406. The one-year grace period available in the United States is not available in many foreign countries. In fact most countries have an "absolute novelty" requirement such that any pre-filing disclosure, including activity by the inventor, is patentdefeating. See, e.g., Convention on the Grant of European Patents, art 54(2), Oct. 5, 1973, 1065 U.N.T.S. 255, 272. Accordingly, if foreign filing is contemplated, the applicant must take steps to avoid inadvertent or premature disclosure. See DAVID A BURGE, PATENT & TRADEMARK TACTICS & PRACTICE 127-136 (3d ed. 1999) (detailing foreign patent filing procedures).
407. See, e.g., Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1071 (Fed. Cir. 2005) (arguing that narrow patent rights become worthless as new modes of practicing the inventor develop); Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 COLUM. L. REV. 839, 845 (1990); accord SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (explaining that the law does not require that an applicant describe every conceivable embodiment of the invention).
408. Merges & Nelson, supra note 194, at 845.
409. 56 U.S. (15 How.) 62 (1854). For a fuller discussion of Morse and interesting tidbits surrounding the case, see KENNETH SILVERMAN, LIGHTNING MAN 319-324 (2003).
410. O'fieitfy, 56 U.S. (15 How.) at 112 (emphasis added).
411. Id. at 112-113
412. Richard H. Stern, Solving The Algorithm Conundrum: After 1994 in the Federal Circuit Patent Law Needs a Radical Algorithmectomy, 22 AIPLA Q.J. 167, 211 (1994).
413. See Alan Durham, Natural Laws and Inevitable Infringement, 93 MINN. L. REV. 933, 957-958 (2009) (discussing overly broad claims involving natural phenomena).
414. See infra notes 231-232 and accompanying text.
415. See Stern, supra note 199, at 172 n.14. To begin, the patent laws allow an improver to obtain a patent for an invention which is a novel and nonobvious variant of a device covered by a broader claim. Cochrane v. Deener, 94 U.S. 780, 787 (1876) ("One invention may include within it many others, and each and all may be valid at the same time."). A Merges and Nelson explain: Two patents are said to block each other when one patentee has a broad patent on an invention and another has a narrower patent on some improved feature of that invention. The broad patent is said to "dominate" the narrower one. In such a situation, the holder of the narrower ("subservient") patent cannot practice her invention without a license from the holder of the dominant patent At the same time, the holder of the dominant patent cannot practice the particular improved feature claimed in the narrower patent without a license.
416. Merges & Nelson, supra note 194, at 860-61. Importandy, "the dominant patentee can exclude the subservient patentee from practicing her invention at all, and the subservient patentee can exclude the dominant patentee from practicing [the improvement]." Id. at 861 n.96 (emphasis added); see also Cantrell v. Wallick, 117 U.S. 689, 694 (1886) (explaining that where one patent is an improvement on another patent, "neither of the two patentees can lawfully use the invention of the other without the other's consent").
417. See Stern, supra note 199, at 172 n.14.
418. Id. at 172; accord The Incandescent Lamp Patent, 159 U.S. 465, 476 (1895) (explaining that overbreadth "operate [s] rather to discourage than to promote innovation").
419. Ronald J. Gilson, The Legal Infrastructure of High Technology Industrial Districts: Silicon Valley, Route 128, and Covenants Not to Compete, 74 N.Y.U. L. REV. 575, 628 (1999);
420. see also Merges & Nelson, supra note 194, at 907 (a patent holder who licenses widely and collects royalties is more conducive to development of multiple applications). And "[w]hile it is intuitive that broader patents are more valuable than narrower ones, even a narrow patent that is properly placed can have significant value, sometimes more so than a broader patent covering a wide swath of a less lucrative or developed field." John R. Allison et al., Valuable Patents, 92 GEO. L.J. 435, 440 (2004). 206 Here it is important to repeat that an applicant need not provide a working example for every embodiment encompassed by a claim. Cf. In re Grimme, 274 F.2d 949, 952 (C.C.P.A. 1960) ("It is manifestly impracticable for an applicant who discloses a generic invention to give an example of every species falling within it.. .."). Rather, the precise number required will depend on the nature of the technology and vary from case to case. In re Shokal, 242 F.2d 771, 773 (C.C.P.A. 1957) ("Thus, in the case of a small genus ... consisting of four species, a reduction to practice of three, or perhaps even two, might serve to complete the generic invention, while in the case of a genus comprising hundreds of species, a considerably larger number of reductions to practice would probably be necessary.").
421. See generally ANDREW HARGADON, How BREAKTHROUGHS HAPPEN (2003) (examining the strategies and work practices of firms that have built an enduring capacity for breakthrough innovations); SYSTEMS OF INNOVATION (Charles Edquist ed., 1997); Stine Grodal & Grid Thoma, Cross-Pollination in Science and Technology: The Emergence of the Nanobio Subfield (Sept 2006) (unpublished manuscript) (manuscript at 18-22), available at http://www.dime-eu.org/working- papers/wp13/science-and-technology (examining how the cross-pollination of ideas between nanotechnology and biotechnology yielded the new subfield of nanobiotechnology).
422. The disclosure requirement is necessary "in order to give the public, after the privilege shall expire, the advantage for which the privilege is allowed, and is the foundation of the power to issue a patent." Grant v. Raymond, 31 U.S. (6 Pet.) 218, 247 (1832).
423. See, e.g., Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002) (explaining that patent documents are meant to be "a concise statement for persons in the field"); Ajinomoto Co. v. Acher-Daniels- Midland Co., 228 F.3d 1338, 1347 (Fed. Cir. 2000) (explaining that a patent "is not a scientific treatise, but a document diat presumes a readership skilled in the field of the invention"); In re Folkers, 344 F.2d 970, 975-976 (C.C.P.A. 1965) ("Yet we also recognize that patent disclosures are not necessarily required to be meaningful and intelligible to the general public").
424. Ajinomoto, 228 F.3d at 1346-47; see also Loom Co. v. Higgins, 105 U.S. 580, 586 (1881) ("[An applicant] may begin at the point where his invention begins, and describe what he has made that is new, and what it replaces of the old. That which is common and well known is as if it were written out in the patent...."); A.B. Dick Co. v. Barnett, 288 F. 799, 801 (2d Cir. 1923) (noting that the written description is not addressed to people who are "ignorant" about the subject matter) (internal quotation marks and citation omitted); cf. In re Storrs, 245 F.2d 474, 478 (C.C.P.A. 1957) ("[Although] an applicant for a patent [must] give to the public a complete and adequate disclosure in return for the patent grant, the certainty required of the disclosure is not greater than the which is reasonable .... [I]t cannot be forgotten that the disclosure is not addressed to the public generally, but to those skilled in the art").
425. In Judge Rich's opinion, "Not every last detail is to be described, else patent specifications would turn into production specifications, which they were never intended to be. United States specifications have often been criticized as too cluttered with details to give an easy understanding of what the invention really is." In re Gay, 309 F.2d 769, 774 (C.C.P.A. 1962);
426. see also N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941 (Fed. Cir. 1990) ("It is not fatal if some experimentation is needed, for the patent document is not intended to be a production specification."). Under current Patent Office practice, applicants must pay additional filing fees for applications which exceed a threshold page count. See 35 U.S.C. §41(a)(1)(B) (2006).
427. Holbrook, supra note 28, at 139-146
428. Id. at 140.
429. Id. at 143.
430. See id. at 146 (describing how "[p]atents can provide a . . . feedback loop to encourage teachings via pre-patent disclosures and publications," which "further supports the conclusion that the disclosure in the patent itself is not terribly relevant to enhancing the storehouse of knowledge").
431. See Strandburg, supra note 28, at 485-88; cf. Paulik v Rizkalla, 760 F.2d 1270, 1276 (Fed. Cir. 1985) (en banc) ("[I]t is a rare invention that cannot be deciphered more readily from its commercial embodiment than from the printed patent").
432. Professor Rebecca Eisenberg argues that both the scientific community and the patent system favor full disclosure. See Rebecca S. Eisenberg, Proprietary Rights and the Norms of Science in Biotechnology Research, 97 YALE L.J. 177, 217 (1987).
433. See Univ. of Rochester v. G. D. Searle & Co., 358 F.3d 916, 922 n.5 (Fed. Cir. 2004) ("[T] he role of the specification is to teach, both what the invention is (written description) and how to make and use it (enablement).").
434. See, e.g., Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470,481 (1974) (explaining that a patent's addition of knowledge is so important to the public good "that the Federal Government is willing to pay the high price of... years of exclusive use for its disclosure, which disclosure, it is assumed, will stimulate ideas and the eventual development of further significant advances in the art.").
435. See supra note 182 and accompanying text.
436. See Fromer, supra note 28, at 554 ("Much of the information contained in-or that ought to be in-patents is not published elsewhere."); Second OECD Ministerial Conference for Small and Medium-sized Enterprises, June 3-5, 2004, WORLD INTELL. PROP. ORG., Intellectual Property (IP) Rights and Innovation in Small and Medium-Sized Enterprises, ¶ 5 ("It has been estimated that patent documents contain 70% of the world's accumulated technical knowledge and that most of the information contained in patent documents is either never published elsewhere or is first disclosed through the publication of the patent application."), available at http://www.wipo.int/sme/en/ documents/pdf/iprs-innovation.pdf (last visited Sept. 17, 2009).
437. See generally Benoît Godin, Research and the Practice of Publication in Industries, 25 RES. POL'Y 587 (1996) (presenting various explanations and using bibliometrics to assess the usefulness of publication in industry).
438. See generally RICHARD M. REIS, TOMORROW'S PROFESSOR (1997) (explaining the importance of publishing in academia);
439. Anthony J. Kinney et al., Publications from Industry. Personal and Corporate Incentives, 134 PLANT PHYSIOLOGY 11, 11-15 (2004) (arguing that the lower publication rate in industry is less about secrecy and more about the complex balancing of personal and institutional interests). Several commentators contend that publishing can bring rewards to industry. See, e.g., Rebecca Henderson & Iain Cockburn, Measuring Competence? Exploring Firm Effects in Pharmaceutical Research, 15 STRATEGIC MGMT. J. 63, 77 (1994) (finding that in drug discovery, firms which encourage publication in the open literature and use it as a criterion for promotion are more productive than their rivals).
440. Partha Dasgupta & Paul A. David, Information Disclosure and the Economics of Science and Technology, in ARROW AND THE ASCENT OF MODERN ECONOMIC THEORY 519, 522 (George R. Feiwel ed., 1987) ("Roughly speaking, the [academic] scientific community appears concerned with the stock of knowledge and is devoted to furthering its growth, whereas the [industrial] technological community is concerned with the private economic rents that can be earned from that stock."); Derek J. de Solía Price, Is Technology Historically Independent of Science? A Study in Statistical Historiography, 6 TECH. & CULTURE 553, 561 (1965) (arguing that while the chief motivation of a scientist is to publish, the chief motivation of a technologist is to produce a product or process with limited disclosure before patent rights are secured).
441. See Hicks, supra note 186, at 412 ("After all, writing papers makes no money and consumes time."). Some industrial employers, however, support and even reward publication and conference attendance in an effort to attract productive scientists and to boost their prestige in academic and corporate communities. See G. Steven McMillan et al., Firm Management of Scientific Information: An Empirical Update, 30 RES. & DEV. MGMT. 177, 180-181 (2000).
442. Hicks, supra note 186, at 412-13. But see supra note 226 (explaining that rewarding publications can also convey benefits to industry).
443. See WILLIAM M. LANDES & RICHARD A POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 320 n.52 (2003) (explaining that more than ninety-five percent of patents are unlicensed and that ninety-seven percent of patents generate no royalties); Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Nw. U. L. REV. 1495, 1508-11 (2001) (arguing that devoting more attention and resources to improved patent examination across the board is unnecessary since most patents are never licensed or litigated) ; Doug Lichtman, Substitutes for the Doctrine of Equivalents: A Response to Meurer and Nard 93 GEO. L.J. 2013, 2022-23 (2005) ("[M]ost patents sit idle after issuance, never brought into litigation and never used as the basis for licensing negotiations.").
444. See generally Pamela Samuelson & Suzanne Scotchmer, The Law and Economics of Reverse Engineering, 111 YALE L.J. 1575 (2002) (examining the legal developments surrounding reverse engineering and their economic consequences); Maureen A. O'Rourke, Toward a Doctrine of Fair Use in Patent Law, 100 COLUM. L. REV. 1177, 1234-35 (2000) (examining the difficulties of reverse engineering); The Disclosure Function of the Patent System, supra note 17, at 2016-17 (examining the economic limitations of reverse engineering); Edwin Mansfield, How Rapidly Does New Industrial Technology Leak Out?, 34 J. INDUS. ECON. 217, 221 (1985) ("It often takes considerable time to invent around patents (if they exist), to develop prototypes, to alter or build plant and equipment, and to engage in the manufacturing and marketing start-up activities required to introduce an imitative product or process.").
445. See Lee Kovářsky, A Technological Theory of the Arms Race, 81 IND. L.J. 917, 960 (2006) (arguing that when reverse engineering is difficult, the inventor may forsake patent protection in favor of trade secrecy); Munson, supra note 25, at 697-699 (explaining the difficulties for those in the chemical arts intent on reverse engineering).
446. See Samuelson & Scotchmer, supra note 228, at 1585-1588 (describing the timeconsuming research and development steps involved in reverse engineering a product).
447. Although the patentee can exclude others from practicing the invention until the patent term expires, there is hope that the patent will foster innovation by inducing others to design around the invention and make new products and processes. The incentive to design around a patent is a positive result of the patent system. See London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991) (explaining that designing or inventing around patents should be encouraged); State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1235-1236 (Fed. Cir. 1985) (stating that designing around an invention lies at the heart of competition and ultimately benefits the consumer).
448. Ted Hagelin, The Experimental Use Exemption to Patent Infringement: Information on Ice, Competition on Hold 58 FLA. L. REV. 483, 494-504 (2006);
449. see also Holbrook, supra note 28, at 139-40 ("Commenters have well documented the Federal Circuit's hostility to the common law experimental use defense ...."). The doctrine of equivalents also creates problems when trying to design around a patent. See Paul N. Katz & Robert R. Riddle, Designing Around a United States Patent, 45 S. TEX. L. REV. 647, 665-68 (2004) ;
450. Cecil D. Quillen, Jr., Commentary on Bessen and Meurer's Patent Failure : An Industry Perspective, 16J. INTELL. PROP. L. 57, 79 (2008) (explaining "[t]he doctrine of equivalents, which is patent law's 'catch 22' because it makes infringers out of innovators who have successfully designed around a patent's claims"); supra note 101 (explaining the doctrine).
451. See supra note 26 and accompanying text
452. See discussion supra Part ILB.
453. A lengthy discussion of the rule, and particularly its intersection with other patent law doctrines, is beyond the scope of this article. For a deeper discussion, see John R. Thomas, Formalism at the Federal Circuit, 52 AM. U. L. REV. 771, 781-783 (2003).
454. See Miller v. Brass Co., 104 U.S. 350, 352 (1881) ("[T]he claim of a specific device or combination, and an omission to claim other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that which is not claimed.") ;
455. Johnson & Johnston Assoes, v. R.E. Serv. Co., 285 F.3d 1046, 1054 (Fed. Cir. 2002) (en banc). To trigger the rule, and before unclaimed subject matter will be dedicated to the public, "that unclaimed subject matter must have been identified by the patentee as an alternative to a claim limitation." Pfizer, Inc. v. Teva Pharms. USA, Inc., 429 F.3d 1364, 1379 (Fed. Cir. 2005).
456. See Maxwell v.J. Baker, Inc., 86 F.3d 1098, 1106 (Fed. Cir. 1996). Thus, the rule "requires an inventor who discloses specific matter to claim it, and to submit the broader claim for examination." PSC Computer Prods., Inc. v. Foxconn Int'l, Inc., 355 F.3d 1353, 1360 (Fed. Cir. 2004).
457. See Genentech, Inc. v. Wellcome Found. Ltd., 29 F.3d 1555, 1564 (Fed. Cir. 1994); PSC Computer Prods., 355 F.3d at 1361 (explaining that the disclosure-dedication rule should motivate patentees to draw the broadest claims that they consider to be patentable, and to submit these broad claims to the Patent Office for examination). In terms of policy, the rule reinforces the public notice function of patents. See Johnson & Johnston, 285 F.3d at 1052 (noting that, consistent with the notice function, the claim requirement presupposes that a patent applicant defines his invention in the claims, not in the written description); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001) (explaining that the written description can assist the public in understanding the notice given in the claims by pointing out the portions of the relevant art the patent does not cover).
458. For a discussion of the doctrine of equivalents (DOE), see supra note 101. In determining the range of equivalents to which the patentee is entitled, the Federal Circuit has held that a patentee cannot use the DOE to recapture subject matter disclosed but deliberately left unclaimed. See Johnson & Johnston, 285 F.3d at 1054.
459. See, e.g., Johnson & Johnson, 285 F.3d at 1064-1072 (Newman, J., dissenting) (explaining that the majority opinion imposes legal obstacles to the disclosure of scientific information which will deter innovation).
460. See, e.g.. Raj S. Davé, A Mathematical Approach to Claim Elements and the Doctrine of Equivalents, 16 HARV. J.L. & TECH. 507, 516-18 (2003) (explaining that the Johnson & Johnston decision "will encourage broad claiming of all disclosed subject matter").
461. PSC Computer Prods., 355 F.3d at 1360; see also Holbrook, supra note 28, at 165-167 (discussing the extent of disclosure required to trigger the rule).
462. PSC Comp. Prods., 355 F.3d at 1360.
463. See Davé, supra note 241, at 517. Admittedly, as Professor John Thomas points out, diis is easier done in certain fields than in others. See Thomas, supra note 235, at 801 (explaining that, while inventors in chemical, electrical, and mechanical fields can selectively draft written descriptions that claim one component of a larger product or process, those in biotechnological fields must claim each and every aspect of their inventions).
464. Patentees have devised various claiming methods to avoid dedication problems. See, e.g., Davé, supra note 241, at 516-18. One commentator suggests that the patentee should draft the broadest claim to extend up to the boundaries defined by the prior art. See Robert A Migliorini, The Dedication to the Public Doctrine and Lessons for Patent Practitioners, 87 J. PAT. & TRADEMARK OFF. SOC'Y 825, 839 (2005).
465. See Seymore, supra note 40, at 290.
466. See id.; Davé, supra note 241, at 516-18. Prosecution history estoppel is a judicially-created doctrine which bars a patentee from "'regaining, through litigation, coverage of subject matter relinquished during prosecution of the application for the patent.'" Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 734 (2002) (quoting Wang Labs., Inc. v. Mitsubishi Elees. Am., Inc., 103 F.3d 1571, 1577-1578 (Fed. Cir. 1997)).
467. See 37 C.F.R. §1.121 (2008) (describing the amendment process for patent applications).
468. See id.; Turbocare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001) (explaining that an applicant can add a claim after the original filing date as long as it finds support in the written description).
469. A continuation application is a second application for the same invention claimed in a parent (original) application, which is filed before the parent application issues as a patent or becomes abandoned. See 35 U.S.C. §120 (2006). It has the identical written description as the parent and enjoys the benefit of the earlier filing date. See id. In sum, a continuation application is a new application with the same disclosure but different claims.
470. See 35 U.S.C. §251 (2006) (stating that a broadened claim can be presented within two years from the grant of the original patent in a reissue application) ;
471. see also Johnson & Johnston Asocs. v. R.E. Serv. Co., 285 F.3d 1046,1055 (Fed. Cir. 2002) (en banc) (identifying reissue as a suitable way to retrieve unclaimed subject matter).