Patent Law

Yesterday raised a valuable discussion on claim construction with many excellent comments on the Cotropia-Bey article. The issue is obviously important since claim construction disputes arise in virtually every attempt to enforce a patent. One problem with claim construction in litigation is that the district court follows a completely different process of claim construction than do PTO examiners. The rules suggest that the two claim construction scopes should form concentric circles with the PTO's broad construction and the Court's narrower construction. The reality is that it is hard to form these concentric circles -- especially with complex claims. And, it is virtually impossible to form concentric circles of construction using such distinct construction processes. Instead of nested constructions, in many cases the outcome of the district court tends to diverge from that suggested during prosecution.   

It seems odd that the patent prosecution process does not focus on determining the correct meaning of the claims. The better approach may well be to allow the original examination to determine the correct meaning of claims in a way that can be followed by courts down the line. I suspect that this approach would actually lead to more valid patents -- especially if examiners applied a stronger hand on issues of indefiniteness.

Notes:

• Joel Miller's 2006 JPTOS article in the Broadest Reasonable Interpretation standard is available here.
• Mark Lemley and Dan Burke recently wrote a paper arguing that we should admit defeat and move to a central claiming system. Their analogy is that claims might be better used as sign-posts rather than fence-posts. [Link]
• Lemley's 2005 article on The Changing Meaning of Patent Claim Terms is also a good read. [Link]