Back to the Future of Patents

(IPRinfo 2/2012)

The U.S. patents system focuses too much on the verbal content of applications, considers Professor Dan L. Burk.

Patent applicants in the U.S. shouldn’t necessarily breathe a sigh of relief if their application is successful in a lower court hearing. The appeal courts overturn almost half the decisions of the lower courts. These decisions are mostly based on a verbal assessment of the application.

In the lower court patent applications are considered in a so-called Markman hearing. There the application is examined thoroughly, element by element. The aim of this procedure, which is employed at an early stage of the trial, is to define the outer limits of the judicial protection afforded by the patent.

Scope of protection staked out
The idea behind the current peripheral claiming system is to define the limits of the patent’s scope of protection. The center of attention is on the written text of the patent application.

Professor Dan L. Burk is a respected patent expert at the University of California (Irvine). He compares the procedure to putting up fence poles. The extent of the area fenced in is highly important in any patent litigation. It also defines the limits of the protection enjoyed by new variations of the invention.

– It isn’t stated anywhere how precisely the judge should investigate the wording. Should it be a word-by-word examination? Or is the idea to analyze sentences, or terms? Burk reflects.

In patent trials clever lawyers try to place meanings on words to the benefit of their own clients. For example, the meaning of the prepositions “a” and “to” has been argued over in trials.

Appeal court starts from scratch
The thorough Markman process in the district court is rendered almost meaningless if the dispute goes to appeal. In the United States patent appeals are dealt with by the circuit appeal courts.

In considering a patent application, the lower court will have heard witnesses and experts. The circuit appeal court, however, no longer takes any notice of their statements, and treats the matter as a fresh case. The hearing must also refrain from using external sources of interpretation, such as manuals.

Professor Burk is concerned that the appeal procedure does not improve the quality of the hearing.

– Regardless of the judge’s experience with patents, the circuit appeal courts overturn up to 50 per cent of the district courts’ decisions, Burk reports.

Professor Burk’s proposed solution to the problem is to return to a central claiming system, which was in use in the United States until the end of the 19th century. Whereas the present system is akin to staking out fence poles, central claiming is more like a signpost, Burk explains.

Emphasis on innovation, not words
The central claiming process concentrates on the invention itself rather than the application document. The limits of the protection of law are only defined later.

Central claiming is reminiscent of the system in use in other immaterial rights, such as copyright. The assessment concentrates on the facts rather than the application documents.

– If you write an article and somebody copies it verbatim, we know that that’s an infringement of copyright, Burk compares.

Among the U.S. judiciary, moving to a central claiming system is dismissed as a non-starter. According to Burk, however, the idea has gained traction among theorists.

Burk believes that the idea behind central claiming can be achieved, perhaps even without amending the Patent Act.

– Let’s just change the practice without telling anyone, he jests.

Professor Dan L. Burk lectured at the IPR University Center seminar in Helsinki on 8 February 2012 on the subject “Rethinking Patent Claim Construction”.

Dan L. Burk is Chancellor’s Professor of Law at the University of California, Irvine. He is an internationally prominent authority on issues related to patents, copyright, and electronic commerce. He holds a B.S. in Microbiology, an M.S. in Molecular Biology and Biochemistry and a J.D. and a J.S.M.

“Intuition is key”

Christoffer Sundman, a partner at Seppo Laine Oy Patent and Trademark Agents, commented on Professor Dan L. Burke’s lecture at the IPR University Center seminar.

Sundman compared the features of U.S. and European patent application procedures.

In Europe, weighty arguments in the application procedure include first to file, elder rights and first user. The assessment can also draw on external sources. For example, “persons skilled in the art” may be called in.

Dominant patent doctrines in Europe include the British one, which stresses the intention of the patent application, and the German school, which emphasizes how a “reasonable third party” would comprehend the content of the patent. The European Patent Convention aims to combine the views of these schools.

According to Christoffer Sundman, both in Europe and the United States, in the end the decision is based on intuition.

– The judge considers what is right, and states the reasons for that, as Sundman puts it candidly.

What does “a” mean?

In the United States, patent disputes have sometimes turned on the meaning of various conjunctions. In court, lawyers have at times sought to gain support for their pleadings by interpreting the true meaning of the following words:

a, or, through, to, at, about, including