In theory, a patent serves the public good because the disclosure of the invention brings new ideas and technologies to the public and induces inventive activity. But while these roles inherently depend on the ability of the patent to disseminate technical knowledge, the teaching function of patents has received very little attention. Indeed, when the document publishes, it can serve as a form of technical literature. Because patents can, at times, communicate knowledge as well as, or better than, other information sources, patents could become a competitive source of technical information. Presently, however, patents are rarely viewed in this manner. There are several reasons for this, including the lack of a working example requirement and the pervasive use of ambiguous or opaque language.
My primary objective is to transform patents into readable teaching documents. Importantly, if patents are to compete with the technical literature, then they must provide the same quality of teaching. For this to happen, two things must occur. First, at least for complex inventions, an applicant must prove, through adequate detail, that the claimed invention has been constructed and works for its intended purpose. Second, applicants must be allowed to draft the document using clear and concise language, without the fear of litigation troubles. To achieve both, I contend that working examples should replace language as the principal measure of claim scope. To implement this idea, I propose a new examination protocol which gives the U.S. Patent Office the ability to request working examples when the disclosure's teaching appears dubious. In exploring criticisms, I argue that, in contrast to the current disclosure framework, which can itself thwart innovation, the proposed regime will produce more technically robust patents, which will make it easier for subsequent inventors to improve upon existing patented technology, promote the diffusion of knowledge across disciplines, and serve as a driver for more creative innovation.
INTRODUCTION I. IDENTIFYING THE PROBLEM A. No Experimentation Required! 1. Constructive Reduction to Practice 2. Prophetic Examples B. "Patentese" 1. What Is It? 2. Why Is It Used? 3. Drawbacks II. IMPROVING THE TEACHING FUNCTION OF PATENTS A. Imposing a Working Example Requirement 1. Raising the Standard of Disclosure 2. A New Examination Protocol B. Drawing Support from History C. Potential Benefits 1. It Will Simplify the Enablement Inquiry 2. It Will Yield More Robust Patents 3. It Will Bridge the Disconnect Between Science and Patent Law 4. It Will Make Patents a Competitive Source of Technical Knowledge III. CRITICISMS AND LIMITS OF THE TEACHING FUNCTION A. Conflicting Policy Concerns B. Teaching Whom? C. The Disclosure-Dedication Rule CONCLUSION
The patent document serves several stated functions. First, it discloses the invention to the public. (1) This disclosure must be sufficiently detailed to enable one of ordinary skill in the art to practice the invention and provide the best way to do so. (2) Second, it includes claims which define the scope of the exclusory right and notify interested members of the public of the activities that will infringe. (3) Third, the document serves as a starting point for patent prosecution, (4) as well as a court's adjudication of patent validity and infringement. (5)
Yet patents perform functions which extend beyond the legal sphere. These include, for example, signaling research and development (R&D) strength to customers and competitors (6) and inducing inventive activity. (7) This Article focuses on one function that has received considerably less attention: teaching. The basic idea is that, while the patentee can exclude others from practicing the invention until the patent term expires, the technical information disclosed in the patent document has potential immediate value to the public, (8) which can use the information for any purpose that does not infringe upon the claims. …