Patent Claim Interpretation Methodologies and Their Claim Scope Paradigms

By Cotropia, Christopher A. | William and Mary Law Review, October 2005 | Go to article overview
Save to active project

Patent Claim Interpretation Methodologies and Their Claim Scope Paradigms


Cotropia, Christopher A., William and Mary Law Review


ABSTRACT

The optimal scope of patent protection is an issue with which patent system observers have struggled for decades. Various patent doctrines have been recognized as tools for creating specific patent scopes and, as a result, implementing specific patent theories. One area of patent law that has not been addressed in the discussion on patent scope and theories is patent claim interpretation. This omission is particularly noteworthy because of the substantive role patent claims and the interpretation thereof play in the patent system, namely the framing of questions of patent infringement and validity.

This Article will explore the not-yet-discussed relationship between claim interpretation methodology and patent scope. The discussion will focus on how changes in interpretation methodology affect patent scope, an aspect of methodologies that the Article identifies as their "claim scope paradigm." Introducing the claim scope paradigm concept is mainly beneficial for two reasons. First, identifying the claim scope paradigm allows different interpretation methodologies to be evaluated as to their impact on the substantive function of patent claims. A claim scope paradigm criterion represents a significant and worthwhile departure from the current standard of certainty used by courts and commentators. Second, recognizing claim scope paradigms facilitates the use of claim interpretation methodology as a patent policy lever. Interpretation methodologies can be highly effective levers, having the ability to inject patent policy at the most basic level of the patent process.

INTRODUCTION
I. FUNCTIONS OF PATENT CLAIMS
   A. Public Notice Function
   B. Patent Scope Defining Function
II. PATENT CLAIM INTERPRETATION METHODOLOGIES
   A. Claim Interpretation Basics
      1. Interpretative Sources
      2. Canons of Interpretation
   B. Common Variation Among Methodologies: The Degree
      of Influence of the Specification
      1. Patent Specification
      2. Use of the Specification in Claim Interpretation
   C. Majority and Dissent in the Phillips v. AWH
      Corporation Panel Decision: An Example of Two
      Different Claim Interpretation Methodologies
        1. The Majority's Methodology's Full and Early Use
           of the Specification
        2. The Dissent's Methodology's Heavy Presumption
           in Favor of Dictionaries
   D. En Banc Decision in Phillips v. AWH Corporation:
      The Federal Circuit Selects a Claim
      Interpretation Methodology
III. EVALUATING CLAIM INTERPRETATION METHODOLOGIES
   A. Need for Evaluation Criteria
   B. Certainty as an Evaluation Criterion
   C. Shortcomings of Certainty as a Criterion
IV. A NEW EVALUATION CRITERION: A METHODOLOGY'S
   CLAIM SCOPE PARADIGM
   A. Identification of an Interpretation Methodology's
      Claim Scope Paradigm
      1. Claim Scope Paradigm of the
         Specification Methodology
      2. Claim Scope Paradigm of the Heavy
         Presumption Methodology
   B. Evaluating Claim Interpretation Methodologies
      Based on Their Claim Scope Paradigm
      1. Competitive Innovation Theory Supports the
         Selection of the Specification Methodology
      2. Prospect Theory (Possibly) Supports the
         Selection of the Heavy Presumption Methodology
   C. Benefits to Using Claim Scope
      Paradigm as a Criterion
      1. Claim Scope Paradigm Addresses a Methodology's
         Effect on the Substantive Function
         of Patent Claims
      2. Recognizing that the Claim Scope Paradigm Facilitates
         Using Claim Interpretation Methodology as a
         Highly Effective Patent Policy Lever
CONCLUSION

INTRODUCTION

The optimal scope of patent protection is an issue with which patent system observers have struggled for decades. (1) With any invention, considerations turn to what aspects of the invention deserve to be protected and are therefore patentable.

The rest of this article is only available to active members of Questia

Sign up now for a free, 1-day trial and receive full access to:

  • Questia's entire collection
  • Automatic bibliography creation
  • More helpful research tools like notes, citations, and highlights
  • Ad-free environment

Already a member? Log in now.

Notes for this article

Add a new note
If you are trying to select text to create highlights or citations, remember that you must now click or tap on the first word, and then click or tap on the last word.
Loading One moment ...
Project items
Notes
Cite this article

Cited article

Style
Citations are available only to our active members.
Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

Cited article

Patent Claim Interpretation Methodologies and Their Claim Scope Paradigms
Settings

Settings

Typeface
Text size Smaller Larger
Search within

Search within this article

Look up

Look up a word

  • Dictionary
  • Thesaurus
Please submit a word or phrase above.
Print this page

Print this page

Why can't I print more than one page at a time?

While we understand printed pages are helpful to our users, this limitation is necessary to help protect our publishers' copyrighted material and prevent its unlawful distribution. We are sorry for any inconvenience.
Full screen

matching results for page

Cited passage

Style
Citations are available only to our active members.
Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

Cited passage

Welcome to the new Questia Reader

The Questia Reader has been updated to provide you with an even better online reading experience.  It is now 100% Responsive, which means you can read our books and articles on any sized device you wish.  All of your favorite tools like notes, highlights, and citations are still here, but the way you select text has been updated to be easier to use, especially on touchscreen devices.  Here's how:

1. Click or tap the first word you want to select.
2. Click or tap the last word you want to select.

OK, got it!

Thanks for trying Questia!

Please continue trying out our research tools, but please note, full functionality is available only to our active members.

Your work will be lost once you leave this Web page.

For full access in an ad-free environment, sign up now for a FREE, 1-day trial.

Already a member? Log in now.

Are you sure you want to delete this highlight?