Academic journal article Santa Clara High Technology Law Journal

Call for Standardization in Patent Claim Drafting

Academic journal article Santa Clara High Technology Law Journal

Call for Standardization in Patent Claim Drafting

Article excerpt

Table of Contents  Introduction I. Poor Patent Quality Results From Difficulties Regarding Claim Interpretation II. The Proposed Pass Solution--Standardized Claim Format Consisting Of Pre-Populated Key Terms Linked By Connectors III. Detailed Description--Structured Patent Claim Drafting Under Pass And Associated Examples    A. Example #1: A Method Claim    B. Example #2: An Apparatus Claim    C. Example #3: A Hardware Claim    D. Example #4: A Software Claim    E. Example #5: A Pharmaceutical Claim IV. Using Artificial Intelligence to Assist Standardization of Claim Structure    A. Application After Issuance    B. Application During Drafting    C. Application During Prosecution V. Pros and Cons of a Pass Standardized Claim Structure--for Examiners, Patent Drafter, and Inventors VI. How to Enable Broad Adoption of Standardized Claim Structure? Conclusion 

Introduction

The patent system has lost much of its luster as a mechanism for propelling innovation. (1) In particular, over the past few years, the U.S. patent system has become a significantly less favorable incentive pathway for inventors and innovators. (2) This is especially the case for disillusioned high-tech companies that have become frustrated with ever-expanding thickets of qualitatively poor patents (3) (particularly within the software space) (4) that are increasingly asserted by newly aggressive plaintiffs. (5)

Many of these plaintiffs are non-practicing entities ("NPEs"), arguably, a subset of patent assertion entities ("PAEs")--both colloquially known as trolls--who have forced new ground rules into the litigation game. According to at least one dataset, 20% of all patent litigation in 2017 was associated with plaintiffs that had acquired (i.e., not invented in-house, but rather purchased specifically to use offensively) the asserted patent. (6) Others have suggested that the numbers, while falling from prior years, may have been as high as 60% in 2017. (7) Importantly, it is not just the number of patent cases, but also the way they are handled; NPEs are not hindered by the (former) reality that legal adversaries today may be business partners tomorrow, negating the need to play fair. (8)

What we can surmise is that, in many instances, NPEs have arguably asserted patents in irresponsible and often unpredictable ways that seem to serve only to shake down non-competitors. (9) This is in stark contrast to the litigation that occurred decades ago that aimed primarily to protect market share by preventing important and key innovations from being infringed by potential competitors. (10) Most of today's NPE plaintiffs do not have market share; they just assert their patent portfolios against any of the various stakeholders in the market. Notably, this phenomenon is now prevalent in other, non-U.S. jurisdictions as well. (11)

These assertions lead to, among other externalities, uncertainty in patent value, an erosion of protectable patent rights, a cheapening (not in actual dollars, but in its relevance) of the patent litigation process, and growing impediments to research and entrepreneurial efforts due to actual or threatened excessive lawsuits and their resulting high litigation costs. (12) As a result, there is mounting sentiment among those various stakeholders at greatest risk of falling prey to NPEs that the patent system has failed inventors, and now hinders innovation. (13) Many companies, especially cash-strapped startups, are appreciably cutting back, or even foregoing, patenting altogether (seeing them as primarily a negative tool), or looking to operate in areas where patent enforcement is weak and the threat of speculative litigation by NPEs is less. (14)

Again, this is not how things once were: patents are intended to promote innovation. Optimally, a patent should provide a limited monopoly to an innovator as a quid pro quo for disclosing their innovations to the public. (15) In an effort to balance further follow-on innovation and the innovation associated with the patent itself, patent systems were designed to cabin the scope of that limited monopoly (i. …

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