ABSTRACT:
Although the Patent Act is designed to be uniform across technologies, the conventional wisdom among close watchers of the patent system is that courts have reached very different outcomes when applying the disclosure (enablement and written description) and claim definiteness requirements to different technologies and industries. This conventional wisdom has heretofore not been tested empirically. In an effort to do so, we have created a hand-coded dataset of all 1,144 cases from 1982 to 2012 in which U.S. district courts or the Court of Appeals for the Federal Circuit rendered a decision involving the enablement, written description, or claim definiteness requirements of § 112 of the Patent Act. We coded validity outcomes under these three doctrines on a novel 5-level scale so as to capture significant subtlety in the strength of each decision, and we also coded patents using both technology and industry classifications.
We present both descriptive statistics and regressions that control for other factors. Our results show some statistically significant disparities in § 112 outcomes for different technologies and industries, although fewer than the conventional wisdom might suggest. Just as importantly, our analysis reveals the effects of several other independent variables on § 112 outcomes, regardless of technology or industry, including whether a district court or the Federal Circuit made the last decision in a case, whether a patent claim was drafted in means-plus-function format, and whether a case was decided before or after Markman v. Westview Instruments (holding that interpretation of patent claims is solely within the province of the court and not the jury).
Patent disclosure and definiteness have been the focus of much recent debate about the patent system. The § 112 requirements are meant to ensure that inventors hold up their end of the patent bargain by teaching what the invention actually is and how to make and use it, but many observers question how effective these doctrines are in practice. Commentators have argued that the written description doctrine be eliminated and that the enablement and claim definiteness requirement be significantly revised, and the Supreme Court set forth a new test for indefiniteness in 2014, the contours of which remain uncertain. Our results on how disclosure and definiteness have been applied in practice will be helpful in evaluating current proposals for reforming the § 112 requirements.
Read the paper: Are Patent Disclosure and Definiteness Technology Specific?
