The Patent Act simply requires the inventor to explain how to make and use the invention. But what if the inventor could have easily figured out how and why the invention works and disclosed that information in the patent.
PATENTS AS TEACHING DOCUMENTS
It begins by discussing the primacy of disclosure in patent law and then explains how the enabling requirement ensures that disclosure is meaningful. Finally IV. part discusses the policy implications of the proposal, with a particular focus on how it would promote the disclosure function of patent law and help bridge the disconnect between patent law and science.
Disclosure and Patent Law's Teaching Function
Without the patent system, inventors would monetize their inventions through trade secret, depriving the public of the benefits of technical information about the invention. Applicants] have reasons to provide just enough information to comply with § 112 and no more so that the patent holder can retain aspects of the invention as a trade secret, potentially providing a competitive advantage in the marketplace even after the patent is published or expires.” ) .
The Enablement Requirement
PERMISSIBLE IGNORANCE IN PATENT LAW
It is hoped that it will help to achieve the two broad goals shared by patent law and science – namely, to coordinate the future development of technology9 3 and to encourage innovation.9 4 It seems that patent law could better achieve both if it encouraged inventors to disclosure of mechanical information. This section explores the rationale behind the minimal disclosure paradigm in patent law and the situations where this is particularly problematic.
Understanding the Nondisclosure Rule
Thus, an invention is patentable even if "the theory of operation is not properly explained or even understood."'0 0 All that matters is if the disclosure sufficiently enables PHOSITA to use the invention.'0. The patent office and the courts have long viewed the treatment of baldness as an "inherently incredible feat." Id.
Early Disclosure as a Justification
TOWARD MECHANISTIC ENABLEMENT
Everyone agrees that disclosure of the mechanism in the patent document would be ideal, especially for opaque inventions. One requirement for prior art that negates novelty is that the claimed reference could have enabled a PHOSITA to make the invention without unnecessary experimentation. One might wonder whether the proposed paradigm would also require that reference to the state of the art that negates novelty offers mechanistic possibilities.
Let's remember that the public gets detailed information about the invention immediately after the publication of the patent document.
New Disclosure Paradigm
Mindful of these tradeoffs, I propose a new disclosure paradigm to induce the elucidation and eventual disclosure of mechanism in patent documents. The statutory enabling requirement will remain unchanged - disclosure of how to make and use the invention will be sufficient to obtain a patent.162 Optionally disclosing how or why the invention works will constitute what I define as mechanistic enabling. The term mechanism comes from the field of the experimental sciences, where it refers to a detailed picture of how a result is obtained.163.
Apart from the reasons mentioned above, inventors may refuse the additional experimentation required - or, if the information is known, may want to keep it secret.'6 4 To overcome these obstacles, the next two sections describe ways to get mechanistic engagement.
Inducing Disclosure with Broadened Claim Scope
Enabling Generic Claims
Although generic claims occur in all fields of technology,'7 8 they are ubiquitous in the chemical and pharmaceutical arts.17 9 In these fields, a typical generic claim has a central generic chemical structure with a set of variables appended to it—each of which may represent countless chemical moieties. .' When the number of variables per nucleus of a chemical structure. This style of assertion—pervasive in the chemical and pharmaceutical arts—is called the Markush practice. Neither the prior art nor any teaching in the patent document suggested that the other three members of the genus would react similarly to achieve the claimed result.
I argue that an extrapolation argument is more plausible if the inventor can articulate the underlying mechanism that connects everything in the claimed genus.
Illustrations
The key issues are the technical scope and substance of the discovery (factors one and two), the nature of the technology (factors three and four), PHOSITA's knowledge and skills (factor five), and the scope of the claimed claim (factor seven).203 That the underlying science is complex and unpredictable means that the patent document must provide PHOSITA with considerable guidance because. -56 ("It is not intended to limit the invention to the precise construction and operation shown and described, and accordingly all suitable modifications and equivalents may be employed which are within the scope of the invention."). his skill level, the predictability of the field, and the teaching provided.221 First, it stands to reason that PHOSITA's skill level required for this kind of rudimentary mechanical invention would be minimal.2 22 Second, the field is predictable -meaning that the underlying technology is guided by well-defined and predictable scientific principles.2 2 3 Thus, a PHOSITA can rely on the knowledge in the field and the teachings provided in the patent document to make a wide range of clamps papers, including those not explicitly described or illustrated.2 24 Thirdly, due to the nature of. invention, knowledge of PHOSITA, and the foreseeability of the field, the inventor need only provide a minimal amount of teaching to enable the broad scope of the claimed claim.
Because the invention is transparent to its inner workings—the springiness and elasticity of the clip binds the paper—it ensures its mechanical capability.226 A PHOSITA who wants to understand the physics involved can turn to the knowledge available in the field to get this information. :. makes the clip do its job is elasticity; or rather the force exerted on the papers resulting from the action of the paper clip spring.
Reinvigorating an Absolute Experimental Use Privilege
The patent statute requires full disclosure of the invention, including details of enabling experiments and technical drawings. The absence of an effective defense against experimental use greatly limits the ability of patent information to "learn" anything. Unless the courts or Congress create a more robust defense to experimental use, the ability of the patent disclosure to teach the public something of value is limited.2 46.
My ultimate goal in reviving the experimental use exception is to encourage knowledge dissemination.254 I hope that the mere existence of the defense will encourage inventors to elucidate mechanism and disclose that information in the patent document.
Complications
Difficult-to-Understand Inventions
Risky Disclosures
For the patentee, mechanistic empowerment would justify broad claim scope265 by strengthening statutory empowerment266 and the closely related written description requirement.267 For society, mechanistic empowerment would provide more detailed disclosures (which in turn would prevent duplication of research efforts and more creative activity during the patent term ).268 Finally, mechanistic empowerment will enable the patent system to better fulfill its goals of promoting technological progress.26 9. But there are several reasons why an inventor may resist disclosure of mechanism - even if is it known For example, explaining how or why a drug works may reveal that it is unsafe.27 1 Such information may devalue the patent or jeopardize FDA approval.272 Thirdly, there is a fear that the characterization of an invention or added discussion about it can limit the scope of the claim .273.
SOC'Y explains that the decision-maker "will scrutinize the patent and often dissect almost every word," as the patent's written description "will be used as a road map for understanding the invention and will be scrutinized for statements that could be argued as the basis for restrictive (or expansive) claim constructions”); Scymore, Teaching Function, supra note 25, at 635-36 (describing several linguistic pitfalls that the patentee must avoid in order to avoid a narrow claim construction).
Incorrect Mechanisms
Everyone would agree that disclosure of the mechanism in a patent document would be ideal - especially for opaque inventions.2 8 4 Again, the ultimate beneficiary of such disclosure is the public.2" Other researchers could immediately build on the details of the mechanism without having to wasting time and resources to find them out themselves.2 86 Thus, this proposal is in line with the stated policy goals of the patent system and could bridge the gap between patent law and scientific norms.
Patents as Technical Literature
Other researchers could immediately build on the mechanistic details without having to waste time and resources figuring them out themselves.2 86 Thus, this proposal is consistent with the stated policy goals of the patent system and could bridge the disconnect between patent law and scientific norms. The scientific community evaluates the quality of research, experimental results, and accompanying interpretation through a legitimization process known as peer review. explains that, in light of the strong norm in science that "scientific knowledge is ultimately a common resource" in the public domain, "the assertion of property rights over inventions is often viewed as immoral.").
See Devlin, supra note 66, at 403 (explaining how the information disclosed in many patent documents is insufficient); Sherkow, supra note 121, at I]t seems clear that patents, especially for complex or statistically bound inventions, routinely disclose information that does not qualify for scientific publication); Mark A.
Reducing the Information Deficit
The inventor is generally a person of extraordinary skill315 who knows more about the invention and technical field than the examiner.3 1 6 Sometimes this leads to the inventor being strategic and not sharing more information than is absolutely necessary to the not meet patentability criteria.3 17 Such behavior compromises patent (examination) quality.318. Elucidation mechanism requires time and effort, which further places the invention on the R&D path generating knowledge along the way.3 1 9 The inclusion of mechanistic information in the patent application gives the examiner a more complete picture of the invention and the environment. Mark Lemley has argued that "the PTO issues many patents that would have been rejected if the examiner had perfect knowledge." Lemley, supra note 314, at 1500.
This not only allows the examiner to do a better job,3 20 but can also strengthen the inventor's case for patentability.
Aligning Patent Law with Scientific Norms
It opposes research efforts that are "too conservative, [and] perhaps even waste societal resources on overly safe technology that could be spent on other human endeavors or social needs."3 3 3. The broader point is that meaningful science is: difficult by its very nature.33 9 In the field of patent law, efforts to elucidate the mechanisms and information resulting from such efforts would go a long way to promoting technological progress.34 0. They tend to promote technological progress particularly well to advance because scientific principles that were apparently well understood and established are suddenly opened wide, allowing "science to advance in areas of understanding previously unimagined." ZIMAN, above note 296, at 217.
34; [U]ncertainty leads to choice, and choice favors attention, which paves the way for creativity." Becca Levy & Ellen Langer, Aging, in I ENCYCLOPEDIA OF CREATIVITY, supra note 332, at 45, 46.
Tensions
356 The Danish Patent and Trademark Office is aware of this problem and seeks to solve it.3 57 But there is another side to it. As previously discussed, critics have long argued that a major contributor to the patent quality problem is that examiners lack sufficient technical information to conduct a rigorous examination.35 Providing mechanistic activation would give the examiner a more complete picture of the invention and do much to address the information deficit. . 360 So I would argue that any additional burden required for the Patent Office to assess mechanistic activation would be small compared to the benefits that would result from it.
Discovery is often considered a key benefit of the patent system, giving the public access to knowledge that can stimulate ideas and promote technological progress.
