Joshua D. Sarnoff

The Patent System and Climate Change

The amount of greenhouse gas emissions and consequent climate changes and social responses will depend substantially upon the rapid development and widespread dissemination of a wide variety of new mitigation and adaptation technologies. The international approach adopted by the UN Framework Convention on Climate Change in Cancun will focus the worldwide innovation system more closely on private funding and markets, and thus on the acquisition of patents at the front end of the coming innovation pipeline. The choice to rely on private markets and patents is highly debatable. But it is certain to create substantial tensions for the patent system to assure low-cost access to patented technologies at the back end of technology transfer needs. This article first describes the uncertain case for relying on the patent system, the tensions that will result from the unbalanced worldwide patenting of climate change technologies, the magnitude of the coming innovation needs, and the measures that have been proposed to limit the effect of the patent system on development of and access to climate change technologies. The article then describes six proposals for maximizing the innovation potential of the patent system while minimizing the costs of access in both the developed North and the developing South. The first set of proposals focuses on protecting research, directing patent incentives towards where they are most needed, and assuring inter-operability of innovations with patented technologies. The second set of proposals focuses on retaining and using ownership powers (and making better use of regulatory powers that look very similar) to better assure widespread access and low-cost licensing of patented technologies. The final proposal addresses expanding access to patented technologies that are voluntarily supplied at low cost to certain markets. These measures are more likely to be employed, to be more effective, and to be perceived as fairer and as less harmful to ex-ante innovation incentives than the alternative, ex-post regulatory actions that will remain available.

Patent Claims and Patent Scope

Patent scope is one of the important aspects in the debates over “patent quality.” The purported decrease in patent quality over the past decade or two has supposedly led to granting patents of increased breadth (or “overly broad” patents), decreased clarity, and questionable validity. Such patents allegedly diminish the incentives for innovation due to increased licensing and litigation costs. However, these debates often occur without well-defined measurements of patent scope. This paper explores two very simple metrics for measuring patent scope based on claim language: independent claim length and independent claim count. We validate these measures by showing that they have explanatory power for several correlates of patent scope used in the literature: patent maintenance payments, forward citations, the breadth of patent classes, and novelty. Using these data, we provide the first large-scale analysis of patent scope changes during the examination process. Our results show that narrower claims at publication are associated with a higher probability of grant and a shorter examination process than broader claims. Further, we find that the examination process tends to narrow the scope of patent claims in terms of both claim length and claim count, and that the changes are more significant when the duration of examination is longer.

Lessons from the United States in Regard to the Recent, More Flexible Application of Injunctive Relief

This concise and detailed Handbook addresses some of the most complex issues raised by the implementation of the TRIPS Agreement globally. Among other themes, the Handbook explores the applicability of GATT jurisprudence for the interpretation of the Agreement’s provisions. It also considers key issues relating to the enforcement of intellectual property rights, such as border measures and injunctive relief. Teamed with the first volume – Research Handbook on the Protection of Intellectual Property under WTO Rules – this analysis is supplemented by a thorough review of the most important cases on TRIPS decided under the WTO dispute settlement mechanism.

Abolishing the Doctrine of Equivalents and Claiming the Future After Festo

This article argues that the Supreme Court or Congress should abolish from patent law the modern doctrine of equivalents articulated in Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950), and extended to later-arising technological equivalents in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), and Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002). The modern doctrine of equivalents lacks theoretical justification, imposes high costs on society and likely impedes innovation, and needlessly conflicts with other patent law doctrines and complicates patent law procedures. These adverse effects are cumulatively imposed over time in regard to every issued and litigated patent for its entire term. The doctrine of equivalents should be restored to its historic form, limiting patent protection to the scope of application of the construed language of patent claims. Any residual fairness concerns would be addressed better by non-literally interpreting claim language than by applying the modern doctrine. The Supreme Court or Congress also may need to impose additional limits on the ability to claim later-arising technologies, in order for patent law to serve its Constitutional purpose of promoting progress. This article is the third in a series of articles relating to the doctrine of equivalents. These articles seek to encourage and to set the context for future discussions of abolishing the modern doctrine of equivalents and of claiming later-arising technologies. The first article, to be published in the Federal Circuit Bar Journal, describes conflicts among the modern doctrine and prosecution history estoppel and additional implied disclaimer and claim scope doctrines. It explains how the modern doctrine improperly extends patent protection to equivalents that could not validly be claimed. The second article, to be published in two parts in the Journal of the Patent and Trademark Office Society, discusses the historic doctrine of equivalents, the Supreme Courts radical reshaping of the doctrine in Graver Tank, and historic limits on claiming later-arising technologies. The second article explains how the modern doctrine of equivalents conflicts with the requirement for distinct claims adopted in the 1870 Patent Act, was adopted by the Supreme Court without statutory support, and was neither codified nor impliedly ratified by Congress in the 1952 Patent Act.