Prosecution History Research Articles

Estop Me Now: The Need for Extrinsic Evidence in Rebutting Prosecution History Estoppel via Tangential Amendments

In 2002, in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., the U.S. Supreme Court significantly changed patent law when it rejected the Federal Circuit’s absolute bar approach to prosecution history estoppel. The decision expanded the doctrine of equivalents by creating three exceptions to prosecution history estoppel. Of the three exceptions, however, the Court provided de minimis guidance on the tangential amendment exception, leaving the Federal Circuit to sort out when a narrowing claim amendment is only tangentially related to a claimed equivalent. This ambiguity has resulted in pronounced inconsistency among Federal Circuit panels in deciphering the scope of this exception. Differing judicial approaches in interpreting gaps within the prosecution history record have further compounded this inconsistency. Moreover, the nuanced challenges that patents in complex and evolving fields pose has led to a more lenient application of the exception in these fields compared to patents in other domains. Consequently, the jurisprudence stands in a state of disarray, lacking the essential clarity needed for equitable implementation. This Note argues that to rectify this ambiguity and align with the Festo decision, patentees should be allowed to present extrinsic evidence. Relying solely on intrinsic evidence, which often offers limited and unreliable information, has overly emphasized the notice function of the prosecution record. The Warner-Jenkins presumptions, combined with extrinsic evidence to challenge estoppel through tangentiality, presents a balanced approach, promoting fairness and equity among patentees.

Attrition and the Gender Patenting Gap

Abstract Women are underrepresented in patenting. In this study, we consider differential responsiveness to rejection as a contributor to the gender gap in invention. Leveraging the prosecution histories of almost one million U.S. patent applications and the quasi-random assignment of applications to examiners, we show that women are 3.6-6.9 percentage points less likely to continue in the application process following an early-stage rejection. Conditional on applying for a patent, male-female disparities in the propensity to abandon applications account for more than half of the overall gender gap in issued patents. We provide suggestive evidence that institutional support can help reduce the attrition gap.

Why victim age and co-offending status matter in sexual offending: An analysis of Data First Ministry of Justice Crown Court data

ObjectivesThe study aimed to evaluate the efficacy of victim age and co-offending status classification systems in distinguishing between diverse sexual offenders/offences. This can aid in enhancing comprehension of the correlates and aetiologies of these offences and inform the development of more effective criminal justice policy.
 MethodsThe current study uses Data First Ministry of Justice Crown Court Data from England and Wales between 2013 and 2019 to compare offender and offence characteristics between different typologies of sexual offending categorised using: (1) victim age (child sexual abuse v adult sexual abuse); (2) co-offending status (lone v duo v group); and (3) a combination of victim age and co-offending status (group child sexual abuse v group adult sexual abuse).
 ResultsSignificant differences between the typologies were found across a variety of variables for all three categorisation systems. These included the age, sex, ethnicity, and prosecution histories of offenders; age and ethnic composition of co-offending groups/duos; and the nature of the offences committed. While some findings support previous studies, some diverge from what has previously been reported in the literature. Furthermore, some of the findings provide information on areas which, until now, have received very little attention in the literature (i.e., comparisons of group perpetrated child sexual abuse and group perpetrated adult sexual abuse).
 ConclusionThis study provides support for the application of victim age and co-offending status classification systems to sexual offending as a means of disentangling heterogeneous groups of offenders/offences.

A detailed overview of the patent system

The roots of today’s solid patent system are from the ancient trade system, the introduction, and the evolvement of different intellectual properties. Various international legislations, collaborations, and treaties, as well as the introduction of various acts, rules, and amendments, are responsible for the management and growth of the recent patent system. Novelty, utility, and non-obviousness are the basic patentability criteria. The Indian patent act also defines things that are not inventions under section 3 of the Indian patent act as “statutory subject matter”. The patent system working is described under patent prosecution (filing, publication, examination, opposition) sequentially. “Patent co-operation treaty” (PCT) introduced by the “World intellectual property organization” provides a most effective and economical way of patent application in multiple countries through a single filed application. A general overview of a patent application, drafting of claims, patent analysis, invalidation of patents, Infringement of patents, non-infringing activities, prosecution history estoppel, and remedies under the jurisdiction, are also described hereunder. At present, the number of patent applications filed in India is continuously increasing. Indian patent office is becoming one of the designated search authorities under the PCT. General awareness about patents and intellectual property in all sectors can be improved further.

Predicting the Category and the Length of Punishment in Indonesian Courts Based on Previous Court Decision Documents

Among the sources of legal considerations are judges’ previous decisions regarding similar cases that are archived in court decision documents. However, due to the increasing number of court decision documents, it is difficult to find relevant information, such as the category and the length of punishment for similar legal cases. This study presents predictions of first-level judicial decisions by utilizing a collection of Indonesian court decision documents. We propose using multi-level learning, namely, CNN+attention, using decision document sections as features to predict the category and the length of punishment in Indonesian courts. Our results demonstrate that the decision document sections that strongly affected the accuracy of the prediction model were prosecution history, facts, legal facts, and legal considerations. The prediction of the punishment category shows that the CNN+attention model achieved better accuracy than other deep learning models, such as CNN, LSTM, BiLSTM, LSTM+attention, and BiLSTM+attention, by up to 28.18%. The superiority of the CNN+attention model is also shown to predict the punishment length, with the best result being achieved using the ‘year’ time unit.

AKEBIA THERAPEUTICS INC v FIBROGEN, INC

Abstract H1 Patents – European patents – Pharmaceuticals – Treatment of anaemia – Revocation – Infringement – Construction – Obviousness – Obvious to try – Reasonable expectation of success – Hindsight – Expert evidence – Sequential unmasking – Insufficiency – Excessive claim breadth – Uncertainty – Identification of technical contribution – Principles of general application – Plausibility – Undue burden – AgrEvo obviousness – Equivalence – File prosecution history – Process limited product claims – Indirect infringement – Means relating to an essential element of the invention – Whether suitable for putting and intended to put invention into effect – “Off-label” use – State of mind of defendants – Intentions of prescribing clinicians – Quia timet claims – Whether stay of infringement claim appropriate

The Canada Trademarks Dataset

This article discloses and describes a new research dataset representing the Canadian Intellectual Property Office's historical archive of trademark applications. This individual‐application‐level dataset includes all applications since approximately 1980, and many preserved applications and registrations dating back to the beginning of Canada's trademark registry in 1865, totaling over 1.6 million application records. It includes comprehensive bibliographic and lifecycle data; trademark characteristics; goods and services claims; identification of applicants, attorneys, and other interested parties (including address data); detailed prosecution history event data; and data on application, registration, and use claims in countries other than Canada. Both the dataset and the code used to build and analyze it are presented for public use on open‐access terms at https://doi.org/10.5281/zenodo.4999655. This article uses the dataset to generate novel descriptive analyses of the performance of Canada's trademark registration system and the behavior of applicants for registration, both independently and in comparison to the United States and Australia. These analyses suggest that Canada's trademark registration system is substantially underperforming other nations with respect to efficiency of examination, and that recent statutory and regulatory changes in Canadian trademark law may have the effect of masking or even exacerbating this underperformance while decreasing the reliability of the Canadian trademark registry as an authoritative guide to trademarks used in Canadian commerce.

The Perplexities of Patent Prosecution History: Procedure over Principle?

What is it about patent legislation? Speaking for the Supreme Court in 1981, Justice Dickson, later Chief Justice, said of the disclosure provision in the Patent Act (now subsection 27(3)) that: [i]t gives the impression of a melange of ideas gathered at random rather than an attempt to enunciate, clearly and concisely, a governing principle or principles. This is perhaps understandable in that the section is the product of amendment over a period of many years. The language simply does not lend itself to a tight, literal interpretation. It is, and should be treated as, a parliamentary pronouncement, in general terms. Nearly 40 years later nothing much seems to have changed. Take the new section 53.1 of the Patent Act that took effect in 2019. It was not the product of amendment over many years, nor did it present a random melange of ideas. It had only one idea. That was to reverse a 2000 decision of the Supreme Court in Free World Trust v Electro Sante Inc and allow what transpires in the Patent Office (“PO”) during the processing of a patent application — its “prosecution history” — potentially to affect the scope of the patent eventually granted. Subsection 53.1(1) could have simply said that: i.e., a patent’s prosecution history is relevant and admissible to aid in the construction of a patent claim or specification. Instead its drafting suffers from the malady highlighted by Justice Dickson. Its governing principles are not clearly and concisely stated. They seem rather to be “secreted in the interstices of procedure.” To give the section “a tight, literal interpretation,” as some courts have already done, therefore seems inappropriate. That approach runs counter to the Interpretation Act’s direction that all statutory provisions are “deemed remedial” and so require “such fair, large and liberal construction and interpretation as best ensures the attainment of [their] objects.” Patent legislation is not immune from these strictures. An ineptly drafted provision may indeed sometimes need to be treated the way Justice Dickson treated subsection 27(3), as “a parliamentary pronouncement, in general terms.”

What Litigators Can Teach the Patent Office About Pharmaceutical Patents

Pharmaceutical patents listed in the FDA’s “Orange Book” are some of the most valuable patents in the world. Accordingly, for this valuable subset of patents, it is paramount that the Patent & Trademark Office (PTO) correctly issue valid patents and preclude invalid patents from issuing. In this paper, we study what happens to those patents in litigation, reporting the results for every Orange Book patent case that resulted in a merits decision. We find that about 25% of active Orange Book patents were invalidated in court. Since these invalid patents could wrongly increase the costs of prescription drugs, we investigate what happens during prosecution of these patents at the PTO. Our study is the first to link the prosecution of Orange Book patents directly to litigation outcomes. Our goal is to determine if there are ways to identify and prevent the issuance of these later invalidated Orange Book patents. We find that litigated Orange Book patents have unique characteristics that distinguish them from other pharmaceutical patents. They are issued by a relatively small number of examiners. Most litigated patents (90%) are “secondary” patents – patents on smaller tweaks to an existing drug rather than a patent on a new chemical. The owners of these later-litigated patent applications treat them very differently than they do other patents in the same field. They are part of large patent families, suggesting that the applicants are trying to build a patent fence around a known product. They frequently employ a procedural device known as “Track One” to obtain quicker patent prosecution. They are more likely to be subject to rejections based on double-patenting. When initially rejected by the patent examiner, owners of these applications are more likely to fight back rather than amend their claims. All of this suggests that applicants enter prosecution with these patents knowing that they are important and likely destined for litigation, and that they are deliberately creating patent “thickets” to make it harder for generics to enter the market. Remarkably, we find that while patent examiners already have more time to spend on Orange Book patents than on other patents, the prosecution history of many of these invalidated patents are identical. That is, many of these invalidated patents have the same assignee, the same examiner and the same prosecuting attorney cut and paste rejections as well as responses, thus creating identical or very similar prosecution histories. We also find that while the patents that end up being litigated are clearly distinguishable from other pharmaceutical patents during patent prosecution, there is little difference in the PTO between the patents that end up surviving a court challenge and the ones that are invalidated. Our data offer important guidance for reforming the process of prosecuting Orange Book patents. We can and should take advantage of advance knowledge about the importance of these patents to give them a more thorough examination early on. At the same time, the experience with cut-and-paste rejections suggests that we cannot simply give examiners more time and hope that they will do a more thorough job. That not only helps inform the policy suggestions we offer, but it sheds light on a long-standing academic debate about how much time and money we should spend examining patents. Further, our data highlight the importance of secondary patents and patent thickets in Orange Book litigation. We offer a number of suggestions to simplify and streamline patent prosecution and litigation to make it harder to exclude generic entry with a thicket of bad patents.

Effect of Cross-Border Prosecution History Estoppel in India

In a situation where there is a possibility of application of Doctrine of equivalents, in such a situation, the defendant in a particular case can defend himself through the mechanism of Prosecution History Estoppel, on account of which the doctrine of equivalents should not be made applicable. So, during the prosecution of a patent, the patentee may start with a broad claim which may be objected by the controller or during the process of examination. In such a situation, in due course of the opposition raised by the authorities, the patentee may make certain amendments through which the patentee might actually end up in narrowing down the claim. So, to understand prosecution history estoppel, the consideration of the actions that have been initiated by the patentee during the prosecution of the patent becomes necessary. This research paper is going to deal primarily with the nature and extent of the Doctrine of Prosecution history estoppel and it also seeks to examine the impact of variations in the claim language of the corresponding foreign country on the patent litigation in India. Moreover, this paper also seeks to bring clarity in the mechanism of Patent infringement along the operation of Prosecution History estoppel.

Conservative TV and Corporate Social Responsibility

We study the impact of exposure to conservative media on firms’ CSR activities using the quasi-natural expansion of Sinclair Broadcast Group: the largest conservative broadcasting network in the U.S. local TV markets. In a difference-in-differences setting, we find that firms significantly reduce CSR activities after exposure to Sinclair TV in all three dimensions: environmental, social, and governance. Consistent with ideology as a driver of our results, the effect is stronger when there is more propensity for the audience to accept Sinclair messaging: for example, for firms belonging to the gun, tobacco, and gambling industries, when Sinclair acquires more Fox-affiliated TV stations, and for those headquartered in Republican-leaning counties. Cross-sectional evidence also suggests stronger effects associated with lower institutional ownership, past prosecution history, or younger CEOs. Related, we find no impact of Sinclair exposure on firms’ accounting performance measured by ROA, but a negative impact on their Tobin’s Q and stock returns.

Patenting Fast and Slow: Examiner and Applicant Use of Prior Art

Previous studies have shown that an applicant’s ability to obtain a patent is inexorably linked to the random assignment of a patent examiner. However, not all patent examiners are created equal. Some patent examiners allow patent applications quickly within just one or two Office Actions resulting in only a few months of substantive patent prosecution. In contrast, other patent examiners constantly reject patents applications, which can result in unnecessarily delaying prosecution and years of substantive patent prosecution. This study focuses on how different examiners use prior art rejections to prolong or compact prosecution. Prior art rejections are one of the most important hurdles to obtaining a patent. Specifically, the use of prior art rejections directly impacts the time and effort it takes to obtain a patent. Overcoming anticipation and obviousness rejections are usually the most important and difficult obstacles to overcome before obtaining a patent. This empirical study focuses on how different types of examiners (i.e., fast/high volume versus slow/low volume) use prior art rejections to either compact or delay prosecution. Since patent examination is dependent on both examiner and applicant behavior, this study also evaluates how applicants respond to these prior art rejections to also prolong or compress prosecution. Unlike many studies, this is the first paper that evaluates patent quality based on both individual examiner characteristics as well as applicant behavior at the patent prosecution level. In sum, high volume, average volume and low volume examiners issued a patent in approximately 1.64 years, 3.07 years, and 5.85 years respectively. Thus, high volume examiners issue patents almost twice as quickly as average volume examiners and more than three times as fast as low volume examiners. This large difference in time can represent a huge investment in both capital and time for the applicant as well as the PTO. Additionally, this study finds that low volume examiners reject applications based mainly on obviousness, issuing over four times as many obviousness rejections per office action compared to high volume examiners. Furthermore, low volume examiners issue five times as many 102(a)/(g)/(e) rejections and two times as many 102(b) rejections. And applicants most commonly make a “missing element” argument to traverse a slow examiner’s 102(a)/(g)/(e) rejection at three times the rate of a fast examiner. This type of traversal strategy relies on the examiner’s misunderstanding of either the art or the claimed invention. Similarly, applicants also use the “missing elements” argument to traverse a slow examiner’s 103 rejection at five times the rate of a fast examiner. Finally, applicants are also three times more likely to use a “teaching away” or “unexpected results” argument to traverse a slow examiner compared to a fast examiner. Both of these arguments can again rely on either the examiner’s misunderstanding of the prior art or a misunderstanding of the claimed invention. This study demonstrates that different types of examiners use different strategies to maximize their “counts.” Specifically, low volume examiners will generally reject applications creating lengthy prosecution histories while forcing the applicant to narrow claims, while showing a misunderstanding of either the prior art and/or the claimed invention. In contrast, high volume examiners will usually only make one rejection then allow the case, thus creating a small prosecution history with only small amendments to the claims.

Patenting Fast and Slow: Examiner Rejections and Applicant Traversals to Non-Prior Art Rejections

It is no secret that some Patent and Trademark Office (PTO) examiners operate more quickly than others. Previous studies have shown that an applicant’s ability to obtain a patent is inexorably linked to the random assignment of a patent examiner. However, not all patent examiners are created equal. Some patent examiners allow patent applications quickly within just one or two Office Actions resulting in only a few months of substantive patent prosecution. In contrast, other patent examiners constantly reject patents applications, which can result in unnecessarily delaying prosecution and years of substantive patent prosecution. This study focuses on how different examiners use prior art rejections to prolong or compact prosecution. This study demonstrates how two different populations of patent examiners (slow vs. fast) can achieve and even exceed their production goals by either an allowance or rejection strategy. The allowance strategy relies on granting a large number of applications with only a few rejections and usually within one or two office actions. The rejection strategy relies on rejecting a large number of applications using a wide variety of different rejection types. Unlike many studies, this is the first paper that evaluates patent quality based on individual examiner characteristics at the patent prosecution level focused on non-prior art rejections. In particular, high volume biotechnology examiners reject applications based mainly on obviousness type double patenting and indefiniteness rejections, while issuing fewer obviousness or anticipation type rejections. In contrast, low volume examiners reject applications based mainly on obviousness rejections. Furthermore, number of pages in the low volume examiners’ office actions are more than three times more than high volume examiners. Thus, low volume examiners are writing longer office actions and rejecting based on a wide variety of statutory authorities, while high volume examiners are writing shorter office actions based mainly on obviousness type double patenting issues. We find that different types of examiners use different strategies to maximize their “counts” in order to keep their production numbers high. Specifically, low volume examiners will generally reject applications creating lengthy prosecution histories while forcing the applicant to narrow claims. In contrast, high volume examiners will usually only make one rejection then allow the case, thus creating a small prosecution history with only small amendments to the claims. This results in a dramatic range of patent prosecution times as well as a large difference in claim scope. Slow examiners take approximately 5.85 years to issue a patent while fast examiner only take approximately 1.64 years. The added four years of prosecution greatly increases direct costs to the inventor (both in PTO and attorney fees) as well as indirect costs such as reduced growth in employment, sales and follow on innovation. Finally, there may be harms to not only the inventor, but to rivals in the form of diminished access to external capital and slower growth of follow on innovation.

Ajinomoto v. ITC, the Doctrine of Equivalents, and Biomolecule Claim Limitations at the Federal Circuit

The doctrine of equivalents (DOE) allows a court to hold an accused infringer liable for patent infringement in spite of the fact that the accused product (or process) does not fall within the literal scope of the asserted patent claim(s). Prosecution history estoppel (PHE), which can be triggered by a narrowing amendment of a patent claim during patent prosecution, or by arguments made during prosecution, imposes significant constraints on the ability of a patentee to assert the DOE. The 1990s and early 2000’s saw a proliferation of legal commentary postulating that the DOE would play an important role in protecting inventions arising out of biotechnology, particularly biomolecules (i.e., proteins and DNA/polynucleotides), and stressing the need for biotechnology patentees to avoid amendments or arguments during patent prosecution that might trigger PHE. In fact, however, prior to 2019 the Federal Circuit does not appear to have issued an opinion finding infringement under the DOE in a case in which the relevant claim limitation recites a biomolecule. It finally happened in Ajinomoto Co. v. Int'l Trade Comm'n, with a divided panel of the Federal Circuit holding that a claim limitation reciting a DNA sequence, defined in terms of the amino acid sequence of a protein encoded by the sequence, was infringed under the DOE by a DNA sequence encoding a protein having a different (but similar) amino acid sequence and equivalent function. This article begins with a brief overview of the DOE and PHE, and explains why DOE was at one time seen as particularly critical for the enforcement of patent claims reciting biomolecules. It then summarizes and analyzes the results of a Westlaw search designed to identify any and all Federal Circuit decisions applying the DOE and/or PHE to a claim limitation reciting a biomolecule, including the court’s most recent decision Ajinomoto.

Why have few journalists been prosecuted for incitement to war crimes?

Why have few journalists ever stood in the dock for incitement to violate international humanitarian law? Their work as propagandists has been essential to governments committing war crimes, crimes against peace and genocide. The answer matters both because impunity emboldens further violation and because the traditional distinctions between news reporting, news commentary and propaganda, and between journalists, commentators and activists, have eroded due to global news markets and social media. After presenting a brief history of prosecutions and non-prosecutions to establish the relative infrequency of prosecutions, this article reviews possible explanations, several of which are revealed in the foregoing historical survey. This investigation will suggest a multi-causal explanation that leans heavily on assumptions about the privileged position of journalists in liberal societies.

Determinants of Patent Quality: Evidence from Inter Partes Review Proceedings

We study the determinants of patent “quality” — the likelihood that an issued patent can survive a post-grant validity challenge. We do so by taking advantage of two recent developments in the U.S. patent system. First, rather than relying on the relatively small and highly-selected set of patents scrutinized by courts, we study instead the larger and broader set of patents that have been subjected to inter partes review, a recently established administrative procedure for challenging the validity of issued patents. Second, in addition to characteristics observable on the face of challenged patents, we utilize datasets recently made available by the USPTO to gather detailed information about the prosecution and examination of studied patents. We find a significant relationship between validity and a number of characteristics of a patent and its owner, prosecutor, examiner, and prosecution history. For example, patents prosecuted by large law firms, pharmaceutical patents, and patents with more words per claim are significantly more likely to survive inter partes review. On the other hand, patents obtained by small entities, patents assigned to examiners with higher allowance rates, patents with more U.S. patent classes, and patents with higher reverse citation counts are less likely to survive review. Our results reveal a number of strategies that may help applicants, patent prosecutors, and USPTO management increase the quality of issued patents. Our findings also suggest that inter partes review is, as Congress intended, eliminating patents that appear to be of relatively low quality.

Book Review: Historical Origins of International Criminal Law: Volumes 115

This book review examines a five-volume set published by the Torkel Opsahl Academic EPublisher and edited by Morten Bergsmo, Cheah Wui Ling, Yi Ping, Song Tianying, and Klaus Rackwitz. The first three volumes retell the genesis story of international criminal law from stereoscopic perspectives. In addition to new research on Nuremberg and Tokyo, Volume 1 includes some of the less celebratory accounts from the post-WWII period and provides visibility into the hundreds of less salient trials that took place in the European and Pacific theaters before domestic authorities, military tribunals, and people’s courts. Volume 2 of the series presents rich accounts of national efforts at enforcing international criminal law around the world, including trials in China and the then-Soviet Union, where a prolific history of postwar prosecutions belies contemporary reticence about the project of international criminal justice. Contributions by national criminal law experts in Volume 3 reinforce the centrality of complementarity in the ICC system. Volume 4 takes up intersecting questions of criminal procedure and investigative methodologies, such as the use of demographic analysis to prove international crimes and the contributions of fact-finding commissions to accountability exercises. Volume 5 is devoted to the capstone event in the modern history of international criminal law: the establishment of the ICC. This volume contains copies of, or adaptations from, a series of memoranda solicited by the series main editor from a range of experts as the ICC was being created. These contributions track the myriad logistical, strategic, and legal decisions — from the sublime to the mundane — that must be resolved to build and operate an entirely new judicial system virtually from scratch. This final volume also features more praxis-oriented chapters, touching upon best-practice methodologies for war crimes investigations, including evidentiary analysis and forensics, by some of the world’s great international criminal law practitioners. The series will be an essential resource for both academics and practitioners interested in the history of international criminal law as a distinct field and also of the early days of the ICC, the world’s first permanent international criminal court.

Cast back into the sea of uncertainty—A doctrine of equivalents in UK law? The Supreme Court ruling in Actavis v Eli Lilly

Nicole Jadeja is a patent litigation partner in the Intellectual Property team at Fieldfisher LLP. Hannah Smith-Willis is an associate in the team and Heidi Hurdle a senior professional support lawyer. This article analyses the key points of the landmark UK Supreme Court decision in Actavis v Eli Lilly.1 In taking a position contrary to the High Court and Court of Appeal, holding that a claim to pemetrexed disodium covers other pemetrexed salts and the free acid, the Supreme Court issued a decision that will have far-reaching ramifications on patent infringement assessments. The authors discuss how the Supreme Court has struck a balance between rewarding patentees for their contribution to the art, by protecting them against the ‘unscrupulous copyist’2 and the public interest in promoting competition. The article also considers the implications of introducing a doctrine of equivalents into UK patent law and the Supreme Court’s approach to using the prosecution history as an aid to determining the scope of patent protection.

Continuing the Cold War tradition and suppressing contemporary dissent

The Defence Special Undertakings Act 1952 (Cth) is a draconian piece of Cold War legislation originally passed to provide security for British atomic testing in Australia. There are only two known prosecutions under the Act, both involving Christian pacifists entering the Pine Gap prohibited area. In 2007, the first ever convictions under the Act were overturned on appeal. A second prosecution has now commenced. This article considers the history and context of the current prosecutions and contends that the Act is being used to suppress contemporary dissent in a period in which the Australian government already faces criticism of its treatment of the right to protest.

Reasonable Certainty & Corpus Linguistics: Judging Definiteness after <I>Nautilus</I> & <i>Teva</i>

In Nautilus (2014), the Supreme Court held “that a patent is invalid for indefiniteness if its claims...fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” We don’t require perfect clarity because, as Festo (2002) highlights, patentees can’t achieve it. We don’t launch a post hoc judicial salvage operation to rescue slipshod text because, as the functional-claiming cases from the 1930s and 1940s highlight, others can’t adequately plan around it. Reasonably certain notice, then, is just right: § 112 “require[s] that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus. How then, should the Patent Office or the courts determine whether a given bit of disputed claim language is reasonably certain, for the protection of patentee and public alike? Reasonableness — a prudent point of balance between extremes — depends on context. And in Teva (2015), the Court confirmed that claim construction disputes, including claim definiteness, can turn on factual findings about a term’s meaning to artisans at a particular moment in time. This paper explores the contours of reasonably certain notice, using insights from negligence law’s reasonable care standard and procedural due process law’s reasonable notice standard. The upshot: To fairly judge the reasonableness of the notice that patent claim language provides, we must embed the claim language in more robust objective data about language usage than we currently consider — data about typical usage in the relevant art at the time the inventor applied for patent rights. Happily, we can adapt existing tools from corpus linguistics to analyze usage patterns, if we construct text corpora that are fit for purpose. The statutory demand for reasonable certainty, both at the Patent Office and in the courts, should prompt us to put these linguistics tools to work in patent law.