Patent Claims Research Articles

Necessity is the Mother of Inventing Around: Edison’s Lamp Patent

While some surveys and court cases refer to the practice of “invention around” or “design around,” it is an often-overlooked as a means by which patents promote economic development through competition. We provide the first detailed empirical study of inventing around patent claims in a study of how the enforcement of Edison’s incandescent lamp patent in 1891-1894 stimulated a surge of patenting. Most of these patents disclosed inventions around to that circumvented the Edison patent claims by creating substitute technologies to enable participation in the market. Some of these patents introduced important new technology that became prior art for new fields. This indicates that invention around patents contributes to dynamic efficiency and that it is not necessarily duplicative research. Contrary to widespread understanding, the Edison lamp patent did not suppress technological advance in electric lighting. The market position of General Electric (“GE”), the Edison patent- owner, weakened through the period of this patent’s enforcement.

Prevalence of Weak Patents in the United States and its Consequence for Invention

Enhancing patent quality is a continuing agenda in the patent policy domain for the concern that a patent with questionable validity (i.e., weak patents) distorts incentives for innovation. This study examines whether issuing a weak patent discourages the patent owner’s subsequent inventions and patent maintenance for the uncertainty in the validity of the patent claims. To this end, we propose a method of identifying weak patents. Our method reveals that about 13% of US patents filed from 2001 to 2010 are weak patents. Our multivariate regression analysis finds evidence showing that patent owners develop more subsequent inventions for a weak patent than they do for a non- weak patent. Additional analysis on the patent renewal finds that a weak patent is more or evenly likely to be maintained than a non-weak patent is. These findings indicate that the current patent system lacks the capability of eliminating weak patents ex-post. The concept of patent portfolio and the exclusionary nature of patents explain these findings. Implications for patent policymakers and firms are discussed.

Mapping general purpose technologies with patent data

This article develops a three-dimension indicator to capture the main features of General Purpose Technologies (GPTs) in patent data. Technologies are evaluated based on their scope for improvement and elaboration, the variety of products and processes that use them, and their complementarity with existing and new technologies. Technologies’ scope for improvement is measured using patenting growth rates. The range of its uses is mapped by implementing a text-mining algorithm that traces technology-specific vocabulary in the universe of all available patent documents. Finally, complementarity with other technologies is measured using the co-occurrence of technological claims in patents. These indicators are discussed and evaluated using widely studied examples of GPTs such as Electric & Electronic (at the beginning of the 20th century) and Computer & Communications. These measures are then used to propose a simple way of identifying GPTs with patent data. It is shown there exist a positive association between the rate of adoption of GPTs in sectors, measured in terms of the number of GPT patents, and their growth.

Patent classification by fine-tuning BERT language model

In this work we focus on fine-tuning a pre-trained BERT model and applying it to patent classification. When applied to large datasets of over two million patents, our approach outperforms the state of the art by an approach using CNN with word embeddings. Besides, we focus on patent claims without other parts in patent documents. Our contributions include: (1) a new state-of-the-art result based on pre-trained BERT model and fine-tuning for patent classification, (2) a large dataset USPTO-3M at the CPC subclass level with SQL statements that can be used by future researchers, (3) showing that patent claims alone are sufficient to achieve state-of-the-art results for classification task, in contrast to conventional wisdom.

Looking at Patent Law: Defining the Meaning and Scope of Claims through Claim Construction; Insights from the Lithium Battery Patent Infringement Case

In this installment of the “Looking at Patent Law” series, we discuss the legal basis for determination of the meaning and scope of patent claims. The process begins with the inventor and the inventor’s interaction with patent council in drafting the patent application. Further clarification is added during the interaction of the inventor/patent attorney and the USPTO examiner during the prosecution of the patent application. A 1996 Supreme Court ruling stated that the determination of the meaning and scope of claims is a matter of law and decided by the courts. Consequently, patent infringement cases consist of two steps: 1.) determination of the meaning and scope of the claims during a Markman hearing (named after the Supreme Court case), followed by 2.) a jury trial deciding infringement. We conclude this article with a review of the Markman hearing in a lithium battery patent infringement case. With this article, we hope to demystify the patent claiming and interpretation process and better prepare electrochemical and solid state scientists, engineers, and technologists to interact with their patent counsel regarding their inventions.

Patents for NLP Software: An Empirical Review

Natural language processing (NLP) patents are one of the fastest growing niche segments in the technology patent marketplace. NLP technologies power the latest in Artificial Intelligence (AI) applications. For example, NLP technology supports Apple’s Siri, Amazon’s Alexa, and Facebook’s friend recommendation system. Yet, while the literature on software patents is visibly scaling – the literature specifically focused on NLP patents is non-existent. This Article draws on a growing body of computational linguistics, intellectual property, and technology law scholarship to provide novel NLP patent analysis and critique. Further, this Article contributes the first empirical NLP patent review, including novel software descriptions, market modeling, and legal analysis relating to patent claims. First, this Article discusses the two main technical approaches to developing NLP software. Second, this Article models an evolving NLP patent dataset, offering economic insights, legal claims analysis, and patent valuation strategies.

Read the full patent or just the claims? Mitigating design fixation and design distraction when reviewing patent documents

An approach to avoid patent infringement is to review patent documents prior to ideation. However, doing so can lead to design fixation and design distraction. Hence, this paper examines whether reviewing just the patent claim instead of the full patent document can mitigate design fixation and design distraction. 329 undergraduate engineering students were involved in this study. It was found that reviewing just the patent claim can reduce fixation on the design feature reviewed but not on the function of the design feature. In addition, reviewing just the patent claim did not reduce design distraction. The findings of this work can be used to shape the way patent documents are reviewed.

Myriad post-Myriad

Abstract The US Supreme Court’s 2013 decision, holding patent claims to isolated, endogenous deoxyribonucleic acid (DNA) sequences to be invalid, seemed to have limited negative impact on Myriad Genetics whose patent on the isolated BRCA1 and BRCA2 genes were at the heart of the case. This article explains this minimal impact in two ways. First, the Court’s decision still left synthetic DNA patentable, leaving that as a fruitful source for commercialization by companies like Myriad. The Federal Circuit’s subsequent decision, however, invalidated Myriad’s product claims over the synthetic polymerase chain reaction primers based on the isolated DNA sequences. Second, the Court’s decision did not address the patentability of mined genetic data for diagnostic and therapeutic purposes. This field of genetic data mining is precisely where Myriad has moved in its patenting activity.

Wonders of technicality: technical features, technical problems, functional chains and a review of the Comvik approach

A patent is an industrial property right that protects a technical solution for a technical problem. An invention is a technical teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result.1 Patent claims legally define what technical subject matter should be protected by listing its technical features required for solving an associated technical problem. Only products that incorporate all of these features actually infringe the granted patent. Thus, patent claims are an essential part of every patent application for providing the legal infringement requirements. Actual patent claims often contain both technical and non-technical features. This is often the case in patent applications for computer-implemented inventions. In granting procedures, the European Patent Office (EPO) often disregards the non-technical features in claims when assessing the inventive step. This follows the Comvik approach2 that deals with what happens when a claim includes both technical and non-technical features. ... Currently, most people believe that a particular feature is either technical or non-technical merely by its nature.3 For example, a nail or a computer is always regarded as a technical feature, whereas a vase is seen as a non-technical feature in the form of an aesthetic creation.4 This article critically analyses the Comvik approach, sheds light on whether features can be classified as technical or non-technical and explains functional chains as a measure to overcome the Comvik approach. It offers a hands-on guide to improve the drafting of patent applications and to practically eliminate Comvik objections regarding non-technicality of features.

Chief Justice Webster

The Supreme Court has a love affair with the dictionary. Half of its decisions in the 2018 term cited a dictionary, often as the primary or exclusive means of defining a term in the statute. The Solicitor General may long have been the “tenth Justice,” but in the 21st century the Chief Justice of the Supreme Court may as well be, not John Roberts, but Noah Webster. The Court’s obsession with dictionaries as the arbiter of statutory meaning is a recent phenomenon. A review of cases from 50 or 100 years ago reveals no such focus. The Court’s increased use of dictionaries may stem from the idea – very much in vogue today in some quarters – that courts are not to make law but simply “call balls and strikes.” Looking up a term in the dictionary can seem like the height of judicial restraint. A court that does so isn’t consciously or subconsciously imposing its own ideology on a statute; it’s just turning to a trusted neutral source. That impression is misleading. Dictionaries are not the neutral, commonly-accepted panacea the Court seems to suppose. In this Article, I discuss a historical test case for the use of dictionaries to interpret legal documents. In the early 2000s, patent law flirted with the use of dictionaries to define the terms of patent claims, a process akin to statutory interpretation. The Federal Circuit (the national patent court) unanimously abandoned that experiment after only three years, for a simple reason: it was a disaster. The lessons of patent law’s brief flirtation with dictionary primacy in claim construction suggest that it’s a bad idea to turn to dictionaries to interpret statutes. That’s true for several reasons. Dictionaries aren’t designed to give what courts want: a single definitive meaning (or complex of considerations) that define what the law is. Dictionaries deliberately define terms expansively and in self-contradictory ways, seeking to capture all possible meanings of a term, not to pick among them. They don’t take legal nuance into account, and they can’t incorporate a background pattern of behavior or centuries of precedent against which Congress may have adopted a term. The use of legislative history is often attacked as a cover for judicial activism, but in fact it is the dictionary that provides the easiest cover for activist decisions that depart from Congressional intent and precedent. Dictionaries can literally justify any plausible meaning of a term. Courts that turn to them are doing exactly what they purport to disdain: picking the meaning of a statute based on their own personal preferences.

AI Patents: A Data Driven Approach

The global technology market exceeds $12 trillion. The market’s fastest growing niche is artificial intelligence (AI). Yet, while the literature on technology patents is theoretically robust - the literature on AI patents is relatively uncharted. As a consequence, lawyers, scholars, and commentators often refer to AI as a black box – arguing not even advanced computer scientists understand how it works. But all AI technology is written with formal logic, mathematics, and computer code. Thus, all AI systems are syntactically describable, repeatable, and explainable. In other words, there is no black box. This Article empirically analyzes the unique intellectual property strategy decisions technology firms face by introducing a dataset including four specific types of machine learning patents: deep learning, reinforcement learning, deep reinforcement learning, and natural language processing. Dataset charts, models, and graphs, provide insight into market alcoves, while analysis of each machine learning technology shines a light through the “black box.” Further, patent claims analysis reveals significant overlap in patented AI technologies. In sum, this Article draws on a growing body of informatics, intellectual property, and technology scholarship to provide novel patent analysis and critique.

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.

What do U.S. biopharmaceutical companies get from patents and research and development spikes for their dynamic corporate performance?

This paper investigates how patents and research and development (R&D) spikes affect the corporate performance of 863 firm‐year observations of U.S. biopharmaceutical companies. First, a dynamic data envelopment analysis model is adopted to evaluate the performance of the U.S. biopharmaceutical companies. Then, ordinary least squares regression is used to explore the effects of three patent‐related variables (patent counts, citations, and claims) and R&D spikes on corporate performance. This study finds positive impacts of patent counts, citations, and claims on corporate performance. In addition, the results show that R&D spikes have negative contemporaneous effects and time‐lagged effects on corporate performance.

A corpus study of the diachronic development of Chinese patent terminologies

ABSTRACT Corpus-based approaches to the study of language and the compilation of a corpus are increasing at an unprecedented rate in recent years. The majority of the corpus was compiled from newspaper articles or by combining literatures with non-literatures. Corpus in specialized fields is mostly related to legal language, with very few monolingual or parallel corpora in the technical field, not to mention diachronic corpus. The building of a corpus and corpus-based studies facilitates terminologists, translators, researchers, and teachers in specialized English a basis in their analysis and interpretation of specialized terminologies. Diachronic corpus helps us understand the development of language and explores the changes and uses of specialized language in a specific field, in order to provide terminologists and translators a reference when defining specific terms. This study compiles a diachronic corpus of Chinese patent claims and abstracts to explore the linguistic features of the Chinese patent terminologies, the development, and variations of patent terminologies. With the diachronic corpus of Chinese patent claims, the development of patent terminologies can be analyzed. The patent is a strong indicator of the economic power of a country. The authentic material collected in the patent corpus provides representative research data, which, in turn, increases our understanding of the use of terminologies of patents.

Enhancing resolution: semantic analyses of the alignment between a patents claims and description on different levels

There is need for a strong alignment between a patent's claim and description sections due to patent law. We enhance previous semantic analyses that were aimed at measuring this alignment. In addit...

IntelliPatent: a web-based intelligent system for fast chemical patent claim drafting

The first step of automating composition patent drafting is to draft the claims around a Markush structure with substituents. Currently, this process depends heavily on experienced attorneys or patent agents, and few tools are available. IntelliPatent was created to accelerate this process. Users can simply upload a series of analogs of interest, and IntelliPatent will automatically extract the general structural scaffold and generate the patent claim text. The program can also extend the patent claim by adding commonly seen R groups from historical lists of the top 30 selling drugs in the US for all R substituents. The program takes MDL SD file formats as inputs, and the invariable core structure and variable substructures will be identified as the initial scaffold and R groups in the output Markush structure. The results can be downloaded in MS Word format (.docx). The suggested claims can be quickly generated with IntelliPatent. This web-based tool is freely accessible at https://intellipatent.cmdm.tw/.

A Tale of Two Inventions: Monsanto, Biotechnology, and the Geography of Postmodern Science

This essay explores the geography of postmodern science in nonacademic settings, focusing on two research breakthroughs by Monsanto scientists, in 1985–1986 and 1989–1991, that created plants resistant to the company’s herbicide, glyphosate. The essay follows this new knowledge as it was mobilized into refereed publications and patents, comparing and contrasting the two forms of scientific discourse that resulted. The patents are then traced further as they were challenged, interpreted, and transformed in patent offices and courtrooms across time and space, specifically in the United States, Canada, and Europe. Whereas the crucial peer-reviewed knowledge claims remained fixed, the patent knowledge claims morphed and became fragmented, spatially and temporally. Analyzing lawsuits that Monsanto launched in Britain, Canada, and the United States, the essay shows how the company used spatial-epistemic fragmentation to modify the patents’ meanings in desired ways in particular locations, sometimes with significant social and epistemic consequences. The essay concludes by reflecting more broadly on the expansion of biotechnology patenting as a form of nondisinterested knowledge production and how this trend has shaped the path and characteristics of postmodern science in this realm.

Game and Technology Co. v. Activision Blizzard – a look at how inter partes reviews change the game in patent suits

A June 2019 appellate decision marked the end of the patent assertion by Game and Technology Co. (GAT) against Activision Blizzard and Riot Games. 1 The patents at issue related to equipping virtual avatars with game items. Activision Blizzard was able to successfully invalidate the patent through inter partes review (IPR) proceedings at the US Patent and Trademark Office. This case illustrates the important role that IPRs play in US patent litigation, as well as the double-edged sword of obtaining very broad patent claims. The article walks through the history of the assertion, the invalidity arguments at the USPTO, and the final decision on appeal to the Federal Circuit, and discusses how IPRs may provide an effective response to patent assertions in the US.

A comparative analysis of the Australian Patent Office's examination of biotechnology reach-through patent claims

In an earlier study we analysed how the United States Patent and Trade Mark Office, the European Patent Office and the Japan Patent Office (jointly referred to as the 'Trilateral Offices' or TOs) assessed reach-through patent claims in biotechnology, under the requirements of 'utility', 'written description' and 'enablement' (as they are referred to in the US). We found that any claim that was a reach-through claim was assessed to be invalid by the TOs, and therefore filtered out from grant. This study analyses how the same claims from the TOs' study are assessed by the Australian Patent Office (APO), under the equivalent Australian requirements of 'manner of manufacture and description of use', 'clarity, succinctness and fair basis', and 'full description and best method'. We find that under Australian practice not all types of reach-through claims are filtered out from grant of a patent. This suggests that one or other of the patent offices is applying the wrong standard in examination of these claims. In our view, the examination standard applied by the APO is too lenient. The Australian legislation should be reformed by adopting patentability requirements that mirror the utility, written description and enablement requirements of the TOs.

Directions for increasing conical picks’ durability

Abstract Conical picks are cutting tools used in many branches, in particular in the mining, road construction and building branch. Contact with the excavated face causes their constant wear, which is an unfavorable but unavoidable process. Milling heads of working machines are equipped with several dozen conical picks, and mining in abrasive or hardly accessible rocks can reduce their life to a few hours. It is in the interest of both users and producers to increase their durability, as tools replacement, apart from purchase and logistic costs, results in machine downtimes. In the article various solutions of conical picks, their construction, dimensions and materials used have been discussed. Technical procedures applied to increase the durability of conical picks and their regeneration as well as methods of extending the life of picks working in difficult conditions have been presented. Two author’s methods of extending the life of picks working in difficult conditions, covered by a patent application, have also been presented. The first solution involves ensuring an uninterrupted rotational movement of the pick in the holder. Patent claims include an innovative method of equipping the additional sleeve integrated with the holder with a rotational bearing, which enables a continuous rotation of the pick. The tool equipped with a bearing generates much lower movement resistance than the standard mounting. The holder is designed to mount classic commercial picks. What is important, the pick replacement does not require interfering with the bearing assembly. The second solution concerns the manner of protecting the working part of the pick by means of a special element made of an abrasion resisting material. This element is the pick tip, the geometry of which varies from the commonly applied posts made of sintered carbide. In this solution, the tip has a shape corresponding to the form of conical pick’s wear, which causes that its steel body does not wear. Moreover, there is a possibility of applying a mobile, rotational mounting of the tip to the body.