There are a couple of interesting new patent papers:
Linguistics and Claim Construction by Kristen Osenga (available here).
Professor Osenga explores linguistic theory for truths that can be applied to claim construction. She writes about five particular “notions” that could be used to make claim construction more consistent:
1) every reader, including a judge, possesses a mental lexicon with a common sense (or conventional) understanding of word meaning which is a point from which to start when interpreting claims;
2) there is an appropriate place for dictionary usage, which is to inform the judge’s common sense understanding about a word where he has none;
3) patent claims have their own grammar which must inform the syntactical and contextual analysis, but may also skew the reader’s common understanding that was obtained either from a mental lexicon or from a dictionary;
4) regardless of the common sense understanding, the PHOSITA must be returned to the analysis and changes made to the law to effectuate the return of the PHOSITA; and
5) extensive resort to the specification and prosecution history to divine the patentee’s intent is inappropriate.
Patent Metrics: The Mismeasure of Innovation in the Biotech Patent Debate by David Adelman and Kathryn DeAngelis (available here).
Adelman and DeAngelis have written what they claim to be “the first comprehensive empirical study of biotechnology patents.” Their conclusions — there is little evidence that the rise in biotechnology patenting is adversely affecting innovation. The pair also provides a general criticism of “the current enthusiasm for empirical” at the expense of exploring “the obvious complexity of innovative processes.”
I can’t agree with Prof Osenga, especially on point number (5).
I was greatly releived by the recent changes in the case law. Dictionaries should be a last resort, as they very seldom present the meanings that would be understood by a person of ordinary skill in the art. Usually the specification does do just that, and if the applicant meant something different then that can usually be implied too.
On the whole, I tend to think that linguistics have nothing to do with the law. Linguists tend to think that legal documents have an inherent meaning, discernible from language alone, when in fact statutes and the ‘cold, dead hand of precedent’determine the real meaning, along with the intent of the parties (in this case, the patent applicant). That is the essence of the common law system itself. Inconvenient pehaps for those outside the law, but noneheless the cornerstone of the law.
To say that there should not be extensive reference to the specification and the prosecution history is to abandon the element of intent in construing a legal document, a suggestion that we should adopt when pigs fly.
Alun L. Palmer, US Patent Agent
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