Volume 49, Issue 1
2017 Writing Competition 2nd Place winner
Liza Hadley, Boston University School of Law
The Patent Uncertainty Problem: Can the Judiciary Effectively Curb the Cost of Indefinite Claims?
Paper Summary
This paper investigates the issue of patent uncertainty by examining the effect on the cost of patent uncertainty of both recent judicial decisions addressing patent claim construction and indefiniteness and the Patent Office’s implementation of Inter Partes Review (IPR). The analysis uses time to completion of claim construction at trial as a proxy for cost of patent scope uncertainty. The claim construction process directly addresses questions of indefinite claims, which drive much patent litigation. Comparing the median time to complete claim construction across four distinct time periods that demarcated recent relevant court decision indicated essentially no change in time to claim construction completion as a result of the evolving jurisprudence. Potential reasons for this finding may include the patent selection problem, i.e. that very few patents are litigated and the ones that are litigated are the most unclear or uncertain, and a lack of change in practice due to the Federal Circuit’s interpretation of key Supreme Court decisions. In contrast, comparing median time to claim construction completion in the four years following implementation of IPRs and four years preceding IPRs found a decrease of four and a half months in time to completion.
The results of the analysis suggest that the availability of Inter Partes Review as an alternative approach to challenging a patent’s validity may siphon off cases from district courts and lower the time to completion of claim construction for the remaining cases, reducing the economic burden to society caused by patent indefiniteness. Thus, the Patent Office, rather than the judiciary, may be the more appropriate and effective institutional actor for addressing issues of patent indefiniteness.