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Article Title

Forcing Patent Claims

Abstract

An enormous literature has criticized patent claims for being ambiguous. In this Article, I explain that this literature misunderstands the real problem: the fundamental concern is not that patent claims are ambiguous but that they are drafted by patentees with self-serving incentives to write claims in an overbroad manner. No one has asked why the patent system gives self-interested patentees the leading role in delineating the scope of their own patents. This Article makes two contributions to the literature. First, it explicitly frames the problem with patent claims as one of patentee self-interest rather than the intrinsic ambiguity of claim language. Second, it provides a counterintuitive answer to the question of why the patent system relies on patentee-drafted claims. Although giving patentees claim-drafting power undoubtedly leads to overbroad patent rights, such an allocation of drafting power is nonetheless socially efficient. This is because the Patent and Trademark Office (“PTO”) and the courts lack the information necessary to determine the correct scope of a patent in the first instance. Requiring patentees to write claims forces them to take a position, a process that discloses some of the patentee’s private information and reduces the complexity of subsequent decisionmaking by courts and the PTO. While patentees will overclaim, they cannot overclaim too much, and relying on an imperfect claim is better than having a court or the PTO make an uninformed guess in the first instance. The Article concludes by explaining the implications of this insight for the debate over claim construction.

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