PATENTING AROUND FAILURE

• Published in: University of Pennsylvania law review Vol. 166; no. 5; pp. 1139 - 1187
• Main Author: Seymore, Sean B.
• Format: Journal Article
• Language: English
• Published: Philadelphia students of the University of Pennsylvania Law School 01.04.2018; University of Pennsylvania, Law School; University of Pennsylvania Law School
• Subjects: Claims; COSTS; Discovery (Law); Failure mode and effects analysis; Inventions; Inventors; Laws, regulations and rules; Management; Methods; Obligations (Law); Patent laws and legislation; Patent licensing; Recording and registration; TECHNOLOGICAL INNOVATIONS; United States. Patent and Trademark Office; UNITED STATES
• ISSN: 0041-9907; 1942-8537

Marry patents cover inventions that do not work as described. Fingers often point to the U.S. Patent and Trademark Office (Patent Office), which is criticized for doing a poor job of examining patents. But the story is more complicated for at least three reasons. First, the Patent Office is at a clear disadvantage from an information standpoint. Inventors have little incentive to disclose failure because it might compromise patentability. Second, an inventor is not required to actually make everything that is claimed (or verify that everything that is chimed actually works) before filing a patent application. Third, inventors have an incentive to file patent applications early in the inventive process. Often, filing occurs during the initial stages of research and development, before much experimentation has been done and when the level of uncertainly is high. Together, these factors set the stage for an issued patent covering subject matter that does not work as described. Of course, inventors continue to experiment during the years of patent examination. This additional experimentation inevitably reveals more information about the invention than the inventor knew at the time of filing, including if any of the claimed subject matter fails to work as described in the patent application. This raises an important issue that has been overlooked by both courts and scholars: When post-filing experimentation reveals that some of the claimed subject matter does not work, is there a duty to act? This Article argues when failure comes to light the inventor has a legal obligation to, at a minimum, amend the claims. It then exphins how to encourage inventors to disclose details about the failure in the patent record. This additional disclosure would have several upsides for the inventor: it would improve patent (examination) quality, enrich the public storehouse of technical knowledge, and promote the broader goals of the patent system.