Patenting Around Failure

Abstract

Many 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, from an information standpoint, the Patent Office is at a clear disadvantage because the inventor has 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 claimed actually works) before filing a patent application. Third, inventors have an incentive to file patent applications early in the inventive process, which often means filing during the initial stages of research and development before much experimentation has been done and the level of uncertainty 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 explains how to encourage inventors to disclose details about the failure in the patent record. This additional disclosure would have several upsides for the inventor, improve patent (examination) quality, enrich the public storehouse of technical knowledge, and promote broader goals of the patent system.

Keywords: Patent, Disclosure, Enablement, Failure, Patentability, Knowledge, Inequitable Conduct, Inoperability, Innovation, PTO, USPTO

JEL Classification: O31, O32, O33, O34, O38, O40, O48, K39