• 04 January 2010

Claiming Intellectual Property

Jeanne C. Fromer - Fordham Law School

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By writing a series of James Bond novels, Ian Fleming qualified for American copyright protection, pursuant to which works created by others without license and found by courts to be substantially similar to the novels would generally infringe his copyright.  Imagine instead that Fleming would have had to draft a claim setting out his novels’ essential features, such as “a story featuring a suave male British spy, who frequently wears a tuxedo and has a strong sensual appetite, and detailing his adventures in international intrigue, in which he prevails through use of his quick wit and high-technology gadgets.”1 Dependent claims might further note that the spy introduces himself by his last name followed by his full name (“Bond, James Bond”) and that he orders his martinis “shaken, not stirred.”2 Copyright protection would then be premised on the bounds delineated by these claims.  Infringement litigation might then need to address how often is “frequently” or whether a film featuring a similar female British character (“Bond, Jane Bond”) infringes the copyright.

This hypothetical claiming system looks like that of patent law, under which an invention’s bounds must be demarcated as a prerequisite to patent protection.  But envision for a moment that patent claiming would look more like that of copyright law.  Alexander Graham Bell would receive a patent for his invention of the telephone3 after having fixed (or perhaps commercialized) it in some form.  Assuming the invention complies with the threshold requirements of patent law, the set of protected embodiments would include all substantially similar implementations—a cordless telephone? a fax machine? Internet telephony?—a set to be enumerated on a case-by-case basis in any future infringement litigation, rather than at the time of patenting.  This determination would require courts to ascertain the essential properties of a patented invention.

This thought experiment seems to indicate that claiming the set of protected embodiments under patent law looks very different than copyright law.  And in a sense, it does.  Patent law has adopted a system of peripheral claiming, requiring patentees to articulate by the time of the patent grant their invention’s bounds,4 usually by listing its necessary and sufficient characteristics.  And copyright law has implicitly adopted a system of central claiming5 by exemplar, requiring the articulation only of a prototypical member of the set of protected works—namely, the copyrightable work itself fixed in a tangible form.6 Copyright protection then extends beyond the exemplar to substantially similar works,7 a set of works to be enumerated only down the road in case-by-case infringement litigation.

Investigating the claiming practices of patent and copyright law side by side thus illuminates two salient axes for claiming the set of works protected by an intellectual-property right: peripheral versus central and characteristic versus exemplar.  Peripheral claimants must delineate to the public the set’s bounds so that a third party could determine whether any particular embodiment is a set member, thus protected by the right.  By contrast, central claimants must describe only some central members of the set, which are clearly protected under the right and are used to determine whether other items are similar enough to the enumerated members to also fall within the same right.  Central and peripheral claiming might be seen as two points on a spectrum of how many members of the set must be described by the claim, with peripheral claims describing more members than central ones.  Either peripheral or central claiming can be done by exemplar or by characteristic.  Claiming by exemplar entails enumerating particular members of the set.8 In the case of peripheral claiming by exemplar, one would enumerate each set member, while for central claiming by exemplar, one would catalog only some set members.  Claiming by characteristic, on the other hand, requires a description of the essential properties of the set’s members.  For peripheral claiming by characteristic, one would describe the necessary and sufficient features common to all members of the set of protected embodiments.  And for central claiming by characteristic, one would express the features common to at least some central members of the set.  Claiming by exemplar and by characteristic can be seen as opposing points on a spectrum of how much distillation of the actual works’ characteristics is necessary.  The table illustrates how the fork might be claimed under each of the four claiming types.  Though scholarship mentions patent law’s peripheral claims9 and Clarisa Long and Henry Smith discuss patent law’s claiming requirements and copyright law’s lack thereof,10 until now these dual claiming dimensions have not been expressly appreciated.

UCHICAGO-20100104 Fromer1112

The method of ascertaining the extent of the set of protected embodiments, for evaluating validity or infringement, depends on the claiming type.  For peripheral claiming by exemplar, one can determine whether a particular embodiment is protected by observing whether the embodiment matches any claimed exemplar.  Does the fork in question match a fork in the pictured set?  For peripheral claiming by characteristic, one must decide whether the embodiment possesses the claimed features.  Central claiming by exemplar requires divination of the essential features of each claimed exemplar, followed by a determination whether the embodiment is sufficiently similar in those features to a claimed exemplar.  And with central claiming by characteristic, one must decide whether the embodiment is sufficiently similar in its features to those claimed.

Despite patent law’s typical peripheral claims by characteristic, in practice, patent claiming is heterogeneous.  Patent law retains some vestiges of central claiming under which it used to operate,13 through the doctrine of equivalents, means-plus-function limitations, and dependent claims.  With some exceptions, the doctrine of equivalents allows a patentee to “claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes.”14 Means-plus-function limitations in claims permit a patentee to describe his invention in terms of the functions it typically performs rather than the parts of the invention that carry out those functions.15 With these claims, protection is statutorily extended beyond the inventions described in the patent’s specification that carry out the claimed function to any equivalents of those inventions.16 And a dependent claim—which incorporates an independent claim in the patent further limiting the independent claim17—has no “central claim”-like legal effect of extending protection beyond the described characteristics, but nonetheless has a “central claim”-like communicative effect of highlighting prototypes of the associated independent claim.  Moreover, patent law encourages some claiming by exemplar through its best-mode requirement and Markush claims.  Markush claims allow the grouping of exemplars in otherwise characteristic claims so long as they possess a “community of . . . characteristics which justify their inclusion in a common group.”18 And to fulfill the best-mode requirement, the inventor must disclose the best embodiment subjectively conceived by the time the patent application was filed,19 thereby effectively claiming one superior exemplar of the invention.

Just as patent claiming practice can be varied, so can copyright claiming.  By design, copyright law institutes central claims by exemplar; but through the approved use of licenses to permit others to make substantially similar works, copyright in operation involves expression of the bounds of works permissibly created under such licenses and delineation of characteristic features of the set of protected works.  In one striking example, NBC Universal recently licensed a French television company the right to create a French version of the criminal procedural television series, Law & Order: Criminal Intent, and this license incorporated the creator’s thousand-page manual detailing essential characteristics of a Law & Order production that must be followed, such as how many of the show’s characteristic “ching-ching” sounds could be used per act.20 These expressions in legally binding contracts bring forms of peripheral claiming and claiming by characteristic into copyright law.

This description of patent and copyright claiming raises the question of which sorts of claiming work best for each.  The Constitution sets forth the goal of intellectual property laws: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”21 Each of the four types of claiming can affect the costs of drafting claims, efficacy of content notice to the public of the set of protected embodiments,22 ascertainment of protectability, breadth of the set of protected works, and the protection of works grounded in after-developed technologies (technologies postdating claiming).

As to costs of claim drafting, keeping them low is important when the law seeks to encourage easy protection of intellectual property and high otherwise.  Drafting is costlier for peripheral than for central claims and for peripheral claims by exemplar than by characteristic because of the foresight needed. It is also costlier for central claims by characteristic than by exemplar if an embodiment, which could otherwise serve as a central claim by exemplar, already needs to be produced.

Clear content notice to the public of the set of protected embodiments is valuable so that the public can avoid improper use of the set’s members without permission and can, concomitantly, understand what is free for the taking, thereby furthering innovation.23 The established view is that peripheral claiming provides better content notice than central claiming.24 This view has rightfully come under attack because, among other things, ambiguities inherent in language can render claim construction unpredictable25 and peripheral claims tend to contain highly abstract formulations, rather than colloquial terms, to ensure that a broader set of embodiments is protected.  As Doug Lichtman observes, a reader “might find it easier to read simple, concrete claim language (‘shoelace’) rather than more abstract expressions (‘mechanism by which to bind tightly around the foot’) that are in fact technically superior.”26

Research in cognitive science also suggests that the established view might fail to account for how people process, comprehend, and construct categories and neglect the other dimension of claiming (exemplar or characteristic).  According to this research, people’s categories are formed and comprehended not with a list of necessary and sufficient criteria to test for membership, as the classical Aristotelian view would suggest,27 but rather with prototypes against which to compare potential category members for sufficient similarity.28 Though these studies were done in other contexts, they are valuable in suggesting how to communicate categorical information successfully.  To the extent this research generalizes to categories of inventions or artistic creations in intellectual property law, the necessary and sufficient features set forth by peripheral claiming by characteristic do not accord with the way people learn categories.  Content notice might be better—or just as good—with (well-constructed) central claims conveying prototypes or exemplars, or even peripheral claims by exemplar.  Even if central claims do not provide perfect content notice of categorical boundaries, the evidence indicates that they might do a good job at communicating the crux of the protected embodiments.  There might also be differences in the effectiveness of content notice depending on whether claiming by exemplar or characteristic is used.  Recent experiments suggest that when it comes to learning larger, more differentiated categories, learning by characteristic is prevalent early in the learning process but slowly gives way to exemplar learning.29 By contrast, in learning smaller, less differentiated categories, learning by exemplar is dominant.30 To the extent this research applies to intellectual-property categories—as intuition would suggest—when intellectual property law is protecting a small, poorly differentiated category, claiming by exemplar would be appropriate.  But claiming by characteristic would be more suitable for larger, better differentiated categories, and claiming by exemplar might also play a role in teaching categorical boundaries.

In addition to the varying degrees of difficulty and cost associated with claim drafting and content notice, the claiming systems differ in the ease of assessing whether the claimed set of embodiments is protectable.  This factor is closely related to content notice because the assessor—typically a government actor—needs to understand the set’s scope to ascertain protectability by the relevant intellectual property laws.  Notwithstanding their content-notice problems, peripheral claims are thought to enable the examiner to assess the novel or original features of the claimed set because the full extent of the set is expressly set out by the creator.  For central claims by characteristic, protectability of those set members not literally described by the central claim might not be assessed during examination.  And for central claims by exemplar, assessment of protectability of the full set is more difficult, as the examiner must deduce the essential features of the exemplar.  Of course, embodiments not literally encompassed by the central claim but falling within the set of protected embodiments will be adjudged separately down the line for protectability, if at all.

Another aspect one might think affected by the choice of claiming system is the breadth of the set of protected works.  Though one asks very different questions under each type of claiming to enumerate the corresponding set of protected embodiments, the interpreter does not necessarily arrive at significantly different breadths.  In construing peripheral claims, one can assign claim terms either narrow or broad meaning.31 In construing central claims, one can limit or broaden the set of embodiments that are sufficiently similar to the centrally claimed prototype.32 And just as with central and peripheral claims, there is elasticity in construing both characteristic and exemplar claims.  Of course, concern lies not only with the true breadth of the set, as determined by government officials, but with its operational breadth.  Given that there is uncertainty of the extent of the set of protected embodiments under peripheral or central claiming and characteristic or exemplar claiming, aversion to the risk of liability attracts licensees.33 Licenses will be taken sometimes even when unnecessary—when a patent or copyright is invalid or the valid claims do not cover the licensed activity.  Operationally, such licensing leads to a set of protected embodiments broader than the law would otherwise allow.  Therefore, the better the content notice provided by the claims, as discussed above, the less broad the set of protected embodiments will tend to be operationally relative to actual breadth.

There is one likely exception to the notion that claiming choice does not per se affect the actual breadth of the set of protected embodiments, namely the extent to which works grounded in after-developed technologies are protected.  A peripheral claimant must think well beyond the manifestation of his invention to the future set of manifestations likely to be valuable enough to prevent others from using, even if not presently practicable.34 A central claimant, on the other hand, can defer delineation of the full set of protected embodiments at the outset until the future when, by virtue of time’s passage, the unfolding of related innovation has become clearer.35 Central claims, then, more easily allow for an expansion of protection beyond the claimed core in light of future innovation.

That the choice of claiming systems implicates the foregoing factors—factors essential to calibrating intellectual-property law to stimulate innovation—in different ways underscores the importance of choosing a claiming system with care.

Though previous scholarship principally defends the typical claiming forms for each patent and copyright law,36 I undertake a thought experiment to analyze whether they are ideal for either type of intellectual property.  This task, in fact, is suggested by patent law’s incorporation of not insignificant elements of central and exemplar claiming and copyright practice’s use of peripheral and characteristic claiming.  I explore whether claiming in copyright and patent law can learn from one another.

Though patent law admirably incorporates all four types of claiming flexibly, it can be tweaked to stimulate innovation by adding claiming elements more reminiscent of copyright law.  I suggest that patent law’s typical peripheral claims by characteristic, adopted principally to provide content notice of the set of embodiments protected by a patent, do not provide sufficient content notice, which negatively affects the public’s ability to know what is in and out of the public domain, assessments of protectability (particularly when an issued patent is accorded a presumption of validity37), and the operational breadth of the set of protected works.  To ameliorate these and other concerns, I propose—contrary to conventional wisdom38—that ex ante patent-claim drafting be modified to include central claiming by characteristic.  And claiming by exemplar ought to serve a role in patent law.  Claims by characteristic can be supplemented by requiring the registration of certain exemplars—all commercial implementations, if any, by the patentee or licensee—claimed to be within the set of protected embodiments.  Exemplar registration, which would be available to the public and linked to the associated patent, would help sharpen the understanding of the bounds of the set of protected embodiments.  And it would occur in the situations in which exemplars are most useful, when the patented invention is commercialized and is therefore likely to be valuable—when content notice is important.  These modifications to patent claiming would better serve patent law’s purpose to stimulate innovation by making it easier for the public to identify that which must be licensed to be used and that which can be used freely for follow-up innovation.

Claiming in copyright law is more complicated.  Current claiming practice in copyright law is rigid, and it suffers from various defects, all tied to the poor content notice effected by the central claims by exemplar.  Those defects might suggest that copyright claiming ought to co-opt claiming by characteristic from patent law. But the structure and theory of copyright accentuate significant—perhaps insurmountable—barriers to making changes to the current claiming system.

As it stands, copyright’s central claims by exemplar provide little content notice to the public, leading risk-averse third parties either to take licenses even as to works not protected by copyright or avoid them completely, a situation that grants too heavy a copyright reward at the expense of generating further creativity.  From this vantage point, it would seem far more productive to require or at least provide significant incentive to copyright claimants ex ante to claim their works centrally by characteristic.  This claiming would merely entail, at insubstantial cost, a succinctly expressed pattern of the work at issue.  Such claims might provide significantly better ex ante notice in two ways.  First, the enablement of feature-by-feature comparisons would help indicate those works that would be considered substantially similar to the created work and thus protected under the copyright.  Second, such claims would help explicate which substantially similar works would nonetheless be permissible uses under the doctrine of fair use39 by encouraging determinations of works that borrow from the copyrighted work in ways that do not implicate too many of the claimed features or transform it significantly.  These effects, on the view of one concerned with copyright’s poor notice, would increase overall production of creative works by providing the incentive to create copyrighted works and by encouraging creation by third parties beyond the copyright.

But that is far from the complete analysis.  Viewing the copyright system as a whole through a wider lens identifies significant, and perhaps insurmountable, theoretical and practical concerns with central claiming by characteristic.  First, there is a concern that requiring copyright holders to claim their works by characteristic, even if centrally, might cause copyright law to contravene the First Amendment by granting protection to ideas, rather than the expression copyright seeks to protect.40 A second concern lies in whether artistic creators will feel at ease demarcating the essential pattern of their creation.  A related third concern is whether the described characteristics could capture the artistic essence of the work.  Consider the likely claim for a Jackson Pollock painting: a painting comprising varied colors of dripped, flung, or spattered paint.41 That description does not capture—and arguably cheapens—the artistic essence and effect of Pollock’s paintings.  Fourth, there is apprehension about the cost and viability of the administrative and legal support necessary to institute central claims by characteristic, due to the ex ante examination claims by characteristic might require, the number of claims to be written, and the legal support necessary to assist copyright holders.

All in all, I suggest that there has been a severe underinvestigation of claiming practice in intellectual property and that the handful of explorations of the topic have overlooked some of the important aspects of the taxonomical, descriptive, and normative features of intellectual property claims. To maximize innovation, it is imperative that claiming practice, a key factor of intellectual property systems, be explored and optimized.dingbat

Acknowledgments:

Copyright © 2010 University of Chicago Law Review.

Jeanne C. Fromer is an Associate Professor at Fordham Law School.

  1. This claim conflates the treatment of James Bond in Fleming’s novels and later in film. See Metro-Goldwyn-Mayer, Inc v American Honda Motor Co, 900 F Supp 1287, 1294–97 (CD Cal 1995).
  2. But see Josh Grossberg, Don’t Call Him Bond, James Bond, E! Online (Sept 23, 2008), online at http://www.eonline.com/uberblog/b30472_Don_t_Call_Him_Bond__James_Bond.html (visited June 7, 2009) (noting that these two characteristics are not in the 2008 James Bond movie, Quantum of Solace.
  3. But see Seth Shulman, The Telephone Gambit: Chasing Alexander Graham Bell’s Secret 35 (Norton 2008) (suggesting that Bell might not have invented the telephone).
  4. Anthony W. Deller, 1 Patent Claims § 5 (Lawyers Cooperative 2d ed 1971).
  5. See id.
  6. 17 USC § 102(a).
  7. See Whitehead v Paramount Pictures Corp, 53 F Supp 2d 38, 46 (DDC 1999).
  8. Any description of exemplars other than with the actual work—using words, drawings, or other modes—moves toward claiming by characteristic, as condensed descriptions of the actual work using words, drawings, and the like choose to highlight some of the work’s aspects.
  9. See, for example, Alan L. Durham, Patent Symmetry, 87 BU L Rev 969, 982–83 (2007).
  10. Clarisa Long, Information Costs in Patent and Copyright, 90 Va L Rev 465, 499–501 (2004) (describing differences between patent and copyright claiming processes); Henry E. Smith, Intellectual Property as Property: Delineating Entitlements in Information, 116 Yale L J 1742, 1807 (2007) (contrasting how copyright and patent rights are defined).
  11. These illustrations come from US Patent Nos D275068 (issued Aug 14, 1984), D278299 (issued Apr 9, 1985), D474658S (issued May 20, 2003), D306116 (issued Feb 20, 1990), D272406 (issued Jan 31, 1984), 5421089 (issued June 6, 1995), and D474657S (issued May 20, 2003).
  12. The American Heritage Dictionary of the English Language 690 (4th ed 2000).
  13. Patent Act of 1790, ch 7, 1 Stat 109; Deller, 1 Patent Claims at § 5 (cited in note 4).
  14. Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co, 535 US 722, 733 (2002).
  15. 35 USC § 112, ¶ 6.
  16. Id.
  17. Ex parte Brown, 1917 CD 22, 22 (Commissioner of Patents).
  18. In re Schechter, 205 F2d 185, 189 (CCPA 1953).
  19. 35 USC § 112, ¶ 1; Eli Lilly & Co v Barr Labs Inc, 251 F3d 955, 963 (Fed Cir 2001).
  20. See Brooks Barnes, NBC Faces Trials Bringing ‘Law & Order’ to France, Wall St J A1 (Mar 1, 2007).
  21. US Const Art I, § 8, cl 8.
  22. Rather than use “notice” in isolation, I use “content notice,” to avoid confusion with a term of art in copyright law, “copyright notice,” which has the distinct meaning of notice that a copyright exists, as opposed to what content the right protects.
  23. See Long, 90 Va L Rev at 489–95 (cited in note 10).
  24. See, for example, J. Dennis Malone and Richard L. Schmalz, Note, Peripheral Definition Theory v. Central Definition Theory in Patent Claim Interpretation: A Survey of the Federal Circuits, 32 Geo Wash L Rev 609, 634 (1964).
  25. See James Bessen and Michael J. Meurer, Patent Failure 47–51, 147–64 (Princeton 2008); Dan L. Burk and Mark A. Lemley, Quantum Patent Mechanics, 9 Lewis & Clark L Rev 29, 31–32, 49–52 (2005).
  26. Doug Lichtman, Substitutes for the Doctrine of Equivalents, 93 Georgetown L J 2013, 2015 (2005).
  27. See Aristotle, Categories and De Interpretatione ch 8, 24–31 (Oxford 1975) (J.L. Ackrill, trans).
  28. See George Lakoff, Women, Fire, and Dangerous Things: What Categories Reveal About the Mind 9 (Chicago 1987); Eleanor Rosch, Cognitive Representations of Semantic Categories, 104 J Exp Psych: General 192, 192 (1975); Eleanor Rosch Heider and Donald C. Olivier, The Structure of the Color Space in Naming and Memory for Two Languages, in Cognitive Psychology 337 (Academic 1972).
  29. See J. David Smith and John Paul Minda, Prototypes in the Mist: The Early Epochs of Category Learning, 24 J Exp Psych 1411, 1426 (1998).
  30. See id.
  31. See Burk and Lemley, 9 Lewis & Clark L Rev at 31 (cited in note 25).
  32. See Amy B. Cohen, Masking Copyright Decisionmaking: The Meaninglessness of Substantial Similarity, 20 UC Davis L Rev 719, 722–23, 732, 744 (1987).
  33. See James Gibson, Risk Aversion and Rights Accretion in Intellectual Property Law, 116 Yale L J 882, 887–95 (2007) (copyright); Smith, 116 Yale L J at 1804 (cited in note 10) (patent).
  34. See William Redin Woodward, Definiteness and Particularity in Patent Claims, 46 Mich L Rev 755, 755 (1948).
  35. See Lichtman, 93 Georgetown L J at 2021 (cited in note 26) (offering the Internet as a case in point).
  36. See Long, 90 Va L Rev at 469–71 (cited in note 10); Smith, 116 Yale L J at 1806–10 (cited in note 10).
  37. See 35 USC § 282.
  38. See, for example, Michael J. Meurer and Craig Allen Nard, Invention, Refinement and Patent Claim Scope, 93 Georgetown L J 1947, 1948–56 (2005).
  39. See 17 USC § 107; Campbell v Acuff-Rose Music, Inc, 510 US 569, 574 (1994).
  40. Harper & Row, Publishers, Inc v Nation Enterprises, 471 US 539, 556 (1985).
  41. See, for example, Nicolas Pioch, WebMuseum: Pollock, Jackson, online at http://www.ibiblio.org/wm/paint/auth/pollock (visited June 7, 2009).

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