Providing clear notice of property rights is a worthwhile goal, but legal requirements for notice can also thwart that goal. If the law imposes unrealistic notice requirements and invalidates the whole right as a penalty for non-compliance, the enforcement mechanism can weaken notice by transforming imprecision at the edges of the property right (where uncertainty is greatest) into uncertainty throughout the entirety of the right. The paradox associated with such notice requirements is evident in modern patent claiming doctrine. Under current Federal Circuit law, patent claims are treated as precise verbal descriptions demarcating the outer edges of patent rights, and with minor exceptions, the patentee is assumed to have rights to everything that falls within the literal bounds of the claim. That “literalistic claiming” method deviates sharply from the “peripheral claiming” method that was dominant throughout most of the twentieth century. This essay gives reasons for believing (1) that the Federal Circuit’s current approach to claiming is inconsistent with both Supreme Court and prior circuit case law in several significant respects; (2) that the Federal Circuit’s current approach is irreconcilable with principles of rights definition in other areas of property law; and (3) that a seemingly less precise approach to patent claiming might produce better notice and otherwise be more consistent with good patent policy. The essay concludes with practical suggestions concerning how the Federal Circuit’s approach to patent claiming can be changed.
John F. Duffy, Counterproductive Notice in Literalistic versus Peripheral Claiming, 96 Boston University Law Review, 1197–1221 (2016).