Patent Hermeneutics: Form and Substance in Claim Construction

"ABSTRACT :: The claims section of a patent performs an important public notice function in patent law. The claims inform us of the boundaries delineating the subject matter over which the inventor holds an exclusive right. Methodology for interpreting patent claims has a direct impact on the claims’ ability to fulfill that mandate. Theories of interpretation are far better developed in statutory and contract law. Many principles animating the debate between form and substance in those fields are relevant to patent law as well, but patents’ divergent genesis and purpose create some important differences. This Article identifies the methodology set forth in the recent Phillips v. AWH Corp. case as a “tiered” substantive approach. Counter to conventional wisdom that formalism’s chief virtue is its production of certain results, this tiered substantive approach in claim construction best achieves certainty and, by extension, furthers the public notice function of claims. It also best comports with the courts’ obligation to construe patents in the same manner as a “person of ordinary skill in the art.”

Another pivotal consideration is this methodology’s influence on private drafting behavior. The tiered substantive approach will likely induce many inventors to draft their patents more formalistically. In effect, this permits a drafter to opt out of substantivism. Inventors have a variety of formalist tools for reigning in the potentially expansive effect of the tiered substantive methodology. Such a combination--formalism in patent drafting and substantivism in claim interpretation--will most effectively serve the public notice function of claims."

Kelly Casey Mullally, Patent Hermeneutics: Form and Substance in Claim Construction, 59 Florida Law Review 333 (2007)