Claiming Intellectual Property

This Article explores the claiming systems of patent and copyright law with a view to how they affect innovation. It first develops a two-dimensional taxonomy: claiming can be either peripheral or central, and either by characteristic or by exemplar. Patent law has principally adopted a system of peripheral claiming, requiring patentees to articulate by the time of the patent grant their invention’s bounds, usually by listing its necessary and sufficient characteristics. And copyright law has implicitly adopted a system of central claiming 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. Copyright protection then extends beyond the exemplar to substantially similar works, a set of works to be enumerated only down the road in case-by-case infringement litigation. Despite patent law’s typical peripheral claims by characteristic and copyright law’s typical central claims by exemplar, in practice, patent and copyright claiming are each heterogeneous, in that they rely on other forms of claiming. This Article explores which forms of claiming promote intellectual property’s overarching constitutional goal: “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.” It considers how each sort of claiming affects the costs of drafting claims, efficacy of notice to the public of the set of protected embodiments, ascertainment of protectability, breadth of the set of protected works, and the protectability of works grounded in afterdeveloped technologies. With the goal of stimulating innovation, I suggest that patent law can be tweaked by adding claiming elements more reminiscent of copyright law, namely central claims and claims by exemplar. Claiming in copyright law is more complicated. Though its current claiming approach has flaws suggesting that central claiming by characteristic might be preferable, aspects integral to the copyright system— including its fine line between protecting expression but not ideas, grounded in the First Amendment; societal views on describing the artistic works copyright protects; and the ease of creating copyrightable works—give significant pause to any notion of adopting central claiming by characteristic in copyright.