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IP: Patent reform—a big swing and miss

The America Invents Act leaves much to be desired.

Congress has finally passed the much-awaited America Invents Act, which the President promises to sign. Patent reform is finally here.

Excuse me while I yawn.

A criminal defendant is not acquitted because a jury determines he didn’t do it. He’s acquitted because the government didn’t carry its burden of proof. Why do we assign this burden to the government? Because we live in a liberal democracy, and a liberal democracy makes a policy choice: It is better that many guilty go free than a single innocent man be deprived his liberty. We could easily assign this burden the other way, like the world’s tyrannies, which would solve the problem of the guilty walking. But that’s not an efficient way to achieve our goals as a liberal democracy. 

The same can be said for patents and claim construction. Courts should not be in the business of divining the truth about what an inventor really invented when a patent’s claims are susceptible to two or more meanings. Instead, we need a burden of proof, or at least a “burden of clarity.” If a claim is ambiguous, someone should bear the social cost. The only question is, “Who?”


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Jeffrey Dean

Jeffrey Dean is a partner of Marshall, Gerstein & Borun LLP, and concentrates on the defense of patent infringement claims on behalf of corporations....

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