Proposition 1 helps identify conditions such that the notice concern about
patent claims should weigh heavily in formulating patent policy.197 Patent law
appears to be roughly consistent with this goal; it constrains the use of the DOE
when it is likely to create uncertainty costs with little offsetting benefits. For
example, two doctrines properly limit the DOE based on prosecution activities.
First, prosecution history estoppel creates a presumption against the DOE for
embodiments ceded by amendment or argument.198 Second, the public dedica-
tion doctrine precludes the use of the DOE to protect embodiments that inven-
tors have described in their applications without claiming.199 In both situations
the cost of refining a claim to include such embodiments must be low.200
The DOE should also be limited or proscribed for minor inventions in crowded fields of technology. Competitors have little motivation to invent around a patent claim (i.e., develop an embodiment in F) when the prior art offers adequate substitutes. Patent law has taken steps to restrict the DOE in crowded fields of technology by precluding its application to accused devices in the prior art and those obvious in light of the prior art.201
Proposition 2. Pioneer inventions should enjoy a presumption in favor of
applying the DOE. The DOE induces inventions that would not occur in its
absence. Prospective inventors may be discouraged from inventing when they
face high invention and high refinement costs. The inventor can avoid refine-
ment costs under the DOE, and this cost saving might be crucial to encouraging
invention. Without the DOE, inventive incentives are dampened by the prospect
of paying high refinement costs or alternatively the prospect of entry by a
competitor. This insight helps justify the practice of rewarding pioneer inventors
with broader application of the DOE.
Previous discussion of pioneer inventions conflates analysis of the DOE with
the enablement doctrine. Courts and commentators have expressed a desire to
give pioneers a bigger patent-based reward. The impulse to reward pioneers
with broader patent scope seems natural. The enablement doctrine allows broad
claim scope when a pioneer enriches society with a significant technological
disclosure. Thus, generous treatment of pioneer inventions guides potential
inventors to invest in socially important research.202 This theory does not
explain, however, generous treatment of pioneer inventions under the DOE.
Patent law should be careful to avoid a double reward to pioneer inventions.
Applying the DOE to pioneer inventions with low refinement costs would be
redundant. The policy of granting more generous DOE protection only makes
sense if pioneer inventions tend to have high refinement costs. The policy
should be interpreted as using the pioneer status of an invention to create a
presumption of high refinement costs, and that presumption should be rejected
in the face of more direct evidence of low refinement costs.
Proposition 3. The DOE discourages preemptive refinement. Inventors
operating in a regime without the DOE have rights only over the embodiments they literally claim. They can only gain rights over the embodiments in F if they invest in refinement. We apply the label preemptive refinement when the inventor does not profit directly from claiming F, but indirectly profits by excluding a potential competitor.203 Preemptive refinement has no direct value to the inventor and thus will not occur under the DOE.