Although critics of the DOE contend that the doctrine unduly inhibits competition, surprisingly, we show that often the degree of competition is unaffected by the presence or absence of the DOE. The inventor can block competition in the absence of the DOE by investing in refinement and drafting broad patent claims. We call this “preemptive” refinement because its sole purpose is to preempt competition. Preemption tends to be socially harmful because the inventor controls the embodiments in E and F under either regime; and society loses the value of the refinement costs paid by the inventor to deter competition in the regime without the DOE.
We apply these results to policy issues in Part IV. We begin by embracing the
reissue proceeding as an alternative to the DOE. Reissue, which allows paten-
tees to broaden their claims within two years of issuance, is an under-utilized
proceeding that has many of the advantages of the DOE with relatively few of
its drawbacks. Thereafter, we explain when pioneer patents should get more
generous protection under the DOE.
We reject the standard explanation that reasons that claim drafting is harder for pioneer patents. We argue instead that the DOE provides a valuable boost to the incentive to invent a pioneering technology that offsets the combined costs of invention and refinement.
In addition, we reject the popular notion that the DOE is especially appropri-
ate in the case of unforeseeable, later-developed technology because this justifi-
cation focuses on the wrong question. The label “unforeseeable” confuses the
analysis because, in fact, there are gradations of foreseeability; some later-
developed technologies are more and some are less foreseeable.
The question should not be whether the technology is foreseeable; rather the question should be how difficult is it to identify embodiments and write a claim that covers them? Under our refinement theory, the DOE is inappropriate when refinement costs are low vis-เ-vis later-developed technology. It must seem counterintuitive to non-patent lawyers that refinement costs could be low, but often patent applicants can capture unforeseen embodiments through greater conceptual effort and the use of various claim drafting strategies.32 Application of the DOE to later-developed technology can be justified only as a means of discouraging excessive investment in refinement. In other words, the doctrine should be used to block socially wasteful expenditures when inventors find it profitable to exert considerable effort identifying and claiming later-developed embodiments sim-ply to preempt entry by a competitor. Surprisingly, this rules out application of the DOE to startlingly new equivalents, because these types of equivalents are conceptually unattainable no matter the amount of time and money spent on refinement efforts. Patent applicants would not refine their claims to cover these equivalents, and inventors’ incentives are not much affected by a minute probability of loss of effective patent protection.