The Structural Implications of Inventors’ Disclosure Obligations
Disclosure theory posits that inventors must disclose knowledge about their inventions and make that knowledge freely available for certain uses during the term of a patent as part of the price that they pay for their exclusive patent rights. This Article identifies an overlooked implication of this disclosure obligation. The availability of disclosed knowledge itself for free public use during the term of a patent means that there must be limits on inventors’ rights: inventors must not be allowed to transform the use of disclosed knowledge itself into infringement through strategic claiming. If they could, inventors would, oddly, be able to opt out of their mandatory disclosure obligations. To avoid this result, it is necessary to recognize the structural implications of inventors’ disclosure obligations: inventors’ exclusive rights must be doctrinally restricted so that inventors cannot privatize through their claims the very uses of disclosed knowledge that they are obligated to publicize through their disclosures. This implication of inventors’ disclosure obligations has to date been overlooked because it requires an analysis that examines the intersection of patent law’s incentive and disclosure theories, and these two theories have conventionally been examined only in isolation.
In many situations that form the core of the public privilege to use disclosed knowledge itself, contemporary patent law already limits patentees’ rights in the ways needed to protect the public privilege. In these situations, recognizing the structural implications of inventors’ disclosure obligations would lead to a sorely needed bout of conceptual housekeeping, providing doctrinal coherence that is today absent and thus long-term stability for doctrines that today rest on shaky foundations. However, in other situations that are at the periphery of the public privilege to use disclosed knowledge itself, recognizing the structural implications of patentees’ disclosure obligations may influence debates over what restrictions patent law ought to impose on patentees’ rights.
Professor of Law, Washington University in St. Louis.