Patents as Genre: A Prospectus

Abstract

Like other forms of intellectual property, patents have increasingly been the subject of controversy regarding their successes and failures in promoting and channeling innovation. But unlike other forms of intellectual property, patents are constituted and defined in terms of officially sanctioned texts. As a consequence, patents are deeply embedded in communities of composition, interpretation, and practice. This paper outlines how genre analysis can be applied to interrogate the “typified rhetorical action” of the patent system and its constituent communities. It argues and demonstrates that understanding the rhetorical work of patents is key to addressing current criticisms of the patent system.

Keywords:

• Patent
• intellectual property
• genre
• composition studies
• rhetoric

ACKNOWLEDGEMENT

The authors thank Michael Hancher, John Logie, Laura Gurak, the participants at the 2008 University of Minnesota Summer Works in Progress seminar, the participants at the 2012 ISHTIP workshop, and an anonymous reviewer for helpful comments on previous versions of this work.

Notes

1. Dan L. Burk and Mark A. Lemley, The Patent Crisis and How the Courts Can Solve It (Chicago, IL: University of Chicago Press, 2009), 66.

2. Generally, see Dan L. Burk, “Law and Economics of Intellectual Property: In Search of First Principles,” Annual Review of Law and Social Science, 8 (2012): 397–414.

3. Ibid.

4. Ibid.

5. James Bessen and Michael J. Meurer, Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk (Princeton, NJ: Princeton University Press, 2008).

6. Adam B. Jaffe and Joshua Lerner, Innovation and Its Discontents: How Our Broken Patent System is Endangering Innovation and Progress, and What to Do About It (Princeton, NJ: Princeton University Press, 2004); Michele Boldrin and David K. Levine, Against Intellectual Monopoly (Cambridge: Cambridge University Press, 2008).

7. Cf. Katherine T. Durack, “Research Opportunities in the U.S. Patent Record,” Journal of Business and Technical Communication 15 (2001): 490–510, 495 (advocating detailed analysis of patent texts as a measure for social and technological change).

8. John M. Swales, Genre Analysis: English Academic and Research Settings (Cambridge: Cambridge University Press, 1990), 42; Joanne Yates and Wanda J. Orlikowski, “Genres of Organizational Communication: A Structurational Approach to Studying Communication and Media,” Academy of Management Review 17 (1992): 299–326, 300.

9. Aviva Freedman and Peter Medway, “Locating Genre Studies: Antecedents and Prospects,” in Genre and the New Rhetoric, ed. Aviva Freedman and Peter Medway (London: Taylor & Francis, 1994), 1–20, 9; María José Luzón, “Genre Analysis in Technical Communication,” IEEE Transactions on Professional Communication 48 (2005): 285–95, 285–6.

10. Carolyn Miller, “Genre as Social Action,” Quarterly Journal of Speech 70 (1984): 151–67.

11. Ibid., 151.

12. Swales, Genre Analysis, 24–6.

13. Freedman and Medway, “Locating Genre Studies,” 9.

14. For example, Amy Devitt, “Intertextuality in Tax Accounting: Generic, Referential, and Functional,” in Textual Dynamics of the Professions: Historical and Contemporary Studies of Writing in Professional Communities, ed. Charles Bazerman and James Paradis (Madison, WI: University of Wisconsin Press, 1991), 336–55.

15. Ibid.

16. Yates and Orlikowski, “Genres of Organizational Communication.”

17. JoAnne Yates and Wanda Orlikowski, “Genre Systems: Structuring Interaction through Communicative Norms,” Journal of Business Communication 39 (2002): 13–35; Clay Spinnuzi, “Four Ways to Investigate Assemblages of Texts: Genre Sets, Systems, Repertoires, and Ecologies,” in SIGDOC ‘04: Proceedings of the 22nd Annual International Conference on Design Communication (New York, NY: Association for Computing Machinery, 2004), 110–6.

18. Burk and Lemley, Patent Crisis, 9.

19. Dan L. Burk, “Dynamic Claim Interpretation,” in Intellectual Property and the Common Law, ed. Shyamkrishna Balganesh (Oxford: Oxford University Press, 2013), 96–122.

20. Dan L. Burk and Mark A. Lemley, “Fence Posts or Sign Posts? Rethinking Patent Claim Construction,” University of Pennsylvania Law Review, 157 (2009): 1743–99, 1774–5.

21. Burk, “Dynamic Claim Interpretation.”

22. Robert P. Merges and John F. Duffy, Patent Law and Policy, 3rd ed. (New York, NY: Matthew Bender, 2002), 14–24 (describing components of the patent document).

23. Anne Freadman, “Anyone for Tennis?,” in Genre and the New Rhetoric, ed. Aviva Freedman and Peter Medway (London: Taylor & Francis, 1994), 43–66, 49.

24. Richard C. Faber, Landis on Mechanics of Claim Drafting, 3rd ed. (New York, NY: Practicing Law Institute, 1990), 13–14.

25. All-Site Corp v. VSI Int'l Inc., 174 F3d 1308 (Fed. Cir. 1999) (discussing the jurisprudence of means-plus-function claiming).

26. Mikhail Bakhtin, “The Problem of Speech Genres,” in Speech Genres and Other Late Essays (Austin, TX: University of Texas Press, 1986), 60 (asserting that a primary characteristic of acts of discourse are their dialogic nature; each is responsive to other discourse).

27. Charles Bazerman, The Languages of Edison's Light (Cambridge, MA: MIT Press, 1999), 92–8 (asserting that legal genres can be best understood as instantiating, through their recurrent, situated practices, systems of social activity).

28. Bruno Latour, Science in Action: How to Follow Scientists and Engineers Through Society (Cambridge, MA: Harvard University Press, 1987), 33–50.

29. Rochelle C. Dreyfuss, “The Federal Circuit: A Continuing Experiment in Specialization,” Case Western Reserve Law Review, 54 (2004): 769–802; Rochelle C. Dreyfuss, “The Federal Circuit: A Case Study in Specialized Courts,” New York University Law Review, 64 (1989): 1–77.

30. Gerard Genette, Paratexts: Thresholds of Interpretation (Cambridge: Cambridge University Press, 1997).

31. Mario Biagioli, “Patent Republic: Representing Inventions, Constructing Rights and Authors,” Social Research 73 (2006): 1129–72, 1136.

32. Karl B. Lutz, “Evolution of the Claims of U.S. Patents” (pt. 1), Journal of the Patent Office Society 20 (1938): 134–55, 139–41.

33. William Redin Woodward, “Definiteness and Particularity in Patent Claims,” Michigan Law Review, 46 (1948): 755–86, 757–8.

34. Lutz, “Evolution of the Claims of U.S. Patents.”

35. Ridsdale Ellis, Patent Claims (New York, NY: Baker, Voorhis, 1949), 2–4.

36. Manual of Patent Examination and Procedure (MPEP) § 608.01(m) (US Government Printing Office, 2012).

37. William J. Rankin, “The ‘Person Skilled in the Art’ is Really Quite Conventional: U.S. Patent Drawings and the Persona of the Inventor, 1870–2005,” in Making and Unmaking Intellectual Property: Creative Production in Legal and Cultural Perspective, ed. Mario Biagioli, Peter Jaszi and Martha Woodmansee (Chicago, IL: University of Chicago Press, 2011), 55–75.

38. Kara Swanson, “The Emergence of the Professional Patent Practitioner,” Technology and Culture, 50 (2009): 519–48.

39. Tamara Dillon, “Patent Work: The Other Side of Invention,” Occupational Outlook Quarterly, 53 (2009): 18–25.

40. Ibid.

41. Ibid.

42. Bloomberg News, “New Law Creates Demand for Patent Specialists,” New York Times, October 9, 2011.

43. Henry J. Reske, “Riding the Brain Train: Many Intellectual Property Lawyers are Making the Move from Boutiques to Full-Service Megafirms,” ABA Journal, February (1997): 30.

44. Ibid.; Rachel M. Zahorsky, “IP Does Not Mean Insane Profit: Understanding the Needs of the Practice,” ABA Journal, February (2009): 33.

45. Zahorsky, “IP Does Not Mean Insane Profit” (noting the difficulty of integrating “introverted” “science geeks” into a general practice firm).

46. Ibid.

47. Biagioli, “Patent Republic,” 1194 (noting that the inventor effectively has legal status as a textual author).

48. Yates and Orlikowski, “Genres of Organizational Communication,” 16–18;JoAnne Yates and Wanda J. Orlikowski, “The PowerPoint Presentation and its Corollaries: How Genres Shape Communicative Action in Organizations,” in Communicative Practices in Workplaces and the Professions: Cultural Perspectives on the Regulation of Discourse and Organizations, ed. Mark Zachry and Charlotte Thralls (Amityville, NY: Baywood, 2006), 67–91.

49. Charles Bazerman, Shaping Written Knowledge: The Genre and Activity of the Experimental Article in Science (Madison, WI: University of Wisconsin Press, 1988).

50. Cf. Joshua R. Nightingale, “The Researcher Rat's Culture and Ease of Access to the Publication Lever: Implications for the Patentability of University Scientific Research,” West Virginia Law Review, 113 (2011): 521–54, 541 (drawing a parallel between patent enablement and scientific peer review).

51. Rebecca Eisenberg, “Proprietary Rights and the Norms of Science in Biotechnology Research,” Yale Law Journal, 97 (1987): 177–231.

52. Carolyn R. Miller, “Rhetorical Community: The Cultural Basis of Genre,” in Genre and the New Rhetoric, ed. Aviva Freedman and Peter Medway (London: Taylor & Francis, 1994): 67–78, 69.

53. Ibid.

54. 517 U.S. 370 (1996).

55. David L. Schwartz, “Practice Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases,” Michigan Law Review, 107 (2008): 223–84; David L. Schwartz, “Courting Specialization: An Empirical Study of Claim Construction Comparing Patent Litigation Before Federal District Courts and the International Trade Commission,” William & Mary Law Review, 50 (2009): 699–1737.

56. For example, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002); Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 481 (1974); and Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327, 331 (1945).

57. Brenner v. Manson, 383 U.S. 519, 534 (1966): “[I]n light of the highly developed art of drafting patent claims so that they disclose as little useful information as possible – while broadening the scope of the claim as widely as possible – the argument based upon the virtue of disclosure must be warily evaluated.”

58. But see Lisa Larrimore Ouellette, “Do Patents Disclose Useful Information?,” Harvard Journal of Law and Technology, 25 (2012): 531–9 (arguing that in some instances patents are useful to at least some technicians); Jeanne C. Fromer, “Patent Disclosure,” Iowa Law Review, 94 (2009): 539–606 (arguing that optimally patents should be a source of technical disclosure); and Sean B. Seymore, “The Teaching Function of Patents,” Notre Dame Law Review, 85 (2010): 621–69 (the same).

59. In re Gay, 309 F.2d 769, 774 (1962).

60. Mark A. Lemley, “The Myth of the Sole Inventor,” Michigan Law Review, 110 (2012): 709–60, 746; Timothy R. Holbrook, “Possession in Patent Law,” SMU Law Review, 59 (2006): 123–76, 142–3; Douglas Lichtman, “Substitutes for the Doctrine of Equivalents: A Response to Meurer and Nard,” Georgetown Law Journal, 93 (2005): 2013–32, 2023, n. 42.

61. 35 U.S.C. §112 (2009).

62. Dan L. Burk and Mark A. Lemley, “Is Patent Law Technology Specific?,” Berkeley Technology Law Journal, 17 (2002): 1155–1206, 1190.

63. Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (“Claims speak to those skilled in the art.”).

64. Janice Mueller, “A Rich Legacy,” Journal of the Patent and Trademark Office Society, 81 (1999): 755–65, 758–9 (quoting remarks of Federal Circuit Judge Giles Rich).

65. Seymore, “Teaching Function of Patents,” 626–7.

66. For example, Robin Feldman, The Role of Science in Law (New York, NY: Oxford University Press 2009), 176–84 (advocating “plain language” patent claims).

67. Kenneth W. Dobyns, The Patent Office Pony: A History of the Early Patent Office (Fredericksburg, VA: Sergeant Kirkland's, 1997) 193.

68. Cf. Dan L. Burk, “The Role of Patent Law in Knowledge Codification,” Berkeley Technology Law Journal, 23 (2008): 1009–34, 1012 (arguing that “many familiar provisions of the patent statute may be viewed as incentives for codification of otherwise tacit knowledge”).

69. A detailed discussion of the controversies associated with this claiming format goes beyond the scope of this article, but stated briefly, the format engenders questions as to whether protection extends only to the product of the process, or whether the process itself is swept up into the scope of the claim. Abbott Labs v. Sandoz, 566 F.3d 1282 (Fed. Cir. 2009).

70. For example, Marc R. Poirier, “The Virtue of Vagueness in Takings Doctrine,” Cardozo Law Review, 24 (2002): 93–191, 154.

71. Bazerman, Edison's Light 102–3 (arguing that patents comprise Austinian speech acts); also Charles Bazerman, “Systems of Genre and the Enactment of Social Intentions,” in Genre and the New Rhetoric, ed. Aviva Freedman and Peter Medway (London: Taylor & Francis, 1994): 79–101, 84–5 (the same).

Additional information

Notes on contributors

Dan L. Burk

Dan L. Burk is Chancellor's Professor of Law at the University of California, Irvine, where he teaches courses in Patent, Copyright, and related topics. An internationally prominent authority on issues of high technology, he is the author of numerous papers on the legal and societal impact of new technologies, including articles on scientific misconduct, Internet regulation, biotechnology patenting, and competition policy.

Jessica Reyman

Jessica Reyman is Associate Professor of English at Northern Illinois University in DeKalb, IL. Her research interests include rhetoric of law, digital rhetoric, intellectual property and copyright, and law and ethics in social media. Her book, The Rhetoric of Intellectual Property: Copyright Law and the Regulation of Digital Culture, was published by Routledge in 2010.