2012]
CONCEPTION AND MISCONCEPTION IN JOINT INVENTORSHIP
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“invention” or a “group of inventions so linked as to form a single general inventive concept.”81 Yet, in each state granting a patent resulting from the PCT application, the claims may differ to comply with local filing requirements. 82 A single invention could not receive the same patent protection in different countries using different claims unless the invention is something larger than the claims. The frequent judicial and scholarly statements that claims “define” the invention, then, are misleading.83 The invention is more than the claims; the claims limit the invention but they do not alone define it. “[I]t is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention.” 84 The written description portion of the specification “‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” 85 If the claims must always be read in light of the specification, the claims cannot “define” the invention; they merely limit the extent to which the patent protects the invention. The Leahy-Smith America Invents Act, the relevant provisions of which take effect on March 16, 2013, suggests that Congress shares this perception of the distinction between the claims and invention. The Section 102 amendments substitute the term “invention” in the novelty provisions of the Patent Act with the term “claimed invention,”86 which is in turn defined as “the subject matter defined
81
See id. arts. 2(i), 3(4)(iii), 17(3). See also Paris Convention for the Protection of Industrial Property art. 4(G), done on July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S. 305, available at http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html (establishing unity of invention requirement for priority patent applications). 82 See PCT, supra note 80, art. 28. 83 See, e.g., Sjoland v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988) (noting that claims define the invention); Mark J. Stewart, The Written Description Requirement of 35 U.S.C. § 112(1): The Standard After Regents of The University of California v. Eli Lilly & Co., 32 IND. L. REV. 537, 541 (1998-1999). 84 Adams, 383 U.S. at 49. 85 Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). 86 America Invents Act, supra note 3, § 3, to be codified as 35 U.S.C. § 102.