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Patent law rests on two fundamental assumptions:

1. Technical progress is a good thing and should be promoted.
2. Most inventors will keep their inventions to themselves unless given a strong monetary incentive to make them public.

Neither of these assumptions is unchallengeable. Progress in weapons and gene technology, for instance, can be morally questionable, while some inventors, such as university researchers and freelance software developers, would disseminate their inventions even without any additional incentive. Nevertheless, assumption 1 holds true in most areas of technology and assumption 2 holds true for most inventions made in commercial industry. The assumptions are thereby presumably true enough to at least justify the existence of a patent system.

This justification can be stated as follows: a patent is an exchange between a private inventor and the general public, beneficial to both parties. The inventor agrees to publish his invention in such detail that the patent publication (where the invention is described) allows other inventors to learn from it and improve upon it. This accelerates technical development because publication reduces overlapping and duplicate inventive work. In return the inventor may be granted the right (for a limited time, in a limited geographical area and for gradually increasing fees) to prohibit others from selling, manufacturing or using the invention.

The inventor faces many uncertainties with respect to his private monetary benefits. Quite often the invention becomes public but the inventor receives only a rejection letter in return. If patent applications were to become irrevocably public immediately upon filing, this fundamental uncertainty would probably be a very strong deterrent against filing anything in the first place. To encourage active filing, patent applications do not become public until 18 months after their filing date. The application is examined at least once in this period, and the inventor is allowed to withdraw his application before it becomes public. The inventor may consider withdrawal especially if the first examination turns up strong objections against patentability. The possibility of withdrawal reduces uncertainty a lot, but not to zero. Sometimes the inventor is given an initial green light in the first examination, but damning objections are discovered after the publication date. By then it is too late to retract the application.

The benefits accruing to the inventor in the publication-for-exclusive-right exchange are therefore not automatic or certain. The patent may not be granted at all, it may be granted only for a very restricted part of the invention, or a green light before the invention becomes public may turn into red light after it has been irrevocably published. However, the public benefits of the patent exchange are not automatic, either. In fact the reason why the private benefits are so uncertain is precisely that complicated criteria have been put in place to protect the public benefits. Applications must meet these criteria if a patent is to be granted and a lot of examination and argument is therefore often required before a final decision can be made. There are three substantive patent criteria that are centrally important: inventive step, clarity and sufficient disclosure.

Inventive step:

Like any other exclusive right, every granted patent prevents competition (albeit only in the very limited subfield of technology defined by the patent claims). It is therefore clear that not every application can be granted. Inventive and industrial activity would grind to a halt if every field of technology would be laden with monopolies. It would also place a great burden on the courts where patent disputes are resolved. This is why applications have to be examined by patent offices, and some of them have to be rejected.

On the other hand, it should not be overly difficult to obtain a patent because there must be a sufficient incentive for inventors to disclose their inventions to the public. Patent offices have to separate useful and unique inventions from ones which merely repeat technical solutions which have been discovered before. To do this in a rational and informed manner, they judge every claimed invention by so-called inventive step criteria.

In very simplified form, the criterion for inventive step is that the same invention (or a very similar one) should not have been published before anywhere in the world. A direct copy of someone else’s invention can therefore not be patented (at least in principle – it is of course in practice very difficult to compare prior publications comprehensively with a global scope). But more importantly, inventive step criteria separate inventions which present only small, trivial or obvious improvements from the ones whose inventive contribution is large, significant, or surprising. The expression “very similar” in the parenthesis above is therefore at the heart of the discussion whenever inventive step is disputed.

Clarity and sufficient disclosure:

The public benefits of the patent system also suffer because some people abuse the patent system.The forms of abuse are multifarious, but one is particularly important. Applicants may present a so-called invention in deliberately obfuscated form. An invention defined in slippery terminology is problematic from a public-benefit perspective because it can be interpreted in many ways. The application process becomes muddled because comparisons to previous publications can be difficult to make. If the application happens to be granted with an ambiguous scope, the door is opened to creatively argued infringement lawsuits. In order to prevent such abuses of the patent system, applications have to meet the two remaining criteria: clarity and sufficient disclosure.

The patent claims are the centerpiece of a patent publication and they are always the primary focus of the clarity assessments performed by patent offices. The criterion of sufficient disclosure is more concerned with other parts of the patent application, especially the description and the figures. Patent publications will not be useful to the public (and will probably not even be read) unless they reveal a sufficient number of useful details about the invention. The quality control exercised by patent offices on sufficient disclosure is sometimes only cursory, because the primary reasons for rejection or acceptance nearly always relate to the patent claims, to inventive step and clarity. But in subsequent essays I will argue that all three of these criteria are in fact closely intertwined and cannot be separated from each other.The sufficient disclosure criterion is fundamentally important for realizing and balancing the private and public benefits of the patent system.