FUNCTIONAL CLAIMING AND THE PATENT BALANCE

If someone were to tell you that fax machines, remote printers, and even email were all patented as far back as 1840—and by a single inventor—you probably would not believe it. Indeed, you would be in good company; the Supreme Court essentially agreed with that sentiment in a landmark decision in 1853.1 Samuel Morse, best remembered for inventing the telegraph, proved that even great inventors are susceptible to claiming inventions that far exceed their actual contributions to the knowledge pool. The Court, in otherwise upholding Morse’s claims to telegraph technology, invalidated his claim to all “use of . . . electro-magnetism, however developed, for marking or printing intelligible characters, signs, or letters, at any distances . . .”—a claim that would cover each of the above-listed modern technologies, and many more.

The rejection of Morse’s overbroad claim demonstrated the Supreme Court’s general aversion to unbounded patents, and a specific wariness toward functional claiming—the practice of describing an invention according to what it does rather than what it is. The central premise of the patent system, and the key to its operability as an innovation engine, is balance. The public foregoes short term benefits offered by immediate exploitation of an invention in exchange for a more robust knowledge pool—and thus more inventions—in the long term.

Crucial to maintaining this balance is ensuring that an inventor is given exclusivity only as to her actual invention. Functional claiming tests this balance. Unfettered approval of functional claims risks granting exclusivity over not only the new and useful solution to a problem that is disclosed in a patent, but to every means of solving that problem—whether or not known, or even conceivable, to the inventor. And this can be exactly the effect when patents like Morse’s attempt to claim a device so broadly in terms of its function that the function itself—meaning the result caused by operation of the device—is captured by the claim. Where such a claim is afforded patent protection, the inventor obtains a right that is not commensurate with her contribution to the knowledge pool; the public is short-changed in the patent bargain.