Shaky Claims


Janet Freilich, Fordham’s newest faculty member, cuts through the clutter of out-of-control patent verbiage.

Janet Freilich likes to compare patents to Game of Thrones: long, filled with detours, and hard to follow. Even the claim portion of a patent—the one sentence at the end meant to concisely summarize the described invention—usually proves to be just as verbose and confusing as the rest of the document. In her latest paper, “Patent Clutter,” Freilich ran an analysis of 25,000 patent claims and found that 20 percent of the language in them isn’t even about the patent’s core invention. Instead, they are padded with unnecessary words and misleading assertions. “It’s like keyword stuffing on web pages,” says Freilich, who joined Fordham Law this fall as an associate professor. “They put lots of extra verbiage in to get their work seen.”

Take United States Patent No. 6,450,942, which describes a machine that stimulates the vascular system with electrical pulses. The claim professes that the device could be used “for cosmic medicine, including for the preservation of muscle tone of astronauts.” In her paper, Freilich notes that nothing in the rest of the patent mentions astronauts or their particular health needs. Yet this wishful wording ensures the patent will turn up alongside hundreds or even thousands of others just like it in searches by thorough lawyers, joining a mountain of nearly unreadable text to sift through. Worse, some of the claims may contain enough vague notions to give them undeserved domain over the same area in which another creator has toiled on a legitimate invention. Television host John Oliver devoted one of his Last Week Tonight episodes last year to litigation-crazed “patent trolls” who use their broadly phrased patent claims to sue anybody and everybody.

“On the one hand, patents are a way to protect the patent holder, using words to put a fence around a technological concept,” says Freilich, who teaches Civil Procedure and Intellectual Property at Fordham. “That’s a way to incentivize innovation. But another purpose of a patent is to share ideas with the public so others can build on them. The more people know about an idea, the more likely someone will come along and take the next step. That means people need to read patents, but right now they don’t want to.”

Despite the numerous challenges for creators and inventors—the search costs, the extra legal work, and the potential for rejection or lawsuits—the language barrier in patents has gone largely unexamined. Legal scholars tend to research patent litigation, not the actual wording in the documents. Businesses probe confusing claims with textual analysis tools, but they are only concerned with practical questions: what technologies the patent covers, if a new patent infringes on an old one, whether a patent is worth buying or selling. While this research helps their bottom line, it is not reflective enough to address the patent clutter problem.

Enter Freilich, whose unique background in science, language, and the law was tailor-made to investigate outlandishly worded patents. As an undergraduate at Cornell, the Vancouver native crafted her own major in molecular and cell biology and literary anthropology. Though Freilich loved science, she didn’t see herself working with petri dishes and cell cultures for the rest of her life, so she went to Harvard Law School instead. There she fell for business law, moving on to a position with Covington & Burling LLP, which specializes in life sciences. She says she loved the work—especially when it allowed her access to labs to test products the firm represented. But after two years, academia called to her again. “I figured if, after a 12-hour day at work, I’d go home and read academic papers, then I was meant to be an academic,” she says.

Returning to Harvard Law as a postdoc fellow for two years, she pursued an interest in patents, which sprang from her time at Covington helping courts interpret the meaning of words in patents during Markman hearings. “Making arguments about what words should mean is really exciting,” she says.

Freilich soon established herself as a patent expert with papers such as “Pushing Patent Boundaries: An Empirical Assessment of How Patent Trolls and Other Litigants Use Patent Scope” (Hoover Institution Working Group on Intellectual Property, Innovation, and Prosperity, 2016); “Towards Patent Standardization” (Harvard Journal of Law and Technology, 2016); and “The Paradox of Legal Equivalents and Scientific Equivalence” (SMU Law Review, 2013).

At Fordham Law, she has continued that research while demystifying for her students the world of patents. “Students probably perceive patents as a technological subject, but what I hope to get across is that while there is science involved, a patent lawyer does the law and uses the same legal thinking lawyers employ in other areas they’re studying,” she says.

Freilich has applied that same clear-eyed perspective to her scholarship, coming up with ever-surprising conclusions in the process. In “Patent Clutter,” she finds that a little “non-inventive language” can be a good thing for patent holders, giving them wiggle room to defend their right to an idea against copycats. But these linguistic loopholes, so tempting to overuse, need to be kept in check. She proposes better search algorithms to sort results more efficiently (like the one that helped her research the paper itself), better tools to let patent examiners reject claims and demand redrafts, and new rules allowing patent holders to use unnecessary verbiage only in the main portion of the patent, not in the claim area.

With a record number of patents flooding the intellectual property pipeline and a complementary river of patent lawsuits rushing along with them, the time is ripe for the questions and solutions Freilich offers. “Patents are more high profile than ever, for better or worse,” she says. “There’s always work to make it better. That’s why I have a job.”

Story by Steve Wilson, photograph by Chris Taggart


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