Courts have long recognized and policed attempts to contract around the patent code. Settled law establishes that the proprietor of a patent which enjoys market power cannot extend that patent beyond its statutory term or restrain competition in an unpatented product via contract. Yet today a far more subtle and fundamental mechanism for drafting around the statute has materialized: the humble patent instrument itself. Patent drafters have only partially realized the remarkable set of tools they now possess for expanding the scope of patent-eligible subject matter, augmenting the market power of issued patents, and avoiding core precepts of the patent canon. This Article contends that the courts and the PTO should recover an awareness of claim formatting when reaching patent eligibility and enforcement decisions. To lay the groundwork for this analysis, Part I of this Article explains the traditional significance of claim formatting within the patent law. In Part II, this Article describes more recent trends that have begun to cross the Rubicon between technique and the tangible, discussing the circumstances surrounding Tarczy-Harnoch, Ochiai, Beauregard and related precedent. Part III then offers a primer regarding the use of skillful claim drafting to draft around the Patent Code. In so doing, drafters are able to thwart congressional intent and judicial reasoning that weds the scope of proprietary patent rights to the format of the claim.
John R. Thomas, Of Text, Technique, and the Tangible: Drafting Patent Claims Around Patent Rules, 17 J. Marshall J. Computer & Info. L. 219 (1998)