The uninvited guest: patents on Wall Street

For at least the past twenty-five years, financial services industries have been creating innovative products and services without the help of patents. The 1998 State Street Bank case changed all this, making patents freely available in these industries. Will patents help or hurt financial services innovation in the long run? This article sheds some light on this issue. ; Before the advent of patents, several “appropriability” mechanisms protected financial services innovation: “first mover” advantages, complementary or “cospecific” assets, and trade secrecy. Evidence suggests that, in the immediate post-patent era, financial firms’ first order of business was to protect these traditional appropriability practices. This attitude explains the early push to secure a “prior use rights” defense to protect established firms against patent claims by upstart outsiders. From a historical perspective, this reaction to the “patent threat” tracks that of other industries: in particular, nineteenth-century railroads and the software industry of the 1980s. ; In the end, the author argues, patents are not likely to cause any real and lasting problems. Although patents may increase the costs of interchanging innovative ideas, they may bring some unintended benefits as well—by fostering spin-offs and facilitating entry by start-ups, for example. Like random shocks in the natural world, the new patent regime provides a shakeup that could bring some good but unpredictable consequences.Patents ; Financial services industry

After the Trolls: Patent Litigation as Ex Post Market-Making

Patent policy has been dominated lately by efforts to reduce rent-seeking patent troll litigation. As recent reforms begin to take effect, it is timely to consider the more constructive aspects of patent litigation. This Article contends that the lag between product development and patent litigation, which pushes the problem of patent valuation into the ex post (after product development) period, serves just such a positive function. Re-search, development, and product roll-out can all take place first. Then, at a later stage, patent litigation sorts out the relative merits and contributions of the various inventors and competitors who contributed to the new product or technology. In the time between early commercialization and litigation, a good deal of helpful information comes to light about the product and its market. This makes valuation more tractable, especially as compared with the early (ex ante) development period, when uncertainty is high. Litigation also serves as a structured process that promotes party settlement, adding another dimension to its potentially positive role

Intellectual Property and the Costs of Commercial Exchange: A Review Essay

A Review of The Commercial Law of Intellectual Property by Peter A. Alces and Harold F. Se

Intellectual Property Rights and the New Institutional Economics

When someone speaks of the law and economics of intellectual property rights (IPRs), an image along the lines of the following diagram is apt to come to mind: Wilson Sonsini Goodrich & Rosati Professor of Intellectual Property Law, U.C. Berkeley (Boalt Hall) School of Law. For helpful comments, the author wishes to thank members of the Vanderbilt Law School Conference, Taking Stock: The Law and Economics of Intellectual Property Rights, April, 2000. The usual disclaimer applies. This is the basic illustration of monopoly price and output, familiar from introductory microeconomic texts. It is often used to explain the effects of IPRs, with the twist that, in this case, monopoly is good because it elicits desired investment in new intellectual creations. Critics of law and economics dispute the proper characterization of this diagram and all that it represents. Some say it is highly simplistic, even misleading; others deem it an abomination, as wrong for its normative assumptions and implications as for its positive misrepresentations of economic reality. Critics might be surprised to learn how many within the economics trade agree with them. Within economics, and even law and economics, many scholars have been working assiduously to unpack the assumptions, and to elaborate the conditions, behind diagrams such as this one. The past thirty to forty years has produced an eclectic and open-ended strain of economics that parallels, and in some ways rivals, neoclassical economics. The New Institutional Economics ( NIE ) appears with increasing frequency in the law and economics literature. This brief Paper explains why it also has a central place in research on IPRs. To convey a sense of the applicability of the NIE to IPRs, I begin with a critique of the basic microeconomic diagram we started with

To Waive and Waive Not: Property and Flexibility in the Digital Era: 23rd Annual Horace S. Manges Lecture, April 6, 2010

Even in an era when creative works can sometimes be made collectively, and where copying and modifying existing works is often easy, individual ownership of discrete creative works still makes sense. Individual creative effort is still the crucial ingredient for many high quality works, and the control conferred by ownership is often the most efficient, and even more frequently the most fair, social arrangement. Even so, a common argument against property rights in the digital era is that they come with a heavy transactional burden. The need to clear permission to use digital works is said to impede the potential of high velocity distribution models and participatory creative efforts. Too many property rights, too many clearance and licensing deals, too much friction in the great digital creativity machine—all stand in the way of progress. There are, broadly speaking, three solutions to the problem. First, society can cut back on the number of property rights, or rework the structure of rights with an eye toward transactional efficiencies. Second, right holders or society in general can invest in rights clearance mechanisms that make it easier for users and consumers of rights-protected works to transact more efficiently. Third, legal rules can be tailored to make it easier for right holders to commit to a binding non-enforcement of their rights. The purpose of this brief Article is to explore in some depth this third option. I begin by describing how waiver contributes to the supple texture of property rights, making it easy for individuals to exercise choices after rights have been granted. This is, in my view, a cornerstone feature of property rights, and one of their chief advantages over other entitlements and incentive regimes. Next, I show how waiver fits with other basic features of property rights. I argue that waiver can be thought of as an aspect of the structure of rights, as well as a (particularly simple) rights clearance mechanism. Finally, I describe some simple ideas that could clarify knotty issues surrounding legal requirements for waiver of intellectual property rights. The most important are: 1) binding, easily verified waiver mechanisms that are "good against the world"; and 2) scope of waiver rules that make it simple for right holders to selectively waive rights, for example, permitting some uses and not others. I conclude with a call for more attention to the waiver strategy as a way of retaining our traditional commitment to property while easing the transactional burden that property rights entail

The Relationship Between Foundations and Principles in IP Law

In my book Justifying Intellectual Property (JIP), I wrote about what I call the “foundations” of the field of intellectual property (IP) law. I tried to distinguish between a foundational level of discourse and another level, the level of basic principles. In the San Diego conference at which my book was discussed—and in several other settings as well—the most frequent and persistent line of questioning about my book centered on the relationship between these two levels. That is what this brief Article is about

Copyright and Distributive Justice

Is our copyright system basically fair? Does it exacerbate or ameliorate the skewed distribution of wealth in our society? Does it do anything at all for disempowered people, people at the bottom of the socio-economic hierarchy? In this Article we engage these questions. Our goal is to begin a more comprehensive discussion of the effect the copyright system has on the allocation of wealth in our society

Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making

Now that the Supreme Court has decided Bilski v. Kappos, there is an enormous amount of speculation about the case’s impact on patent applicants, litigants, and other participants in the patent system. Most of the commentary is concerned with the holding in Bilski, how this holding will be applied by courts and the Patent Office, and ultimately, the effect of the holding on inventors, and those who hold and seek patents