Certainty, Fence Building, and the Useful Arts

In Certainty, Fence Building, and the Useful Arts, 74 Ind. L.J. 759-800 (1999), the author, based upon contract theory, economic theory, and an empirical survey of federal district court judges, proposes that the United States adopt a patent opposition proceeding. Whereas United States trademark law allows for the publication of and third-party opposition to the issuance of a federal trademark, American patent law, unlike European and Asian patent systems, allows for no such proceeding regarding the patentability of a claimed invention before issuance

Empirical Legal Scholarship: Reestablishing a Dialogue Between the Academy and Profession

Should legal academics begin to engage in a greater degree of empirical scholarship, I believe that the gap between law schools and the profession will not only cease to distend, but actually will begin to contract. If what I assert is true, or even partially true, the question remains: Why is there such a paucity of empirical legal scholarship? Part I of this article discusses the importance and value of the empirical method and empirical scholarship by briefly exploring the philosophy of Pragmatism and its influence on the law. Thereafter, part II explores why legal academics do not engage in empirical scholarship on a more frequent basis. Last, this article proposes a potential remedy with the hope of encouraging the production of more empirical scholarship

Legitimacy and the Useful Arts

The fundamental question this Article addresses is who should be primarily responsible for making patent validity determinations: the courts5 or the Patent and Trademark Office (“PTO”)?6 Which entity *517 would best serve the constitutional goal of promoting the progress of the useful arts

The DMCA\u27s Anti-Device Provisions: Impeding the Progress of the Useful Arts?

In 1998, the U.S. Congress enacted the Digital Millennium Copyright Act (DMCA). The DMCA extensively revised the U.S. copyright law in a manner not seen since the Copyright Act of 1976. Commentators have written a great deal about the DMCA, particularly its broad anti-circumvention provisions, embodied in 17 U.S.C. § 1201. Much of the commentary on these provisions is critical, largely because these provisions have the effect, with some important exceptions, of greatly limiting access to and usage of works protected by “technological measures.” This effect occurs regardless of whether these works are in the public domain or subject to copyright protection. In fact, the anti-circumvention provisions aim to prevent activity far beyond that which would constitute copyright infringement. This Essay raises two points about the anti-circumvention provisions. First, these provisions seem inconsistent with the culture of intellectual property. In the world of proprietary boundaries and public domains, there is something special about access to protected works and the use of limits to avoid infringement, whether we are talking about fairly using copyrighted works or designing-around patented technology. Indeed, cultural enrichment and technological advancement are achieved by fairly using artistic expression and building upon technical knowledge. The focus of this Essay is on the access and use of artistic expression in patent law. Second, the anti-circumvention provisions of the DMCA, which aim to protect digital expression by erecting technological fences, have both an expressive and a technical component. These provisions are meant to prevent unauthorized access to and usage of expressive content by prohibiting: (1) access per se to works protected by technological measures, and (2) the manufacture and trafficking of devices primarily designed to circumvent technological restrictions. Thus, patent law, as well as copyright law, addressed this issue of circumvention-enabling technology. Circumvention-enabling technology, such as software, comprises patentable subject matter, and, resultantly, raises questions about the effect of the anti-circumvention provisions on patent law’s constitutional mission to promote the progress of the useful arts. In particular, assuming patent protection is important to the manufacturers of circumvention-enabling technology, one must consider the effect that the anti-device provisions have on the research and development decisions of these manufacturers and, more generally, to patent law’s delicate incentive dynamic. Although the answer to this dilemma is beyond the scope of this Essay, this issue is something that scholars should pursue further

In Memoriam — Howard B. Eisenberg

This is a tribute to Howard B. Eisenberg

Invention, Refinement and Patent Claim Scope: A New Perspective on the Doctrine of Equivalents

The doctrine of equivalents (DOE) allows courts to expand the scope of patent rights granted by the Patent Office. The doctrine has been justified on fairness grounds, but it lacks a convincing economic justification. The standard economic justification holds that certain frictions block patent applicants from literally claiming appropriately broad rights, and thus, the DOE is available at trial to expand patent scope and overcome these frictions. The friction theory suffers from three main weaknesses. First, the theory is implausible on empirical grounds. Frictions such as limits of language, mistake, and unforeseeability are missing from the leading cases. Second, there is not a convincing answer to the question of why the doctrine of equivalents, rather than some other doctrinal approach, should be used to overcome the frictions. The frictions can be overcome, or at least mitigated, for example, by astutely amending claims during prosecution; through a reissue proceeding after the patent issues; or through artful claim drafting as an initial matter. Third, proponents of a far-reaching DOE fail to pay adequate attention to the notice function of patent claims and are insufficiently sensitive to patent law\u27s delicate incentive dynamic. We develop a better explanation of why claim breadth falls short of the maximum breadth allowed by patent law. Our explanation replaces the passive patent attorney depicted in the friction theory with an active inventor and attorney who are capable of responding effectively to the frictions mentioned above. Whether an inventor obtains the broadest permissible claim breadth depends mostly on the talent and effort of the inventor and attorney in identifying what has been enabled. A good attorney predicts the embodiments that could be chosen by infringers and finds appropriate language to draft a suitably broad claim. We call this process claim refinement, and we develop a refinement theory of the doctrine of equivalents. We justify the doctrine of equivalents primarily as a tool for promoting efficient investment in claim refinement. Although critics of the DOE contend the doctrine unduly inhibits competition, we show the degree of competition is often unaffected by the presence or absence of the DOE. The inventor can block competition in the absence of the DOE by drafting broad patent claims. The DOE should be used to avoid socially wasteful preemptive refinement. We reject the popular notion that the DOE is especially appropriate in the case of unforeseeable, later-developed technology. We reach this conclusion because in certain cases patent applicants can capture unforeseen embodiments at relatively low cost through clever claim drafting strategies. And in other cases unforeseen equivalents are unattainable no matter the amount of time and money spent on refinement efforts. In the latter cases, patent applicants would not exert much effort refining their claims to cover these equivalents, and inventor\u27s incentives would not be much affected by a minute probability of loss of effective patent protection

Legal Forms and the Common Law of Patents

The question of institutional choice is important in all areas of the law, but particularly in the context of patent law with its divergent stakeholders, decentralized variance among industries regarding how the patent system is viewed and relied upon, and a persistent focus on reform in recent years. For over two hundred years, the courts have been the dominant force in the development of patent law. It should therefore come as no surprise to learn that a significant portion of American patent law, including some of the most important and controversial patent law doctrines, is either built upon judicial interpretation of elliptical statutory phrases or is devoid of any statutory basis. Thus, while Congress and the courts each have a hand in constructing the latticework of patent law, judges - not the authors of lex scripta - are the principal architects. The common law process - in the Hayekian sense - situates the judge within a given technological community, where norm identification can be more easily recognized and representative legal frameworks constructed that are more closely tethered to relevant social context. Such a pronounced common law role offers an opportunity to exercise significant discretion. How this judicial discretion has been managed can be gleaned from the common law’s willingness to construct legal forms, most notably the choice and balance between the creation of a rule-based (or rule-like) jurisprudence and a more standard-oriented approach. The evolution of the common law of patents has been interstitial and nuanced, displaying an understanding that a body of law devoted to promoting technological innovation - a decentralized enterprise with attendant norms unique to each innovative community - more often than not requires a less dichotomous approach, constructing analytical frameworks that are situated somewhere between a spotless rule and a pure standard. Through the lens of comparative advantage, therefore, this experience provides a strong case for judicial primacy in the context of substantive reform, and an important, yet modest, Congressional role, one limited to (1) bringing about procedural change or altering patent law’s judicial architecture; and (2) engaging in substantive corrective action by addressing a common law gone awry