Pathological Patenting: The PTO as Cause or Cure

The Patent Act was last revised in 1952. The hydrogen bomb was exploded that year, vividly demonstrating the power of the nucleus; in the ensuing postwar period, the Next Big Thing was clearly the molecule. Novel compounds were synthesized in the hopes of finding new medicines; solid-state devices exploited the special characteristics of germanium and other semiconductors; as investments in polymer chemistry soared, advice to the college graduate soon boiled down to one word ... just one word[:] ... Plastics. Over the next half-century, things changed dramatically. Better living through chemistry has begun to sound dated (if not sinister). Genomics and computer science have come into their own. The molecule is still valued, but not so much for its reactivity as for its informational content. Even the business of knowledge production has evolved. Once the border between science and technology was clear; now it is a blur. There are scholars who patent fundamental research, and commercial firms that are run like academic departments. And while knowledge has always grown cumulatively, the relationship among inventions has become more complex as products have become interoperable, functionality has converged, and markets have globalized. With the character of inventiveness changing so drastically, the need to reexamine the patent system has become evident. In the last three years, the Federal Trade Commission, the National Academy of Sciences, and even the Patent and Trademark Office ( PTO ) have suggested that it is time for reform. As I write, Congress is contemplating significant revision of the system. Given this context, Adam Jaffe and Josh Lerner have given us a wonderfully timely book-and also one that is beautifully executed. If Congress is to reform the system, the public ought to understand its current failings. Interest group politics have played an especially corrosive role in this field because the law is complex and creates substantial economic benefits on behalf of particularly well-organized parties. Further, as the authors note, the second class status of patent law within the academy has meant that the perspective usually provided by legal scholars has largely been absent here (p. 161). Their book is a splendid antidote. It lays out the basic structure of patent law in a manner that is sure to educate and intrigue both readers unfamiliar with law and lawyers unfamiliar with the patent system. It uses as examples patents on inventions that are accessible to even the congenitally innumerate: the ubiquitous peanut butter and jelly sandwich, the oxymoronic comfortable high-heel shoe, and (of course) the proverbial better way to catch[] ... mammalian pests not exceeding 100 grams (pp. 32, 52, 28). There is also a nice historical section demonstrating that there are no easy answers and that the debates over the patent system are enduring and cyclical (pp. 78-95)

Pathological Patenting: The PTO as Cause or Cure

The Patent Act was last revised in 1952. The hydrogen bomb was exploded that year, vividly demonstrating the power of the nucleus; in the ensuing postwar period, the Next Big Thing was clearly the molecule. Novel compounds were synthesized in the hopes of finding new medicines; solid-state devices exploited the special characteristics of germanium and other semiconductors; as investments in polymer chemistry soared, advice to the college graduate soon boiled down to one word ... just one word[:] ... Plastics. Over the next half-century, things changed dramatically. Better living through chemistry has begun to sound dated (if not sinister). Genomics and computer science have come into their own. The molecule is still valued, but not so much for its reactivity as for its informational content. Even the business of knowledge production has evolved. Once the border between science and technology was clear; now it is a blur. There are scholars who patent fundamental research, and commercial firms that are run like academic departments. And while knowledge has always grown cumulatively, the relationship among inventions has become more complex as products have become interoperable, functionality has converged, and markets have globalized. With the character of inventiveness changing so drastically, the need to reexamine the patent system has become evident. In the last three years, the Federal Trade Commission, the National Academy of Sciences, and even the Patent and Trademark Office ( PTO ) have suggested that it is time for reform. As I write, Congress is contemplating significant revision of the system. Given this context, Adam Jaffe and Josh Lerner have given us a wonderfully timely book-and also one that is beautifully executed. If Congress is to reform the system, the public ought to understand its current failings. Interest group politics have played an especially corrosive role in this field because the law is complex and creates substantial economic benefits on behalf of particularly well-organized parties. Further, as the authors note, the second class status of patent law within the academy has meant that the perspective usually provided by legal scholars has largely been absent here (p. 161). Their book is a splendid antidote. It lays out the basic structure of patent law in a manner that is sure to educate and intrigue both readers unfamiliar with law and lawyers unfamiliar with the patent system. It uses as examples patents on inventions that are accessible to even the congenitally innumerate: the ubiquitous peanut butter and jelly sandwich, the oxymoronic comfortable high-heel shoe, and (of course) the proverbial better way to catch[] ... mammalian pests not exceeding 100 grams (pp. 32, 52, 28). There is also a nice historical section demonstrating that there are no easy answers and that the debates over the patent system are enduring and cyclical (pp. 78-95)

11-20-1982 Preliminary Memorandum

SUMMARY: A voluntary deferred compensation plan allowed retiring employees to choose between three forms of payments, including an annuity bought by petrs from independent insurance companies who use sex-based actuarial tables. The question is whether the employer has violated Title VII by offering this optio

Reconsidering Experimental Use

In the years since the Supreme Court began to narrow the scope of patentable subject matter, uncertainties in the law have had a deleterious impact on several important innovation sectors, including, in particular, the life sciences industry. There are now initiatives to expand patentable subject matter legislatively. In this article, I suggest that the Supreme Court’s jurisprudence is an outgrowth of the concern that patents on fundamental discoveries impede scientific research. To deal with that issue, any measure to expand the subject matter of patenting should be coupled with a parallel expansion of defenses to infringement liability, including the restoration of a robust research defense. Most developed countries recognize strong defenses in favor of researchers and as OECD studies show, several are developing creative environments that lure scientists to relocate. It is therefore essential that the United States move quickly to enact laws that both encourage and facilitate research and that will preserve its technological dominance

Games Economists Play

When Professor Reichman called me about this symposium, I was intrigued. With the successive introduction of the photocopy machine, the videotape, computerization, digitization, the Internet, as well as a host of biotechnological discoveries, the problems facing the creative industries have changed dramatically. This accumulation of developments has altered the economic foundations on which intellectual property law is based and has pushed those of us in the field into a period of reconceptualization in which economic analysis is particularly fruitful. Thus, I was quite taken with the idea of bringing intellectual property and economics scholars together to promulgate a research agenda and I was, of course, delighted to be asked to contribute my thoughts. Before I set these out, I would like to begin with a question that may seem far afield, but which will, I believe, shed light on the agenda I propose. The question is this: why are there no continental lawyers here? Given Professor Reichman\u27s prominence in international-particularly European-circles, it should seem quite puzzling. Or rather, it would be quite puzzling to me, but for my experience at the Max Planck Institute for Foreign and International Patent, Copyright and Competition Law in Munich, Germany. The Institute does wonderful, insightful work, including excellent empirical studies. But while there, I was struck by the paucity of interest in economic theory among its scholars. As one of my colleagues there explained, continental legal theorists certainly ex- amine economic facts, but they are not of the view that economic theory has a large role to play in lawmaking. This thinking is, of course, very much at odds with the core premises of those assembled here, and I would like to take a moment to explore its basis. One reason for the difference in views on economic analysis may be specific to intellectual property. The argument here would be that although Europeans can be as theory-oriented as Americans, continental thinking about intellectual property has traditionally focused on moral arguments-claims about the personality of the author and his intimate connection to his work.\u27 In contrast, intellectual property regimes in the United States are constitution- ally defined as resting on instrumental-economic-precepts. As a result, economic analysis arguably has more to contribute here than it does abroad. But this cannot be the whole answer. It does not, for example, explain apparent continental indifference to the use of economic theory with respect to other legal issues, such as tort questions. Moreover, the rationales underlying intellectual property regimes are coalescing: as Professor Thomas Dreier has pointed out, there is more economics in continental rationales for protection than is usually acknowledged, and the TRIPS Agreement has brought these systems into even closer alignment. Thus, a mode of analysis that is utilized in the U.S. should now be relevant to Europe, even if it lacks intuitive appeal there

Giving the Federal Circuit a Run for Its Money: Challenging Patents in the PTAB

My main objective is directed at institutional questions, to help the PTO and Congress as each considers changes to the system and to gauge how well the PTAB could function to ameliorate the effect of Federal Circuit isolation and provide a basis for the court to consider new perspectives, write more persuasively, and provide better guidance. A second goal is to draw greater academic attention to the potential these procedures have for changing the patent system and to provoke discussion—outside the emerging PTAB bar—on how they ought to operate. In particular, the statute layers inter partes review in a specialized agency under appellate review in a specialized court. I offer some thoughts on how authority over patent jurisprudence should be allocated between these two centers of expertise. The Article proceeds as follows. Part I describes the three procedures. Part II evaluates use of the new system. Part III discusses the interaction between the PTAB and the Federal Circuit. Part IV looks at the problems these procedures raise for the parties, the adjudicators, and the sound administration of patent law

Percolation, Uniformity, and Coherent Adjudication: The Federal Circuit Experience

Two important lessons had been taught by the reactions to the Freund and Hruska Reports. One was that it was politically unacceptable to shut off any case in the lower federal courts from access to the Supreme Court by way of certiorari, however unavailing that might be in reality. . . . In addition, a widespread sentiment was evident among the bench and bar against having specialized courts. \u2