Wednesday, February 16, 2011

Why the Best Law Review Articles Deserve Patents

As new articles editors begin screening the current wave of law review submissions, I have been thinking about when I was in their position a year ago, reading articles during every waking hour and trying to identify the best legal scholarship. My vision of legal scholarship was shaped as a 1L by reading Academic Legal Writing (I have the 3rd edition) by Eugene Volokh of the Volokh Conspiracy (highly recommended for new law students). Volokh argues that a good article should make a claim that is useful, novel, and nonobvious—paralleling §§ 101, 102, and 103 of the Patent Act. He credits this idea to Stephen Carter's 1991 Yale Law Journal essay, Academic Tenure and "White Male" Standards: Some Lessons from the Patent Law (pay access only, from JSTOR or Hein). Carter writes:
[M]y claim is not that every article must, in effect, deserve a patent if it is to be adjudged a good piece of work; my claim, rather, is that the works of scholarship that can meet the patent test are better—add more to human knowledge—than the works that cannot. So if one wants to argue the relative merits of different scholarly works, the patent law tests of novelty and nonobviousness provide useful and workable starting points.
Volokh goes beyond Carter by adding the § 101 utility requirement: "It helps if the article is useful—if at least some readers can come away from it with something that they'll find professionally valuable." His examples focus on utility for legal practitioners, which makes me wonder if he would agree with Judge Posner's diatribe against too many "law and ..." articles being published by law reviews. I would agree that if an article is so esoteric or specialized that it would only be useful to a few people, then it doesn't belong in a generalist law review. But I think the top law journals should publish the top legal scholarship regardless of field, even if it is only useful for other academics, so I would argue for a broader concept of utility—the "some readers" who find something professionally valuable could be legal philosophers or economists or scholars of "law and literature."

To the above "patent requirements" for articles, I would add the disclosure requirements of § 112. The article should "contain a written description" of the idea in "clear, concise, and exact terms." Clear: avoid jargon! Concise: keep it short! Some law professors think "word limits are for suckers," but we rejected otherwise outstanding articles for being way too long, and the long articles we took were accepted in spite of, not because of, their length. Articles should also "enable any person skilled in the art" to follow and use the idea, which raises the question of who the PHOSITA is for law review articles. For a generalist journal like the Yale Law Journal, I think a 2L who has taken a course in the relevant area should be able to at least follow the whole argument, even if faculty consults are needed to help fully appreciate it.

Finally, § 112 directs patentees to "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." Academic authors help their readers (particularly non-specialist 2L articles editors) by being similarly honest about the scope of their claims. What is really new about the piece? What is the "invention," and what is "prior art"? Too many articles falsely claim to revolutionize a field, and a few articles offer a truly novel insight without claiming it as their own.

Of course, as Carter pointed out, very few articles deserve a "patent." Many valuable articles fall short on one (or more) of the above requirements. But a few of the articles I read last year particularly stood out, such as The Inducement Standard of Patentability by Abramowicz and Duffy, or, in the non-patent world, Intersystemic Statutory Interpretation by Abbe Gluck and The One and Only Substantive Due Process Clause by Ryan Williams. As a reader—and especially as an articles editor looking for pieces to publish—it is thrilling to come across new "inventions" like these.

1 comment:

  1. On § 101 utility requirement: I agree. I also think that sometimes that newest ideas are not easily transmittable to "professionals" working in the field. Articles along these lines may provide the foundations for new legal and constitutional doctrines, or begin to shift legal thinking on a topic in more subtle ways. Thus, I think the test of whether others within the academic field find the contribution to be useful is apt: other academics may be better than practitioners--who are often trying to argue cases from present standards--at spotting a foundation that may someday be useful to legal practice.

    Also, it's not always clear what the contribution of an article may be from the outset. Let's say that a scholar produces a theory of how constitutional change worked at one point in the nation's history. Professionals certainly take away an understanding of the dynamics of change at one point, and perhaps they may even use it to inspire current efforts. But maybe not. Maybe we just understand our legal or institutional processes better. Or maybe the article will be used or relied upon by professionals in unforeseen ways. Sometimes it takes time to figure out what, exactly, the contribution of an article will be.

    As for the disclosure requirements of § 112, I think the abstract is a brilliant invention. It forces writers to synthesize their claims and to provide a high-level road map. I wish that every journal would require one!