Tuesday, February 8, 2011

Sean Seymore on Novelty and Disclosure

Coming to patent law from physics, I have been interested in patent doctrines that seem crazy when I try to explain them to my physics friends. So I was intrigued to discover the work of a professor with a similar research agenda: Sean Seymore is a professor of law and chemistry at Vanderbilt, and he describes his project (in both of his papers I read) as "bridg[ing] the disconnect between patent law and the norms of science."

His latest published paper, Rethinking Novelty in Patent Law (Duke L.J. 2011), argues that the novelty test is too strict for complex technologies. He describes the "quintessential novelty problem" as trying to claim compound X when an earlier third-party patent recites the structure X as one of many compounds without additional details, leaving a question of enablement: was X already in the public's possession? He notes that the current novelty regime incentivizes the earlier patentee to conceal experimental failures and that "it appears that a third-party patent’s mere recitation of X by name or structure is, as a practical matter, sufficient to anticipate a subsequent inventor’s claim to the compound."

Seymore proposes a new novelty paradigm in which the examiner has the initial burden of proving that the disclosure of X in the earlier third-party patent is enabling, for which only documents dated earlier than the third-party patent may be used. He argues that this would promote innovation by allowing X to be patented (and thus enabled and exploited), but the article does not consider the innovation costs of this proposal. Making it easier to patent X will cause dynamic inefficiencies by increasing costs for other innovators who want to use X (in addition to creating static inefficiencies due to the increased price of X). These inefficiencies may well be outweighed by the benefits Seymore outlines, but due to the difficulty of measuring innovation, the problem should at least be acknowledged.

I also read The Teaching Function of Patents (Notre Dame L. Rev. 2010) as background for my own draft paper on patent disclosure (for which I surveyed nanotechnology researchers about how they use the technical content of patents). In this article, Seymore argues in favor of stronger patent disclosures to improve "the ability of the patent to disseminate technical knowledge." Jeanne Fromer (Fordham Law) had put forth a similar defense of robust disclosure requirements in Patent Disclosure (Iowa L. Rev. 2009), and Seymore could have more strongly recognized her contribution (rather than only citing her as part of "a limited amount of scholarship which addresses patent disclosure"). But Seymore's contribution is still valuable, as he joins Fromer in arguing against a long line of patent law theorists and economists who have critiqued the disclosure theory of patents (the idea that we award patents as quid pro quo for the patent disclosure), and he offers some different prescriptive suggestions.

Seymore's main suggestion for improving disclosure is that patent examiners should be able to require "working examples." When I read the abstract, I thought he was talking about physical models, but he actually means that "at least for complex inventions, an actual reduction to practice must become the standard of disclosure" (i.e., patents should not be awarded for "prophetic examples" through the legal fiction of "constructive reduction to practice"), and that inventors should "prove, through adequate detail in the written description, that the claimed invention has been constructed and works for its intended purpose." I think this suggestion is probably sound; as I describe in my own patent disclosure paper, many scientists are surprised to learn that patents can currently be awarded for a Gedankenexperiment, rather than only for inventions that have been shown to work. But it also seems difficult to compare the benefits of increased disclosure with the costs to innovation, which is a problem Seymore again does not address. Still, I enjoyed both articles, and I appreciate reading about patents from someone who actually knows about the technologies that they are trying to promote.

Update 2/22/11: I posted my patent disclosure paper on SSRN last week, so I added links to it. If you are planning on citing it, let me know so I can keep you apprised of updates.

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