Risch: Classic Patent Scholarship

The next addition to my Classic Scholarship Project is from Professor Michael Risch (Villanova Law), whose scholarship has been featured on Written Description and is available here on SSRN. He recently looked at over 3700 early American patents and found some important differences from many characterizations of the early patent system. Here is his list of classic patent scholarship (where I set an arbitrary cutoff of pre-2000), which he divided into two categories (patent theory and historical work)—links and comments in [brackets] are from me:

Patent Theory

Edmund W. Kitch, The Nature and Function of the Patent System, 20 J.L. & Econ. 265 (1977). This is probably on many lists [including Professor Madison's], but it is a must read for the prospect theory.

Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 Colum. L. Rev. 839 (1990). Also on a bunch of lists, but a must read. [This was also on Professor Tun-Jen Chiang's list—see my summary there.]

Mark F. Grady & Jay I. Alexander, Patent Law and Rent Dissipation, 78 Va. L. Rev. 305 (1992). This is not quite as well known as the first two articles, but it presents an interesting and helpful theory. [They argue that patent rents (the difference between the gain to society from an invention and its development cost, which is awarded to the inventor through the patent) can be lost ("dissipated") through wasteful competition for the patent monopoly, but that granting a patent is justified when it eliminates a race to improve an invention. "Rent dissipation theory predicts that the courts will enforce a patent when the size of the patent rent is proportionate to the rent dissipation that the invention's technological signal would otherwise induce."]

Richard R. Nelson, The Economics of Invention: A Survey of the Literature, 32 J. Bus. 101 (1959). This article provides an interesting discussion of patent and invention theory from an early economic perspective.

William M. Landes & Richard A. Posner, The Economic Structure of Intellectual Property Law (2003). The book is dated 2003, but most of the chapters come from earlier articles by Landes & Posner.

Historical Work

Kenneth L. Sokoloff, Inventive Activity in Early Industrial America: Evidence from Patent Records, 1790–1846, 48 J. Econ. Hist. 813 (1988). Sokoloff was doing early patent analysis before anyone else was thinking about it, and this article is a great example of how we can learn context about our inventive history based on who was patenting what, and where.

Edward C. Walterscheid, To Promote the Progress of Useful Arts: American Patent Law and Administration, 1798-1836 (1998) (I would include his book on the IP Clause, but it is 2002). Walterscheid discusses how the patent system really worked in the early days of patenting, and, along with Sokoloff, gives a good picture of our early patenting history.

William Redin Woodward, Definiteness and Particularity in Patent Claims, 46 Mich. L. Rev. 755 (1948); Karl B. Lutz, Evolution of the Claims of U.S. Patents, 20 J. Pat. Off. Soc’y 134 (1938). Lutz and Redin do a good job of describing the evolution of claiming.

P.J. Federico, Commentary on the New Patent Act, 75 J. Pat. & Trademark Off. Soc'y 162, 1967 (1993); Giles S. Rich, Principles of Patentability, 28 Geo. Wash. L. Rev. 393 (1960). Rich and Federico are critical reading for understanding context of the 1952 Act. [See my comments about Principles of Patentability on Chiang's list. As noted there, Federico and Rich drafted the 1952 Act. The Federal Circuit has cited Federico's commentary, first published in 1954, as "an invaluable insight into the intentions of the drafters of the Act." Akamai v. Limelight, 692 F.3d 1301, 1309 n.2 (Fed. Cir. 2012) (en banc).]