Wednesday, December 26, 2012

Sichelman: "Recent" (1980-1999) Classic Patent Scholarship

The next addition to the Classic Scholarship Project is by Ted Sichelman, Professor of Law at the University of San Diego School of Law, whose scholarship is available here. He recently presented his work on purging patent law of "private law" remedies at the SCU software patent conference. I also highly recommend his work on commercialization and on the nuances of patenting by startups. All commentary below is his. —Lisa

My list of “classic” works adds to the outstanding efforts of Professors Michael Madison, Michael Risch, and TJ Chiang. As they’ve identified most of the older classics (and post-1999 works are “off limits”), I’ve focused on works between 1980 and 1999—making this a “recent” (but not “instant”) classics list.

Edwin Mansfield, Mark Schwartz & Samuel Wagner, Imitation Costs and Patents: An Empirical Study, 91 Econ. J. 907 (1981) (1216 citations on Google Scholar).

A classic premise justifying patent rights is that in the absence of these sorts of exclusionary rights, third parties could easily copy, manufacture, and distribute inventions, thwarting ex ante incentives to invent. Edwin Mansfield, Mark Schwartz, and Samuel Wagner provide one of the earliestand perhaps still the most comprehensiveempirical studies on the costs of imitation. Importantly, they found that for the products they investigated, imitation costs were on average about 65% of the original innovation costs. Their finding, of course, casts substantial doubt on the broad applicability of the “easy imitation” premise of intellectual property.

Rebecca Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56 U. Chi. L. Rev. 1017 (1989) (795 citations).

Unlike copyright law’s fair use doctrine, patent law is fairly stingy when it comes to its somewhat analogous “experimental use” defense. Other than the statutory exemption for experimental uses related to filings mandated by the Food and Drug Administration, the experimental use doctrine is basically limited to actions “gratifying a philosophical taste, or curiosity, or for mere amusement.” In her cogent plea for a broader experimental use exemption, Rebecca Eisenberg also offers a perspicuous accountbordering on trenchant critiqueof the aims of patent law generally.

Suzanne Scotchmer, Standing on the Shoulders of Giants: Cumulative Research and the Patent Law, 5 J. Econ. Persp. 29 (1991) (1212 citations).

In law circles, most consider the sole foundational work investigating the effects of patents on “cumulative” invention to be Robert Merges & Richard Nelson’s “On the Complex Economics of Patent Scope” (found on at least two of the “classic” lists on this blog). However, about the same time Merges and Nelson undertook their qualitative study of cumulative innovation, Suzanne Scotchmer (and Jerry Green) developed a quantitative model of patenting and cumulative innovation, which has since become a foundational work on the topic in economics circles. In a later articlethe one referenced hereScotchmer draws upon her earlier quantitative work to present an economically-driven descriptive account of cumulative innovation that patent law scholars should read with the same vigor as Merges and Nelson’s classic work.

Mark A. Lemley, The Economics of Improvement in Intellectual Property Law, 75 Tex. L. Rev. 989 (1997) (714 citations).

Not only is this Mark Lemley’s first classicin a line that will surely number in the league of Beatles’ hit singleshe conveyed to me that the idea for it came to him in a dream: the same sort of genesis for Descartes’ scientific method, the sewing machine, and the identification of DNA’s double helix structure. What’s most interesting about this article is not necessarily its thesiswhich focuses heavily on the obscure reverse doctrine of equivalentsbut the brilliance with which Lemley presents it.

John R. Allison & Mark A. Lemley, Empirical Evidence on the Validity of Litigated Patents, 26 AIPLA Q.J. 185 (1998) (528 citations).

Unlike Lemley’s “Economics of Improvement,” here, John Allison and Lemley stake out early territory in the burgeoning field of empirical studies of IP law. Although this article might be faulted for its somewhat limited data set and basic statistical methods, for its time, it was “state of the art,” filling an important gap in the empirical literature on the rate at which patents were found invalid in litigation.

Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter Innovation? The Anticommons in Biomedical Research, 280 Science 698 (1998) (1894 citations).

As with many of the most important patents, many “classic” articles in patent law are mere “improvements” to the existing literature. Michael Heller’s concept of the “anticommons”namely that too many rightsholders in property can prevent the efficient development of a resourcewas not quite new. However, Heller was able to repackage and reinvigorate a concept that has become increasingly important in a variety of fields connected to real property. Of course, one of these fields is intellectual property. In this article, Heller and Eisenberg investigate the anticommons concept in the field of biomedical innovation. Although the theoretical underpinnings of this article, at least in the biomedical field, have been called into doubt by subsequent empirical research, many IP scholarsespecially those in Europehave taken the anticommons thesis as gospel in toto. Whatever one’s inclination, the “anticommons” forms a core part of the lexicon of IP theory, making this article a “classic.”

Kevin G. Rivette & David Kline, Rembrandts in the Attic: Unlocking the Hidden Value of Patents (1999) (531 citations).

Some works are classics merely because they are perfect emblems of an eracapturing the zeitgeist far better than other works. Think Devo’s “Whip It.” Rembrandts in the Attic, by Kevin Rivette and David Kline, falls into this “zeitgeist classic” category, epitomizing the late 90s recipes for “monetizing” patent assets, and leading the way for the so-called “patent troll” or “non-practicing entity” (NPE) revolution, and the burgeoningwhat I term“patent bully” problem, namely large companies abusing their patent portfolios, generally to suppress competition. As such, this book should be perused by anyone studying the NPE or patent bully problems.

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