Masur: Classic Patent Scholarship

The next addition to the Classic Scholarship Project is by Professor Jonathan Masur of the University of Chicago Law School, whose extensive portfolio of scholarship is available here. He has written broadly about regulation and institutional design and has a fascinating series of papers involving hedonic psychology, but Written Description readers will probably be most interested in his patent-specific scholarship. For example, Masur has argued that the high costs of obtaining a patent are beneficial, that the asymmetry in appeals from the PTO has expanded patentability boundaries, that the PTO should have substantive rulemaking authority, and that patent liability rules may be inefficiently allocating search responsibilities between parties. All commentary below is his. —Lisa

Because Michael Madison, Michael Risch, TJ Chiang, and Ted Sichelman have done such an excellent job of canvassing classic patent scholarship, I am going to deviate slightly from the rules and include a few articles that made ground-breaking contributions that may have been somewhat overlooked. Please consider this a list of “classics” and articles that should be classics (if they are not already). The list proceeds from most recent to oldest.

Ian Ayres & Paul Klemperer, Limiting Patentees’ Market Power Without Reducing Innovation Incentives: The Perverse Benefits of Uncertainty and Non-Injunctive Remedies, 97 Mich. L. Rev. 985 (1999)

A tremendously creative and incisive piece that demonstrates the effects of different types of remedy regimes on the behavior of inventive firms within the marketplace. This article should be a cornerstone in how patent scholars think of the tradeoffs between property and liability rules.

Robert P. Merges, As Many as Six Impossible Patents Before Breakfast: Property Rights for Business Concepts and Patent System Reform, 14 Berkeley Tech. L.J. 577 (1999)

Provided superbly valuable early information on the behavior of examiners at the Patent and Trademark Office. This article prefigured the debates over both examiner incentives and PTO structure—to which other scholars including Arti Rai then made very valuable contributions, though alas mostly after 1999—and over business method patents.

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

Ted Sichelman mentioned this article, but it bears repeating. The anticommons has become one of the standard arguments in debates over the strength and numerosity of modern patents, and the notion will only gain importance now that the smartphone wars are in full flower. This was the article that, more than any other, brought those ideas to the IP community.

Craig Allen Nard, Deference, Defiance, and the Useful Arts, 56 Ohio St. L.J. 1415 (1995)

A terrific early take on the relationship between the various institutional actors in patent law. This article serves as a foundational piece in later thinking about patent law and institutional design.

Robert P. Merges, Intellectual Property Rights and Bargaining Breakdown: The Case of Blocking Patents, 62 Tenn. L. Rev. 75 (1994)

Classically insightful and prescient thinking by Merges on holdup and bargaining problems in patent law. This article has continued relevance for debates over standards-essential patents, liability and property rights, patent pools, and many other topics.

Louis Kaplow, The Patent-Antitrust Intersection: A Reappraisal, 97 Harv. L. Rev. 1813 (1984)

A rigorous re-thinking of the relationship between patent and antitrust law, a topic that has long bedeviled scholars from both disciplines and continues to trouble courts, the FTC, and a variety of other actors. Kaplow’s arguments set the stage for much of the legal evolution that has followed.