Classic Patent Scholarship

Inspired by a series of posts by Professor Michael Madison (Pittsburgh) on the "lost classics" of IP law, I have been publishing additions to Madison's list by patent law professors. I asked each of them to share a few older (at least pre-2000) works that influenced their own scholarship and that they think young scholars should be aware of—either highly cited canonical works (which are still worth pointing out to those new to the field) or less famous works that seem underappreciated even by the experts. So far, this project has included contributions from Professors Tun-Jen Chiang, Michael Risch, Ted Sichelman, Jonathan Masur, Mark Lemley, Rochelle Dreyfuss, Sarah Burstein, Mike Carrier, Robert Merges, and myself. This page compiles all of their suggestions (roughly grouped by category); please visit their original posts for additional commentary. Also see here for a crowdsourced bibliography on IP and distributive justice. Contact me at ouellette@law.stanford.edu with corrections or suggestions.

Patent Theory and Economics

• Arnold Plant, The Economic Theory Concerning Patents for Inventions, 1 Economica 30 (1934). Argues that there is no clear economic justification for the patent system (including invention, commercialization, and disclosure theories).
• Fritz Machlup, An Economic Review of the Patent System (Subcomm. on Patents, Trademarks, and Copyrights of the S. Comm. on the Judiciary, Study No. 15, 85th Cong., 2d Sess. (Comm. Print 1958)). Reviews economic justifications for patents; famous for his statement that if we didn't have a patent system it would be irresponsible to recommend one, but since we have one, it would be irresponsible to abolish it.
• Richard R. Nelson, The Economics of Invention: A Survey of the Literature, 32 J. Bus. 101 (1959). Reviews the literature on how invention actually happens.
• Kenneth J. Arrow, Economic Welfare and the Allocation of Resources for Invention (1962) (chapter in The Rate and Direction of Inventive Activity: Economic and Social Factors). Cited for the Arrow Information Paradox (value of info for buyer not known until he has the info).
• William D. Nordhaus, Invention, Growth, and Welfare: A Theoretical Treatment of Technological Change (1969). Best known for "tentative" calculation of the optimal life of a patent as 1.1-34 years, and for concluding that welfare does not improve much past 6-10 year life. See also extension by F.M. Scherer and Nordhaus's response.
• Edmund W. Kitch, The Nature and Function of the Patent System, 20 J.L. & Econ. 265 (1977). Lays out the "prospect theory" of patents, focused on coordination of follow-on research (though also noting benefits for incentivizing commercialization and facilitating information transactions).
• Justin Hughes, The Philosophy of Intellectual Property, 77 Geo. L.J. 287 (1988).
• Rebecca Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56 U. Chi. L. Rev. 1017 (1989). Argues that the stingy experimental use exemption impedes science.
• Richard Gilbert & Carl Shapiro, Optimal Patent Length and Breadth, 21 RAND J. Econ. 106 (1990).
• Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 Colum. L. Rev. 839 (1990). Argues that racing is rarely wasteful, and that efficiency gains from pioneer's ability to coordinate are generally outweighed by loss of competition for improvements.
• Suzanne Scotchmer, Standing on the Shoulders of Giants: Cumulative Research and the Patent Law, J. Econ. Persp., Winter 1991, at 29. Draws on her earlier quantitative model of patenting and cumulative innovation (with Jerry Green).
• Mark F. Grady & Jay I. Alexander, Patent Law and Rent Dissipation, 78 Va. L. Rev. 305 (1992). "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."
• Robert P. Merges, Intellectual Property Rights and Bargaining Breakdown: The Case of Blocking Patents, 62 Tenn. L. Rev. 75 (1994). Describes the holdup and bargaining problems; has continued relevance for standards-essential patents, patent pools, etc.
• Robert P. Merges, Contracting into Liability Rules: Intellectual Property Rights and Collective Rights Organizations, 84 Calif. L. Rev. 1293 (1996). Collective rights organizations can be more efficient than compulsory licenses.
• Mark A. Lemley, The Economics of Improvement in Intellectual Property Law, 75 Tex. L. Rev. 989 (1997). Argues that patent principles regarding improvements make more sense than analogous copyright rules.
• Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter Innovation? The Anticommons in Biomedical Research, 280 Science 698 (1998). Due to high transaction costs, a proliferation of patents on basic upstream biomedical research may be hindering more applied research downstream.
• 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). Demonstrates the effects of different types of remedy regimes on firms' behavior.
• William M. Landes & Richard A. Posner, The Economic Structure of Intellectual Property Law (2003) (mostly based on pre-2000 articles). Unified law-and-economics approach to IP law (with a focus on copyright law).

Patents and Non-Patent Incentives (including the Bayh–Dole Act)

• Brian D. Wright, The Economics of Invention Incentives: Patents, Prizes, and Research Contracts, 73 Am. Econ. Rev. 691 (1983).
• Rebecca S. Eisenberg, Proprietary Rights and the Norms of Science in Biotechnology Research, 97 Yale L.J. 177 (1987).
• Rebecca S. Eisenberg, Public Research and Private Development: Patents and Technology Transfer in Government-Sponsored Research, 82 Va. L. Rev. 1663 (1996).
• Michael Kremer, Patent Buyouts: A Mechanism for Encouraging Innovation, 113 Q.J. Econ. 1137 (1998).
• David C. Mowery, Richard R. Nelson, Bhaven N. Sampat & Arvids A. Ziedonis, The Effects of the Bayh-Dole Act on U.S. University Research and Technology Transfer, in Industrializing Knowledge 269 (Lewis M. Branscomb et al. eds., 1999).
• Arti Kaur Rai, Regulating Scientific Research: Intellectual Property Rights and the Norms of Science, 94 Nw. U. L. Rev. 77 (1999).

Patent Doctrine and Treatises

• Thomas Green Fessenden, An Essay on the Law of Patents for New Inventions (1810) (the first American patent law treatise) (the 2d ed. from 1822 is also freely available).
• George Ticknor Curtis, A Treatise on the Law of Patents for Useful Inventions in the United States of America (1849) (full text also available for 1854 and 1873 editions).
• Albert H. Walker, Text-Book of the Patent Laws of the United States of America (1883) (full text also available for 1885, 1889, 1895, 1904) (Walker on Patents has gone through many editions and is now Moy's Walker (MOY-PAT) on Westlaw).
• William C. Robinson, The Law of Patents for Useful Inventions (1890) (3 volumes).
• Odin B. Roberts, Contributory Infringement of Patent Rights, 12 Harv. L. Rev. 35 (1898). Discusses Wallace v. Holmes and the genesis of contributory infringement.
• Harry A. Toulmin, Invention and the Law (1936).
• P.J. Federico, Commentary on the New Patent Act, 75 J. Pat. & Trademark Off. Soc'y 162, 1967 (1993) (first published in 1954); Giles S. Rich, Principles of Patentability, 28 Geo. Wash. L. Rev. 393 (1960). Critical commentary on the 1952 Patent Act by its drafters.
• L. James Harris, Some Aspects of the Underlying Legislative Intent of the Patent Act of 1952, 23 Geo. Wash. L. Rev. 658 (1954).
• Giles S. Rich, Congressional Intent–Or, Who Wrote the Patent Act of 1952?, in Patent Procurement and Exploitation 61 (Sw. Legal Found. ed., 1963), reprinted in Nonobviousness—The Ultimate Condition of Patentability (John F. Witherspoon ed., 1980).
• Edmund W. Kitch, Graham v. John Deere Co.: New Standards for Patents, 1966 S. Ct. Rev. 293. Discusses historical development of obviousness standard, argues that commercial success is an unreliable indicator, and notes that it might make sense for PTO to succumb to institutional pressure to grant invalid patents rather than devoting more resources to weeding out unimportant patents.
• Giles S. Rich, Laying the Ghost of the “Invention” Requirement, 1 APLA Q.J. 26, 38 (1972); Giles S. Rich, Escaping the Tyranny of Words – Is Evolution in Legal Thinking Impossible?, 60 J. Pat. Off. Soc’y 271 (1978). The new § 103 eliminated the old "invention" requirement.
• Donald S. Chisum, Chisum on Patents (first published 1978, regularly updated on LexisNexis). Currently the leading patent treatise, updated regularly.
• Donald W. Banner, Innovation, Patents and the National Interest, 12 Intell. Prop. L. Rev. 37 (1980).
• A. Samuel Oddi, Contributory Infringement/Patent Misuse: Metaphysics and Metamorphosis, 44 U. Pitt. L. Rev. 73 (1982).
• Howard T. Markey, Why Not the Statute?, 65 J. Pat. Off. Soc’y 331 (1983).
• Robert P. Merges, Commercial Success and Patent Standards: Economic Perspectives on Innovation, 76 Cal. L. Rev. 803 (1988); Robert P. Merges, Uncertainty and the Standard of Patentability, 7 High Tech. L.J. 1 (1992). Economic analysis of the obviousness doctrine. Criticizes emphasis on commercially success and other secondary considerations (except failure of others); presents "uncertainty-based" view of obviousness.

Empirical Work

• Joseph Rossman, The Psychology of the Inventor: A Study of the Patentee (2d ed. 1931) (republished as Industrial Creativity: The Psychology of the Inventor (1964)). A patent examiner questioned inventors about their incentives.
• Edwin Mansfield, Mark Schwartz & Samuel Wagner, Imitation Costs and Patents: An Empirical Study, 91 Econ. J. 907 (1981). One of the earliest and most comprehensive studies of the costs of imitation. Found that imitation costs were on average 65% of original innovation costs.
• Edwin Mansfield, Patents and Innovation: An Empirical Study, 32 Mgmt. Sci. 173 (1986); Richard C. Levin, Alvin K. Klevorick, Richard R. Nelson & Sidney G. Winter, Appropriating the Returns from Industrial Research and Development, 1987 Brookings Papers on Econ. Activity 783. Surveys of firms about how they use patents.
• Zvi Griliches, Patent Statistics as Economic Indicators: A Survey, 28 J. Econ. Lit. 1661 (1990). Surveys work on counting patents and patent citations.
• Josh Lerner, Patenting in the Shadow of Competitors, 38 J.L. & Econ 463 (1995). Biotech firms with high litigation costs are less likely to patent in subclasses with other patents.
• John R. Allison & Mark A. Lemley, Empirical Evidence on the Validity of Litigated Patents, 26 AIPLA Q.J. 185 (1998).

Institutional Design

• Paul Goldstein, The Competitive Mandate: From Sears to Lear, 59 Calif. L. Rev. 873 (1971). Discusses the balance of power over innovation policy between states and the federal government.
• Commission on Revision of the Federal Court Appellate System, Structure and Internal Procedures: Recommendations for Change, reprinted in 67 F.R.D. 195 (1975). Described problems such as forum shopping in patent litigation, leading to the creation of the Federal Circuit (though it did not recommend a specialized patent court).
• Rochelle Cooper Dreyfuss, The Federal Circuit: A Case Study in Specialized Courts, 64 N.Y.U. L. Rev. 1 (1989).
• Craig Allen Nard, Deference, Defiance, and the Useful Arts, 56 Ohio St. L.J. 1415 (1995). Explores the relationship between various institutional actors in patent law.
• 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). Valuable early information on the behavior of PTO examiners, prefiguring debates over examiner incentives and PTO structure.

Historical Work

• 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). Woodward & Lutz describe the evolution of claiming.
• Fritz Machlup & Edith Penrose, The Patent Controversy in the Nineteenth Century, 10 J. Econ. Hist. 1 (1950). Describes the history of the controversy over granting patents and the patents-vs-prizes debate.
• Kenneth L. Sokoloff, Inventive Activity in Early Industrial America: Evidence from Patent Records, 1790–1846, 48 J. Econ. Hist. 813 (1988). Early patent analysis.
• Edward C. Walterscheid, To Promote the Progress of Useful Arts: American Patent Law and Administration, 1798-1836 (1998). Discusses how the patent system really worked in the early days of patenting.

Antitrust and Standards

• Giles S. Rich, The Relation Between Patent Practices and the Anti-Monopoly Laws, 24 J. Pat. Off. Soc’y 85 (1942).
• William F. Baxter, Legal Restrictions on Exploitation of the Patent Monopoly: An Economic Analysis, 76 Yale L.J. 267 (1966).
• Ward S. Bowman, Jr., Patent and Antitrust Law: A Legal and Economic Appraisal (1973).
• Martin J. Adelman, Property Rights Theory and Patent-Antitrust: The Role of Compulsory Licensing, 52 NYU L. Rev. 977 (1977).
• Louis Kaplow, The Patent-Antitrust Intersection: A Reappraisal, 97 Harv. L. Rev. 1813 (1984).
• Joseph Farrell & Garth Saloner, Standardization, Compatibility, and Innovation, 16 RAND J. Econ. 70 (1985).
• Richard J. Gilbert & Steven C. Sunshine, Incorporating Dynamic Efficiency Concerns in Merger Analysis: The Use of Innovation Markets, 63 Antitrust L.J. 569 (1995).

Design Patents

• Barbara A. Ringer, The Case for Design Protection and the O’Mahoney Bill, 7 Bull. Copyright Soc'y U.S.A. 25 (1959). Summary of arguments that had been made against design patents.
• Matthew Nimetz, Comment, Design Protection, 15 Copyright L. Symp. 79, 111 (1967). First economic analysis of design patents.
• Ralph Brown, Copyright-Like Protection for Designs, 19 U. Balt. L. Rev. 308 (1989). Argument against sui generis design protection bill.
• Jerome H. Reichman, Design Protection and the New Technologies: The United States Experience in a Transnational Perspective, 19 U. Balt. L. Rev. 6 (1989). History of design protection in US; argues in favor of sui generis design protection.
• Jay Dratler, Jr., Trademark Protection for Industrial Designs, 1988 U. Ill. L. Rev. 887 (1988). TM law is better than patents or copyright for design protection.
• David S. Welkowitz, Trade Dress and Patent—The Dilemma of Confusion, 30 Rutgers L.J. 289 (1999). TM law should not be used to protect designs.

Other

• Kevin G. Rivette & David Kline, Rembrandts in the Attic: Unlocking the Hidden Value of Patents (1999). Not an academic piece, but it epitomizes the late 90s recipes for monetizing patent assets, paving the way for non-practicing entities and patent bullies.