More Classic Patent Scholarship

It has been a while since the last update to my Classic Patent Scholarship, so I thought I would add some works that I view as "classics" but that haven't made it onto the list yet.

First, while the body of "Beyond IP" scholarship is blossoming (see, e.g., the two Yale ISP conferences, where I got to present work with Daniel Hemel), there is a long history of work on innovation incentives beyond patents. For example, Machlup and Penrose (already on the list of classics) describe how the patents-vs-prizes debate dates back to at least the 19th century. Here are two works I would add to the classics list:

• Brian D. Wright, The Economics of Invention Incentives: Patents, Prizes, and Research Contracts, 73 Am. Econ. Rev. 691 (1983).
• Michael Kremer, Patent Buyouts: A Mechanism for Encouraging Innovation, 113 Q.J. Econ. 1137 (1998).

Other important works in this genre, which don't quite fit under my pre-2000 "classic" bar, include Frischmann 2000, Shavell & van Ypersele 2001, Gallini & Scotchmer 2002, and Abramowicz 2003.

As a former grant-funded university researcher (during my physics grad school days), I'm particularly interested in the role of grants and other direct funding as a non-patent incentive, and their overlap with patents through the Bayh–Dole Act. Here are some additional classics in this area:

• 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).
• Arti Kaur Rai, Regulating Scientific Research: Intellectual Property Rights and the Norms of Science, 94 Nw. U. L. Rev. 77 (1999).
• 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).

Finally, there is now a long strand of literature on the Federal Circuit as an institution and the value of specialized patent adjudication; anyone interested in this area should start with the work of Rochelle Dreyfuss:

• Rochelle Cooper Dreyfuss, The Federal Circuit: A Case Study in Specialized Courts, 64 N.Y.U. L. Rev. 1 (1989).

For other classics—including more extended commentary on them by prominent patent law professors—see the Classic Patent Scholarship page. And if you have suggestions of other pre-2000 works that should be on the list, please add them to the comments on send me an email!

Merges: An Essay on the Legacy of Chisum on Patents

Robert Merges originally wrote this essay, previously unpublished, on the thirtieth anniversary of Chisum on Patents: A Treatise on the Law of Patentability, Validity and Infringement (1978-present). Merges has generously provided Written Description with a copy. In the essay, Merges discusses the world of patent law scholarship in the 1970s and the significant effect Chisum's treatise had within the patent community.

Merges: Classic Patent Scholarship

The next contribution to the Classic Patent Scholarship Project is from Professor Robert Merges at Berkeley Law, another giant in intellectual property law. Merges has authored a number of articles that have already made the "classics" list, as well as others that deserve to be there; for example, Contracting into Liability Rules: Intellectual Property Rights and Collective Rights Organizations, 84 Calif. L. Rev. 1293 (1996), provides an early discussion of transaction costs in IP thickets that is highly relevant to contemporary problems such as "royalty stacking" in the mobile phone wars. Merges also has recently written Justifying Intellectual Property (which was subject to a terrific book club over at PrawfsBlawg), and he is well known to law students as the author of popular intellectual property and internet law casebooks. Here is his list of classics, "some well known and others that may have been lost in the mists of time." There are many suggestions here that have not been mentioned by any of the prior contributors, which I will add to the compiled list.

Carrier: Classic Antitrust/IP Scholarship

The next contribution to the Classic Patent Scholarship Project is from Professor Michael Carrier (Rutgers Camden), a leading expert on the intersection of IP and antitrust. His impressive scholarly portfolio includes the influential Unraveling the Patent-Antitrust Paradox, which was cited by the Supreme Court in Bilski and (perhaps less notably) summarized on this blog two years ago. For a thoughtful overview of how patents, copyright, and antitrust can work together to foster innovation, I also highly recommend his 2009 book, Innovation for the 21st Century: Harnessing the Power of Intellectual Property and Antitrust Law (download the introduction or check out this excellent symposium).

Classic Design Patent Scholarship

Just in time for Stanford's Design Patents in the Modern World Conference (on Twitter at #designpatents2013), we have a new addition to the Classic Patent Scholarship Project on design patents written by Professor Sarah Burstein (Oklahoma Law). Her scholarship is available here, and she frequently Tweets about design law as @design_law.

It might seem strange to have a list of classic design patent scholarship that consists largely of articles that do not really focus on design patents. But the literature is sparse. And even if it wasn’t, these articles would still be important because they each address issues that we are still debating today—including the fundamental question of how (or if) we should protect designs using intellectual property law.

Dreyfuss: Classic Patent Scholarship

The next contribution to the Classic Patent Scholarship Project is from Professor Rochelle Dreyfuss (NYU), a giant in the field of intellectual property law. You can read her dazzling bio yourself, but more importantly, check out her scholarship. Her early work on the Federal Circuit is surely a classic in the institutional design literature, and she has revisited the court in later works that are also worth reading. She has also written insightful articles on topics ranging from business method patents to IP without IP, and I am currently enjoying her new book, A Neofederalist Vision of TRIPS (with Graeme Dinwoodie). She noted that many of the first classics that came to mind have already been mentioned, but she thinks these five works also belong on the list. Here are her additions, along with my own brief summaries:

Lemley: Classic Patent Scholarship

Professor Mark Lemley (Stanford Law) needs no introduction; as noted by Ted Sichelman in his contribution to the Classic Patent Scholarship Project, Lemley's own classics "will surely number in the league of Beatles' hit singles." When I asked Lemley what classic works he thinks young patent scholars should be familiar with, he said that the earlier contributors have already mentioned several pieces he would include, such as Kitch's Nature and Function of the Patent System, Merges and Nelson's On the Complex Economics of Patent Scope, and Eisenberg's Patents and the Progress of Science: Exclusive Rights and Experimental Use. But he also suggested some pieces that are not yet on the list, which are listed here with my own brief summaries.

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

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.

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:

Chiang: Classic Patent Scholarship

As I described a few weeks ago, over the coming months I will build on Mike Madison's lists of "lost classics" of IP scholarship by asking IP professors to list some works that influenced their own scholarship and that they think young IP scholars should be familiar with. As the first addition to this project, Tun-Jen Chiang (George Mason) has suggested four additions to Madison's list of patent classics, which are listed below along with my own brief summaries.

Classic Patent Scholarship

The primary focus of this blog is new IP scholarship, but it is often hard to appreciate (and even harder to write) new scholarship without understanding the historical context of the work. So what are the classic works of IP scholarship that young scholars should be aware of?