Gaia Bernstein on "Unwired: Gaining Control over Addictive Technologies"

Guest post by Gaia Bernstein Technology Privacy and Policy Professor of Law, Co-Director of the Institute for Privacy protection and the Gibbons Institute for Law Science and Technology, Seton Hall University School of Law, based on her recent TEDx talk.   

Nine years ago, when I sat down to research in a coffee shop took out my laptop, Kindle and phone, but hours later realized that I accomplished little, but felt fatigue. What happened? I realized the hours were wasted on emails, texts and mostly aimless web surfing. I started understanding them that something was wrong.

Freilich & Ouellette: USPTO should require prophetic examples to be clearly labeled to avoid confusion

Professor Janet Freilich (Fordham Law) has a fantastic forthcoming law review article, Prophetic Patents, which puts a spotlight on the common practice of submitting patent applications containing entirely hypothetical experimental results. These "prophetic examples" are permitted as long as the predicted results are not in the past tense. Using this tense rule, Freilich analyzed over two million U.S. patents in chemistry and biology, and she estimates that 17% of examples in these patents are prophetic. Prophetic examples may be familiar to patent drafters, but scientists and engineers who learn about them generally describe them as bizarre, and even some patent scholars are unfamiliar with the practice. Prophetic Patents was the one article by a lawyer selected for the 2018 NBER Summer Institute on Innovation, and the economist-heavy audience was fascinated by the concept—many were not even aware that researchers can obtain a patent without actually implementing an invention, much less that patents can contain hypothetical data.

Freilich notes the potential benefits of allowing untested ideas to be patented in terms of encouraging earlier disclosure and helping firms acquire financing, though she finds that patents with prophetic examples are not broader (based on claim word count), filed earlier (based on AIA implementation), or more likely to be filed by small entities. I'm very sympathetic to the argument that the current legal standard may allow speculative ideas to be patented too early—I've argued in prior work that all the competing policy considerations raised by Pierson v. Post about the optimal timing of property rights suggest that many patents are currently awarded prematurely. This is a challenging empirical question, however, because we cannot observe the counterfactual innovation ecosystem operating under a different legal standard.

But while pondering the hard question of the timing of patentability, patent scholars should not lose sight of the easy question: even if patenting untested inventions is socially desirable, there is no reason these patents need to be confusing. To me, Freilich's most interesting empirical result is her study of how often prophetic patents are mis-cited in scientific publications. She looked at 100 randomly selected patents with only prophetic examples that were cited in a scientific article or book for a specific proposition, and she found that 99 were not cited in a way that made clear they were prophetic. Instead, they were cited with phrases such as "[d]ehydration reaction in gas phase has been carried out over solid acid catalysts" (emphasis added). And it is not surprising that scientist readers are misled: many prophetic examples do confusingly mimic actual experiments, with specific numerical results. In prior work, I have shown that contrary to the assertions of some patent scholars, a substantial number of scientists do look to the patent literature to learn new technical information. So it is concerning that a large number of patents are written in a way that can be confusing to readers unfamiliar with the tense rule.

Freilich and I teamed up on a new project for which we interviewed patent drafters to explore whether prophetic examples have any important benefits for patentees that could not be obtained through less misleading methods of constructive reduction to practice. In Science Fiction: Fictitious Experiments in Patents—just published in last week's Science—we explain that the answer is no. Patent prosecutors who rarely use prophetic examples argued that there is no legal reason to use fictitious experiments with specific results rather than more general predictions. Those who usually use prophetic examples agreed that more explicit labeling would not affect the patents' legal strength. The only benefit to patentees that would be reduced by requiring greater clarity seems to be any benefit that comes from confusion, which does not seem worth preserving.

The USPTO already requires prophetic examples to be labeled by tense. But the tense rule is unfamiliar to many readers (including scientists and investors), and the distinction in tenses may be literally lost in translation in foreign patent offices. (For example, the form of Chinese verbs does not change with tense.) There is no good justification for not having a more explicit label, such as "hypothetical experiment." As Freilich and I conclude: "Just because some patents are not based on actual results does not mean they need to be confusing. Scientists regularly write grant applications in a way that makes clear what preliminary data they have already acquired and what the expected goal of the proposed project is. Perhaps this is an area in which the patent system could learn from the scientific community."

Samantha Zyontz on CRISPR Adoption

Pierre Azoulay's recent Twitter thread on students from the MIT Sloan TIES PhD program who are currently on the market alerted me to Sam Zyontz's interesting work on the CRISPR genome editing tool. CRISPR has captivated the patent world due to the fight between the University of California and MIT's Broad Institute over key patent rights—Jake Sherkow summarized the dispute in May and reflected on the Federal Circuit's decision in September. But CRISPR is of course also interesting to innovation scholars due to the revolutionary nature of the technology itself (this is why the patent rights were worth fighting for), which has the potential to applied to a tremendous variety of applications. Using data on researchers who attempt to experiment with CRISPR and the smaller number who succeed in publishing new findings using the technology, Zyontz has produced some fascinating findings on hurdles to technological diffusion.

Zyontz's work was made possible because of the nonprofit global plasmid repository Addgene, which received the basic biological tools for CRISPR from researchers at the University of California and the Broad Institute in 2012 and 2013. Since then, researchers have had easy access to CRISPR tools for the low cost of $65 per plasmid.

IP and Climate Change

My colleague and friend Josh Sarnoff (DePaul) sent me a review copy of the book he edited: Intellectual Property and Climate Change, even though I told him I wouldn't have much time to look at it. Wouldn't you know, on a quick skim I found it pretty interesting, and thought I would talk about it a bit.

The book is part of the Elgar Research Handbook series. I wrote a chapter that I really like (who am I kidding, I just love that book chapter) in the Research Handbook on Trade Secret Law. But because it's in an expensive book, nobody seems to know about it (and my colleagues in trade secret law will attest that I remind them whenever I review one of their drafts that is remotely in the area of trade secrets and incentives).

So, I thought I would flag this book, so readers would know this is out there. IP will have a growing role in climate change, as this cool story from this week illustrates. The book is comprehensive - it has 26 chapters from a variety of different authors. Some of the topics:

• International law and TRIPS
• Enforcement
• Technology transfer
• Innovation funding and university research
• Antitrust, patents, copyrights, trade secrets, trademarks
• Rights in climate data
• Privacy (this one surprised me)
• Standards
• Energy, transportation, food, natural resources

There is something for everyone in this book. Though it is focused on climate change, much of the discussion can be generalized to other emerging areas of law. In that sense, it does present a little bit like the law of the horse, but given that this is a research handbook, I'm not so sure that's a bad thing.

Patenting Incentives in Universities

 Dirk Czarnitzki and four coauthors from a variety of institutions have posted Individual Versus Institutional Ownership of University-Discovered Inventions to SSRN. The abstract is short and to the point:

We examine how the ownership of intellectual property rights influences patenting of university-discovered inventions. In 2002, Germany transferred patent rights from faculty members to their universities. To identify the effect on the volume of patenting, we exploit the researcher-level exogeneity of the 2002 policy change using a novel researcher-level panel database that includes a control group not affected by the law change. For professors who had existing industry connections, the policy decreased patenting, but for those without prior industry connections, it increased patenting. Overall, fewer university inventions were patented following the shift from inventor to institutional ownership.

In other words, the authors have used a quasi-experimental event - a change in the law - to see what happens under different legal regimes. They have good data and use it to their benefit: actual patenting by individual researchers, a decent control group that did not experience a change in the law, and information about career and publications to correct for general productivity. I'll discuss the results a bit more after the jump.

Sean Seymore on "Null Patents"

In The Null Patent, Sean Seymore (Vanderbilt Law and Chemistry) makes the creative proposal that the patent system could help solve the problem of unpublished negative scientific results. Negative results are very important: they can save other scientists from wasting time on dead-ends, and they can help identify false positives in studies based on statistical significance. (There is generally a 5% chance that a "significant" result is just based on random error, which is a problem if only significant results are published, as xkcd aptly illustrates.) So it would certainly be good for science if more negative results were published. But what do patents have to do with this?

Do Patents Disclose Useful Information?

I recently uploaded a revised draft of my current working paper, Do Patents Disclose Useful Information?, on SSRN. I am grateful for all the feedback I have received on this paper so far, and I welcome more—please feel free to email me. Here is the abstract:

Courts often state that patents are justified by disclosure theory, the idea that patents are awarded as quid pro quo for the public disclosure of inventions. Economists have long argued that disclosure theory should be accorded no weight in the design of the patent system because patented inventions would have been disclosed anyway. Even the few legal scholars who dispute these economic arguments agree that, in practice, patents are currently not useful as technical sources for other innovators. This Article challenges all these arguments, arguing not that disclosure theory is a valid justification for the patent system, but rather that the benefits of full technical disclosures are stronger than is generally believed, and that these benefits probably outweigh any incremental loss in innovation incentives. Using results from a new survey of nanotechnology researchers and case studies of individual patents, this Article shows that patents do contain useful technical information that is not available elsewhere. This technical content could be improved, however, in at least three ways: stronger enforcement of disclosure requirements (including through an obligation to respond to good faith reproducibility questions from skilled researchers), elimination of legal barriers to using patents as technical sources, and improved access to patents through peer production. These changes will help defuse the tension between patents and the open culture of science.

Tim Holbrook: Can presumptions save patents' technical nature?

Are patents legal documents or part of the technical literature? Both, but the balance is currently skewed, says Professor Timothy Holbrook (Emory Law), in Patents, Presumptions, and Public Notice (forthcoming in the Indiana Law Journal): because of patents' "Janus-like nature, reading and interpreting them can be challenging, as courts must parse both the legal and the technical." This article builds nicely on Holbrook's prior work, including Possession in Patent Law (arguing that the purpose of patents is not disclosure, but rather to show that the inventor possessed the invention).

Mike Schuster: Claim Construction and Technical Training

Are judges with a technical background better at construing patent claims? Practitioner W. Michael Schuster (@Patent_Nerd on Twitter) addresses this question in his working paper, Claim Construction and Technical Training: An Empirical Study of the Reversal Rates of Technically Trained Judges in Patent Claim Construction Cases. He claims to show that technically trained district judges are no less likely to be reversed by the Federal Circuit on claim construction than judges without a technical background.

"Technical background" was defined as having an undergraduate degree in science or engineering, and Schuster surveyed judges and searched with the Westlaw Profiler feature to make a database in which 28 out of 617 judges had a technical background. He found 19 patent claim decisions by 8 of these technically trained judges and compared the reversal rate in these cases with the overall claim reversal rates in David Schwartz's Practice Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases (which found that judges with more experience in claim construction were also no less likely to be reversed). Though obviously limited by the small sample size, this is still an interesting result. But as Schuster notes, it is hard to know what to conclude; for example, technical training might only help for patents in that specific area of technology, or claim construction might just be "inherently indeterminate."

Sean Seymore on Novelty and Disclosure

Coming to patent law from physics, I have been interested in patent doctrines that seem crazy when I try to explain them to my physics friends. So I was intrigued to discover the work of a professor with a similar research agenda: Sean Seymore is a professor of law and chemistry at Vanderbilt, and he describes his project (in both of his papers I read) as "bridg[ing] the disconnect between patent law and the norms of science."

His latest published paper, Rethinking Novelty in Patent Law (Duke L.J. 2011), argues that the novelty test is too strict for complex technologies. He describes the "quintessential novelty problem" as trying to claim compound X when an earlier third-party patent recites the structure X as one of many compounds without additional details, leaving a question of enablement: was X already in the public's possession? He notes that the current novelty regime incentivizes the earlier patentee to conceal experimental failures and that "it appears that a third-party patent’s mere recitation of X by name or structure is, as a practical matter, sufficient to anticipate a subsequent inventor’s claim to the compound."

Seymore proposes a new novelty paradigm in which the examiner has the initial burden of proving that the disclosure of X in the earlier third-party patent is enabling, for which only documents dated earlier than the third-party patent may be used. He argues that this would promote innovation by allowing X to be patented (and thus enabled and exploited), but the article does not consider the innovation costs of this proposal. Making it easier to patent X will cause dynamic inefficiencies by increasing costs for other innovators who want to use X (in addition to creating static inefficiencies due to the increased price of X). These inefficiencies may well be outweighed by the benefits Seymore outlines, but due to the difficulty of measuring innovation, the problem should at least be acknowledged.

I also read The Teaching Function of Patents (Notre Dame L. Rev. 2010) as background for my own draft paper on patent disclosure (for which I surveyed nanotechnology researchers about how they use the technical content of patents). In this article, Seymore argues in favor of stronger patent disclosures to improve "the ability of the patent to disseminate technical knowledge." Jeanne Fromer (Fordham Law) had put forth a similar defense of robust disclosure requirements in Patent Disclosure (Iowa L. Rev. 2009), and Seymore could have more strongly recognized her contribution (rather than only citing her as part of "a limited amount of scholarship which addresses patent disclosure"). But Seymore's contribution is still valuable, as he joins Fromer in arguing against a long line of patent law theorists and economists who have critiqued the disclosure theory of patents (the idea that we award patents as quid pro quo for the patent disclosure), and he offers some different prescriptive suggestions.

Seymore's main suggestion for improving disclosure is that patent examiners should be able to require "working examples." When I read the abstract, I thought he was talking about physical models, but he actually means that "at least for complex inventions, an actual reduction to practice must become the standard of disclosure" (i.e., patents should not be awarded for "prophetic examples" through the legal fiction of "constructive reduction to practice"), and that inventors should "prove, through adequate detail in the written description, that the claimed invention has been constructed and works for its intended purpose." I think this suggestion is probably sound; as I describe in my own patent disclosure paper, many scientists are surprised to learn that patents can currently be awarded for a Gedankenexperiment, rather than only for inventions that have been shown to work. But it also seems difficult to compare the benefits of increased disclosure with the costs to innovation, which is a problem Seymore again does not address. Still, I enjoyed both articles, and I appreciate reading about patents from someone who actually knows about the technologies that they are trying to promote.

Update 2/22/11: I posted my patent disclosure paper on SSRN last week, so I added links to it. If you are planning on citing it, let me know so I can keep you apprised of updates.

Peter Lee: Patent Law and the Two Cultures

I'll start my patent scholarship blog with an article I helped edit for the Yale Law Journal this past fall: Patent Law and the Two Cultures by Professor Peter Lee (at U.C. Davis Law). The article notes that decisionmakers often rely on heuristics and deference to experts when confronted with technical complexity, which "raise[s] the provocative question of whether the 'cognitive miser' model is reflected in the patent system," where lay judges often are faced with complex patent disputes (Part II). Lee then describes the formalism of the Federal Circuit in terms of heuristics that lower information costs (Part III), and he sees the "holistic turn" of the Supreme Court as producing "'information consuming' standards [that] will increase technological engagement and attendant cognitive burdens for district judges" (Part IV). After laying out this descriptive theory, Lee offers a prescriptive suggestion: the Supreme Court should recognize the costliness of its holistic standards and should make rules that are "enabled" (borrowing a principle from patent law) such that lay district judges actually can apply them (Part V).

The descriptive insights in Patent Law and the Two Cultures are interesting and compelling. The prescriptive proposal, however, could be developed further. Lee is not the first scholar to argue that the Supreme Court should make its tests more workable, and it is not obvious what distinguishes patent law from other complex areas of adjudication. But Lee does provide examples, such as from Graham and eBay, of areas where the Court has provided somewhat more concrete guidance, and he argues that the Court should make more use of illustrative examples. He also does a nice job responding to potential counterarguments to this proposal. Although somewhat long, the piece is beautifully written and carefully footnoted; Lee is careful to acknowledge where his ideas fit into prior scholarship in the field. Even generalist readers (or lay judges) should be able to enjoy this piece.