New IP Scholarship on SSRN

There are far more interesting IP papers posted than I have time to read carefully and blog about, so I thought I'd just highlight some recently posted papers that caught my eye (which I have also tweeted):

Ford on Invalidity vs. Noninfringement

I'm in NYC for the IP Scholars Conference (IPSC) at Cardozo Law, and one of the (many) article presentations I'm really looking forward to is Patent Invalidity Versus Noninfringement (forthcoming in the Cornell Law Review), by Roger Ford (Bigelow Fellow at Chicago, @rford). Ford argues that patent defendants are more likely to argue noninfringement than invalidity, and that this imbalance exacerbates the problem of bad patents. This article is well worth a look, both because it is a fun read (peppered with examples from actual patents) and, more importantly, because the basic insight seems right.

Patent Experimentalism

I haven't had much time for blogging recently because I've been writing and revising a new article, Patent Experimentalism, which I'll be presenting at IPSC on August 8. This is still a work in progress, so please send me your feedback and suggestions! Here is the current abstract:

Patent Costs & Benefits

Do the costs of U.S. patents exceed their benefits for publicly traded firms? This is the claim of John Turner, James Bessen, Peter Neuhäusler, and Jonathan Williams in their newly posted working paper, The Costs and Benefits of United States Patents. Bessen's prior work has very strong supporters and detractors, and I suspect the response to this paper will be similarly polarized. But I think it is worth understanding precisely what this paper is attempting to measure—and why, even if Turner et al. are correct that the costs they measure exceed the benefits they measure, this does not imply that we should scrap the patent system (though it may be cause for concern).

Call for Papers: Innovation Law Beyond IP

Next spring (on 3/30/14), the Yale Law School Information Society Project will host a one-day conference, Innovation Law Beyond IP:

Intellectual property law is only one of many legal institutions that can help promote, stifle, or govern knowledge production. For example, government also transfers rewards to innovators through tax incentives, grants, and prizes; regulates innovation through the administrative state (the EPA, FTC, SEC, CPFB etc.); creates legal rules and infrastructures that can help sustain or undermine commons-based production; and influences innovation through law and institutions related to immigration, tort law, education, and more. How do forms of law and governance beyond IP promote innovation, as well as values such as equity, privacy, and democracy? How should these systems be combined, both with one another and with IP law?

As described in the conference announcement, short paper proposals are due by 8/1.

Janis and Holbrook: Who reads patent laws?

What group of people forms patent law's audience?  In the late eighteenth century, patent law's audience reflected the pre-industrialized nature of the country and was composed of a small group of lawyers and inventors.  Today, the audience matches the modern trend of patent law towards increasing complexity.  The contemporary patent audience includes not only a larger group of lawyers and inventors but also information synthesizers like bloggers, journalists, and academics, as well as innovators' corporate management and the ever-expanding USPTO.  The result of patent law's growing complexity, however, is not only a larger audience, but also a larger audience mostly in the dark about the rules governing their activities.  In Patent Law's Audience, Mark D. Janis and Timothy R. Holbrook discuss the problem of patent law's inaccessibility and offer guides for courts to bridge the gap between patent law and its audience.

Fromer: Expressive Incentives in Intellectual Property

Are the current incentive structures in American patent and copyright law reaching their maximum utilitarian potential? In her recent article Expressive Incentives in Intellectual Property, 98 Virginia Law Review 1745 (2012), Professor Jeanne Fromer (New York University School of Law) suggests that traditional reliance on pecuniary interests leaves untapped potential in maximizing the effectiveness of intellectual property law in terms of spurring creativity and invention. She proposes using expressive incentives—incentives reflecting the moral-rights interests of creators—perhaps instead of traditional pecuniary incentives, to optimize intellectual property laws in a utilitarian framework.

Chief Judge Markey and Doctrinal Development

As I wrote in What Are the Sources of Patent Inflation? An Analysis of Federal Circuit Patentability Rulings, I think some of the expansion in the bounds of patentability that has occurred since the creation of the Federal Circuit could be explained by systematic effects such as the presumption of patentability (e.g., if the Federal Circuit holds that the challenger to a granted patent has not overcome the presumption of patentability, and then the PTO erroneously relies on that precedent in granting a new patent, which then itself becomes subject to the presumption). But I am skeptical of any account of doctrinal development that considers only these kinds of systematic effects and not the more idiosyncratic influences of individual judges.

Why Stop at Fees? The Case for Making All Patent Losers Pay, and Pay Heavily

Guest post by Professor Jonathan Masur, University of Chicago School of Law

The excellent op-ed published last week by Chief Judge Rader, Colleen Chien, and David Hricik has re-ignited the debate surrounding attorneys’ fee awards in patent cases. This conversation has dovetailed with the renewed focus on patent trolls, spurred by congressional and presidential attention to the issue. Taken together, these issues present the possibility of a productive approach to the problem of patent trolls—and to firms that assert weak patents more generally.

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).

Top 10 New IP Paper Downloads

Here's an updated list of the most downloaded IP papers that were posted on SSRN in the past 60 days (with notes about the ones that were not on last month's list):

Abbott: Incentivizing Production of Drug Safety Information

Information about drug safety and efficacy is a public good, and it will thus be undersupplied absent government incentives to close the gap between the cost of producing this information and the private benefit that can be appropriated. Many pages have been written on the best way to incentivize drug development; alternatives to the current patent-centric regime include direct government financing, various prize schemes, and R&D tax incentives. But far less attention has been paid to incentivizing information production after drugs have received FDA approval and are on the market, and as examples such as the withdrawal of Vioxx illustrate, delays in producing information about the safety of new drugs can have important public health consequences. This important issue is tackled in Big Data and Pharmacovigilance: Using Health Information Exchanges to Revolutionize Drug Safety (forthcoming in the Iowa Law Review), by Ryan Abbott (who has an M.D. in addition to being a prof at Southwestern Law School).

Are R&D tax credits the software patent solution?

The Federal Circuit's fractured en banc decision in CLS Bank v. Alice probably pleased only those patent litigators who might benefit from the resulting uncertainty. The case could have provided clear guidance on the "abstract ideas" exception to patent eligibility (and thus the patentability of software), but the court instead issued 7 opinions in 135 pages, with nothing beyond the judgment having the weight of precedent. While there is much to be disappointed in here, I want to highlight a statement on page 12 of Judge Newman's opinion: "No substitute has been devised for the incentive of profit opportunity through market exclusivity."

Crews: The Overreaching of Museums Art Image Copyright Policies

Do copyright and contract licensing policies adopted by art museums to restrict access to reproduced images of original artwork constitute overreaching? In his article, Museum Policies and Art Images: Conflicting Objectives and Copyright Over-Reaching, Dr. Kenneth D. Crews (Adjunct Professor of Law and Director of Columbia University's Copyright Advisory Office), explores the idea that while art museums have legitimate reasons for imposing restrictive policies, the broad and varied requirements often exceed their legal rights under copyright law.

Hrdy: State Patents

Yale ISP fellow Camilla Hrdy has just posted Dissenting State Patent Regimes (IP Theory). Here is the abstract:

Inventors who believe in open innovation should start applying for state patents instead of U.S. patents. Patenting at the state level prevents rivals from obtaining U.S. patents and generates valuable innovation spillovers in other states where the patent has no legal effect. It also creates a unique opportunity to force patent law reform from the bottom up. In exchange for filing fees, inventors can demand patents based on rules that support open innovation, like shorter terms in fast-moving industries, stricter disclosure requirements, or new restrictions on patenting by non-practicing entities. The lobbyists who stymie reform at the national level will have a much harder time blocking reform in all fifty states. Meanwhile, patent law’s dissenters need only one state to start granting patents in order to get courts, the media, and eventually Congress to pay attention.