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Friday, 11 January 2013

Is Disclosure a Justification for Maintaining the Patent System?

The question is simple: to what extent is disclosure a justification for the patent system? The query itself may seem a bit odd. Patent professionals may grouse about this or that aspect of the patent system and many may feel that the system can be improved. But that is in the nature of things. There is no sub-celestial legal arrangement providing for the creation, protection and disposition of rights that cannot be improved. But this process of trial and error to create a better patent system is one thing; asking whether the patent system can be justified and, if so, how, is quite a different matter.


Viewed from the Academy, however, seeking justification(s) for the patent system is much more central. This is so, even though the ultimate outcome of the inquiry is itself opaque: does the existence of the patent system depend upon whether a consensual basis (or bases) for its justification can be found? Moreover, it had always been this Kat's impression that there was widespread agreement that the patent system is a grand bargain to encourage the disclosure of inventions in exchange for a limited period of exclusivity for the invention.

It now seems that this Kat is mistaken. As stated by Professor Mark Lemley of Stanford University, in his article "The Myth of the Sole Inventor", Michigan Law Review, vol. 110, no. 5, March 2012, disclosure theory has been relegated to merely a "subsidiary justification" for the patent system. Even on that basis, disclosure theory is deficient:
"[d]isclosure theory cannot, however, support the modern patent system. Simply put, inventors don't learn their science from patents." 
Lemley's observation is part of a much-more elaborate attack on the notion that patent law is about how to provide proper incentives so so to enable the "lone genius" to solve a seemingly insuperable problem. Invention, argues Lemley, is "a social, not an individal, phenomenon" and none of the current theoretical justifications for patent law, including "disclosure theory", adequately explains how patent law is really carried out.

As for disclosure theory, it is not denied that inventors need a flow of information to invent. Rather, for a number of reasons, "inventors don't learn their science from patents:"
1. At least with respect to U.S. law, the Federal Circuit too often allows vague disclosures and patent attorneys have every incentive to draft such types of disclosures.

2. Publication of an application takes place only after 18 months and grant takes multiple years. The upshot, it is argued, is that the patent system reveals the state of the art from, at the best, two or three years in the past.

3. There are at best dimensioning returns from seeking to read the relevant corpus of patents. There are simply too many patents to consider; classification of patents is uncertain; the technological language used is too often obfuscatory in nature; and, at least in the U.S., the threat of being found a willful infringer means that inventors are counselled not to read patents, lest such patents be later found to be infringed.

4. Whatever benefits may be derived from the disclosure of patents and the information, such advantages are outweighed by the various deleterious costs of conferring a 20-year monopoly on the inventor. Stated otherwise, if disclosure is the reason that we are prepared to do harm to principles of competition and economic efficiency, it is better perhaps to jettison the patent system.
Lemley's arguments against "disclosure theory" then consider a basic fault line in the protection of inventions--whether to patent or seek trade secret protection. In a word, the position is that what drives patents (and the ensuing disclosure of the invention) is not patent law but rather trade secret protection. Here, the argument goes, patents are much more likely to be filed only if the invention is not self-disclosing. If it is, then a patent (and the accompanying disclosure of the invention) will be preferred. If the invention is not self-disclosing, however, then secrecy is more likely to be the route taken. The conclusion:
"[w]hile patent protection may induce some disclosures at the margin, trade secret law appears to do as much more more than patent law to encourage the disclosure of non-self-disclosing inventions."
In a nutshell, according to Lemley, patent disclosures are of only limited interest and use to inventors and patent protection is sought only if the invention cannot reasonably be kept secret. Seen in this way, the disclosure theory is conceptually dissonant from the way that patents are practised.

In considering this conclusion, however, this Kat had the gnawing feeling that, while the arguments are well-stated, there is too little reliance on empirical research. With respect to the preference of inventors to file for patents only if the invention is self-disclosing, the article cites three research studies. In the main, however, there is little empirical evidence to support the arguments. In particular, this Kat still awaits empirical results that show that the advantages of disclosure are outweighed by the costs to competition and economic efficiency. Until then, this Kat is not ready, just yet, to stop telling students about the importance of the grand patent bargain of disclosure in exchange for exclusivity for a fixed period.

12 comments:

Anonymous said...

Neil, I think you'll be waiting for this:

"In particular, this Kat still awaits empirical results that show that the advantages of disclosure are outweighed by the costs to competition and economic efficiency."

until, as they say, hell freezes over. Too many vested interests at work, some seeking to maintain the system, other seeking to end it, and all interpreting the available data to justify their positions.

IMHO, patents are primarily legal documents, designed to define legally-enforceable monopolies to keep people out, not to inform them. Part of the deal is that you have to define the boundaries of that monopoly. As disseminators of scientific knowledge, patents are generally pretty hopeless (and in most cases, not even pretty).

I suspect that, as stimulators of innovation, patents are, like Churchill's famous statement on parliamentary dempocracy, the worst form ever devised by man, except for all those other forms that man from time to time devises.

Anonymous said...

The premisse that inventors do not learn science from patent publications sounds reasonable. They learn it probably from scientific papers. However, what Lemley appears to overlook is that those scientific papers may never be published if the technology cannot be patented. Those papers are in practice usually only published after a patent application has been filed.

Anonymous said...

In my limited experience, that usually works the other way around, particularly at universities. Publishing a scientific paper is (understandably) the main priority and will happen regardless of any IP considerations. Filing a patent application first tends to be a secondary consideration. It is rather more common to rush out a priority application to obtain some sort of protection for an interesting scientific result, than to delay publishing a scientific paper until that single interesting result can be turned into enough evidence to support a solid patent application.

This is just a generality of course. I'm sure many readers of this blog will know researchers that are more than capable of juggling commercial savvy and the demands of academia but I would venture to suggest they are the exception rather than the rule.

Anonymous said...

The grand patent bargain may initially have been the drive for a government to draft a patent law, thereby issuing a monopoly right in exchange for patent publication.
Whether or not this is true is of no interest anymore, now the system has been vested and is successful in the sense that it generates net income for the Treasury. As long as the income for a country is higher than the expenses the legislator will be happy. And as long as a monopoly can be obtained for a reasonable price the applicants are happy.

Why question a system that makes everybody happy?

Anonymous said...

To what extent is disclosure a justification for the patent system? Strange question but my view is that it provides no justification. This may have been the case historically for a patent system but it has no relevance today. Disclosure is relevant for determining the scope of protection and ensuring that the enablement requirement is met. OK, the US has the best mode requirement as well but other than that? Patents are there to reward technological advances, encouraging industry to invest in development rather than copying others.

Anonymous said...

I strongly disagree with Mark Lemley. As a biotech inventor, I've been on both ends of this.

As Lemley points out, I have rarely turned to a patent for information, but I have followed on from scientific articles that simply wouldn't exist without a patent in place.

And on the other side, I have published work that without a patent would still be locked away in some company's archives.

Does having to disclose your invention in a patent have a positive impact on future science... in my case and the case of many people around me yes!

Anonymous said...

The legal fees are the costly inefficient part, not the patents themselves.

Patents themselves benefit competition by making it worthwhile working to invent new and better ways of doing things.

Why would a pharmaceutical company spend millions developing a new drug, if the moment it was released it could be legally manufactured and sold by anyone?

Suleman said...

In biotech patent applications and patents act as a mechanism for building value whilst a product is being developed, which can take 10 to 15 years from a first patent filing. Somehow the system works and gives companies something tangible which can be used to attract investment.

Also given how many novelty citations we see in search reports a lot of the disclosure of many patent applications is not adding substantially to the relevant field.

Ron said...

As far as the UK is concerned, there has most definitely been a progressive shift in the way patents are treated since the Patent Office was reformed in Victorian times under Bennett Woodcroft.

When examination was first introduced, applicants were expected to do their own searching for prior art. The Patent Examiner's main duties were to ascertain that the invention had been described in sufficient detail to ensure that it could be carried out by the skilled person, to write an abridgement of the entire technical disclosure so that the technical information could be retrieved, and as the "Deep indexing" classification scheme progressively evolved, apply appropriate indexing terms to facilitate extraction of this information by searchers. This involved the examiner making a thorough reading of the entire description to ensure that all relevant technical information was extracted, and abstracts could be as long or as short as was necessary.

Procedure under the 1977 patent Act brought significant changes. The detailed examiner-written abridgements were replaced by the brief abstracts provided by the applicant, and it is evident from the Manual of Patent Practice that examiners are now only expected to read as much of the description as is necessary for them to understand the claims sufficiently to carry out a search for novelty and inventive step. They are no longer expected to read the entire description or to ensure that the technical disclosure is enabling.

Thus the emphasis of examination as set out in the manual is now focussed on the scope of protection and not on the obligation to provide a technical teaching of how the invention is to be performed. As it is now some years since i last prosecuted a UK Patent application, I don't know if UK examiners do raise objections of lack of enabling disclosure in practice. Certainly I have had to deal with this sort of objection from the EPO, admittedly usually with some justification, and often arising from issues with mistranslations from non-English priority applications that have sometimes been fixable by referring back to the priority document.

Anonymous said...

In attacking a purported "sole genius" theory of patents, Mr. Lemley is taking on a convenient, carefully-stuffed straw man. I don't think many patent professionals, never mind other people involved in the invention process, adhere to the quaint idea that invention is the business of lone geniuses.
But this is just the reason why the disclosure role of patent publications is so important. The whole point of the patent system is to provide an incentive to share the knowledge of inventions, if not the inventions themselves, in order to allow their aggregation. While some critics of the patent system (including some notorious and egregious infringers) are unashamedly self-serving, they also do us patent professionals a favour by reminding us of this original purpose of the patent system. There is no question that many patent publications these days range from the vapid, through the impenetrable, to the utterly nonsensical. I've read and drafted too many of them myself to claim otherwise. And it more than irks me when I hear that some corporations actively ban their technical staff from perusing patent documents, out of fear of triple damages from "wilful infringement" in the US.
On the face of the present challenge from anti-patent activists, we should have a serious reconsideration of how to improve the quality and facilitate the understanding of the technical disclosure of patents. It's absurd, for instance, that in our age of multimedia and desktop publishing, the actual form of patents, with reams of uninterrupted text and separate drawing sheets, is still dictated by the limitations of early XIX century printing technology. It's self-defeating that, in practice, ensuring the actual disclosure of the invention takes a backseat to formulaic considerations of inventiveness during examination. And I better won't say what I think of some US case law and how it has been interpreted by our cousins across the pond to all but ban vocabulary such as "invention" from the content of patent applications...

Anonymous said...

The disclosure only seems to educate the examinors as that is the only professional group that ever references those doocuments.

Anonymous said...

The disclosure only seems to educate the examinors [sic] as that is the only professional group that ever references those doocuments [sic].

My first exposure to patent documents was as a student, performing a technology background search for a research lab. So, I'm afraid that you are very wrong, sir, and not just in your spelling.

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