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.