Academic journal article Harvard Journal of Law & Technology

Empowering Inventors

Academic journal article Harvard Journal of Law & Technology

Empowering Inventors

Article excerpt

TABLE OF CONTENTS    I. INTRODUCTION  II. THE PUBLIC-PRIVATE DEBATE III. ACCOMMODATING EMBEDDED PROMISES IN CONTRACT LAW  IV. THE DIVERGENCE OF PATENT LAW AND PROMISE   V. THE LIMITS OF CONTRACT LAW  VI. CONCLUSION 

I. INTRODUCTION

Focusing on the intersection of commercial law and patent law, leading scholars often ask: When, if ever, should patent holders be allowed to contract around patent law? This is an unsettled question, both theoretically and doctrinally. For example, while Professors John Duffy and Richard Hynes have argued that "[c]ourts do not balk at permitting a variety of commercial arrangements such as leasing and licensing to avoid exhaustion," (1) there are also recent opinions where federal courts were not so open to the use of commercial law in patent transactions. (2) And although Professor Robin Feldman believes that "[c]ourts should not allow contract law to be used to navigate around restrictions imposed on patent holders by other areas of law," (3) Commissioner Scott Kieff has argued that not allowing patent holders to contract around doctrines such as patent exhaustion "may greatly frustrate the ability of commercial parties to strike deals over patents." (4)

This Article does not offer an opinion on whether patent holders should be allowed to use a variety of commercial law arrangements to avoid the application of any particular patent law doctrine. It does not do so out of concern that much of the recent conversation conflates the boundaries of patent and contract in an unhelpful way, leading to confusing debates regarding whether patent holders are using contract law to impermissibly broaden the scope of their patents or control downstream access.

Instead, this Article seeks to redirect scholarly focus to the following question: Why might we allow parties to use contract law to avoid the application of a particular patent doctrine or to achieve a result not permitted by patent law alone? Although patent licensing is nothing new, scholars have largely focused on patent law, leaving the role of contract law in patent licensing undertheorized.

This Article aims to begin filling this gap in the literature through the exploration of contract theory from perspectives beyond the instrumentalist paradigm of private law, with a particular focus on Professor Seana Shiffrin's accommodation theory. (5) Recognition of a strong promissory culture is fundamental to both the practice of promising and the ability to generate legal obligations as morally equal persons, whether for autonomy, liberty, efficiency, trust, or other purposes. Moreover, parties are capable of understanding and creating their own unique and complex promissory culture to help them achieve their particular aims. An examination of Eli Lilly v. Emisphere Technology, Inc. (6) shows parties' ability to practice a complex moral code of promising that is fundamental to productive research and development ("R&D") collaborative partnerships. While the Eli Lilly court arguably does reach the right result, enforcing the particular promissory obligations made to one another, (7) the most important part of this opinion is the downstream effect on future R&D collaborations. In short, parties should feel secure that their promissory commitments will be interpreted and enforced as expressed in their respective collaboration agreements. Moreover, because of the central importance of recognizing and supporting a strong promissory culture, this Article argues that the promises exchanged in the recent Supreme Court opinion Kimble v. Marvel (8) should have been enforced, with the result that Marvel would have to continue paying royalties to Kimble beyond the patent expiration.

Yet contract law is not without limit. The public policy defense in contract law should play an important role in ensuring that parties do not overreach in their private agreements in a way that renders performance of such agreements contrary to social welfare. …

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