Academic journal article Vanderbilt Law Review

Pierson, Peer Review, and Patent Law

Academic journal article Vanderbilt Law Review

Pierson, Peer Review, and Patent Law

Article excerpt


A researcher may patent her novel invention once she "possesses" it.1 Yet the question of what constitutes possession has bedeviled property theorists for centuries, as demonstrated by the enduring resonance of the 1805 property case Pierson v. Post.2 Should the fox belong to the hunter who begins the chase or the one who makes the kill? Should an invention belong to the researcher who begins work on it or the one who brings it to fruition? Patent law at times provides some reward to both researchers-after all, ideas are more easily divisible than foxes.3 But neither the majority nor the dissent in Pierson v. Post thought the fox should be awarded to a casual observer who spots the fox but who has little chance of completing the chase.4 And yet in patent law, the current balance seems tipped too far toward such casual early chasers, whether one's lodestar is efficiency or natural rights. As numerous patent scholars have observed, too many patents seem to be awarded too early to patentees who haven't done enough to show that the invention works.5

Part of the problem is the legal standard for patent disclosures. To the surprise of many scientists, one can receive a patent without doing experiments or building models to confirm that the invention works as expected.6 But a patent must at least enable the "person having ordinary skill in the art" to make and use the invention without "undue experimentation,"7 which would seem sufficient to weed out many armchair inventors. To better align the patent reward with the inventor's contribution, examiners and courts should do more to enforce this requirement-to make patentees show their work.

Patent disclosures serve two functions, which Professor Dan Burk refers to as the teaching function and the limitation function.8 First, they teach others about the invention-an underappreciated benefit, though incidental to the primary incentive-based justification for granting patents.9 Second, and more importantly, making patentees show their work ensures that they actually did enough work to deserve a patent. Of course, determining what constitutes enough is the hard part, and patent rights cannot be limited to only the exact configurations tested by the inventor.10 But patenting practices seem divorced from the standards for judging technical contributions in many fields, with patents looking more like research proposals than completed scientific papers.11

Both functions are important, but failures in the limitation function likely lead to larger welfare losses. When an applicant presents data showing that an invention works but obfuscates key steps of the method, the public loses out on the teaching function that a clearer protocol would have provided, but the patent is still probably going to the right person.12 In contrast, when an applicant receives a patent on an uncertain research plan, it not only means that the patent is not serving a useful teaching function-it also limits the patent incentive for others to solve the problems necessary to obtain the completed invention.13

The difficulty in weeding out such patents is that patent examiners are ill equipped to determine when an application really is just a research plan for which "undue experimentation" is still required. Patent examiners rarely have much experience in the fields they examine: fewer than four percent have a Ph.D.,14 and high attrition rates mean that most examiners have been working at the U.S. Patent & Trademark Office ("USPTO") for less than four years.15 And even when examiners have ordinary skill in the art, this may not be enough. Patents must enable the hypothetical person of ordinary skill to recreate the invention, but it often takes extraordinary skill to recognize when a disclosure is insufficient based merely on reading it.

In this Article, I argue that to address this problem, it is necessary to bring insights from persons of extraordinary skill into the USPTO. …

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