Academic journal article Northwestern University Law Review

Data-Generating Patents

Academic journal article Northwestern University Law Review

Data-Generating Patents

Article excerpt


Advances in the aggregation and analysis of large data sets-"big data"-are providing a new source of value for many patent holders. For example, in the genetic testing space, Myriad Genetics leverages its diagnostic patents for breast and ovarian cancer to generate large, proprietary databases of patient information.1 As the main provider of these genetic testing services, Myriad has amassed detailed clinical data that it maintains as a trade secret.2 Even though Myriad's patents have effectively been invalidated, Myriad has gained a strong market advantage through the ability to mine this private database of information that its competitors cannot.3

In the information technology realm, Google leverages data generated by its patented search technology to afford it a competitive advantage.4 Specifically, Google utilizes a wealth of information about its users, such as previous search queries, locations, social networking data, and other personal information, which it may maintain as a trade secret well beyond the expiration date of its patents, to improve its current search queries and its targeted advertising to those users.5

In this Article, we introduce the concept of "data-generating patents" to describe patents over inventions that generate unique data from users. Specifically, these inventions typically generate data that is distinct from the operation and use of the invention itself. To be certain, the ordinary use of a patented invention will often generate data about the invention that can be used to improve the invention itself. For instance, the use of a wheelbarrow may lead customers to provide feedback that lead to improvements in its design. Indeed, such a feedback mechanism often lies at the heart of technological progress.6 In contrast, data-generating inventions by their operation and use may generate large amounts of data beyond the invention itself-for instance, data about users, other persons, or even the world in general-that can then be used to improve the operation of the invention or employed in a field entirely distinct from the invention.7

Unlike information about the invention itself-which is often disclosed in patented improvements on the original invention-datagenerating inventions tend to produce data that can be maintained as a trade secret. Patent holders enjoy an increased ability to aggregate and analyze "big data" obtained through leveraging data-generating patents, and they can protect the results using trade secret protection. This presents unique legal and economic consequences that we contend may be socially problematic under certain conditions. In addition to enjoying the potentially indefinite scope of protection afforded by trade secret law for the generated data, inventors of data-generating patents need not be concerned with the risk of ordinary defenses to trade secret infringement, such as independent discovery or reverse engineering, while the patent on the underlying invention is in effect.8 Even after the patent term ends, the data-generating patent holder may continue to benefit from the de jure lead time advantage secured by the prior patent in its compilation of data.9

Myriad's data-generating patents over breast cancer diagnostic tests and Google's search engine patents illustrate these concerns. The exclusive lead time afforded by patent protection has given Myriad a competitive advantage in generating a massive database of patient information protected by trade secrecy. Myriad's database will be extremely difficult for competitors to recreate so as to compete effectively, despite the Supreme Court's recent invalidation of many of Myriad's patent claims.10 The inability for the market to self-correct this informational imbalance allows Myriad to extend its market power even after patent protection ends.11 Similarly, the evidence suggests that Google has been able to leverage its patented search technology to obtain a competitive advantage in gathering data. …

Search by... Author
Show... All Results Primary Sources Peer-reviewed


An unknown error has occurred. Please click the button below to reload the page. If the problem persists, please try again in a little while.