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Patent Scholars Debate, But It Is What It Is

Back in September, Professor Mark Lemley began promoting his latest piece of scholarly work, entitled The Myth of the Sole Inventor.  Lemley set out to discover the truth about a theory of patents he apparently considers relatively fundamental. His piece begins:

The theory of patent law is based on the idea that a lone genius can solve problems that stump the experts, and that the lone genius will do so only if properly incented.

Lemley states this theory more or less as a truism, despite the fact that the motivations behind creating a patent system are far too diverse to boil down to any single theory.  Further, while a lone genius can solve problems that stump so-called “experts,” the lone genius’s motivations should hardly be presupposed.  I also detect implicit ridicule in Lemley’s suggestion that an outsider working alone automatically fails to qualify as an “expert” who, presumably, works in university or corporate research.

Rhetoric aside, Lemely’s work actually demonstrated a point so mundane that, initially, I struggled to understand why it was worth making at all: invention is incremental.  Lemley offers up examples of Edison, Bell and the Wright Brothers to demonstrate how neither “invented” the fundamental concepts with which they are associated, but rather contributed to a developing field to improve and advance their art.

I argued this very point more than six years ago in an amicus brief I co-authored on behalf of my then-mentor, Hal Milton.  In that brief, Hal and I observed:

Technological change is generally incremental, usually by many investigators in the field, and it is not a sudden and revolutionary step forward. The public is usually not aware of the incremental progress and only learns of the last increment by a successful inventor who makes the technology usable.

At the time, we hoped to counsel the Supreme Court against adopting a patentability standard that would render novel combinations obvious through ad-hoc hindsight reasoning.  But where the Supremes left off, Lemley carries on, claiming that the doctrine of “obviousness” prevents patenting of inventions that would have been obvious to “ordinarily innovative scientists” and that we should deny patentability to all but those inventions “we wouldn’t expect to get without the incentive of a patent.”

Lemley frames the inquiry as one of a hypothetical world without patents, and then asks whether a given invention would exist in that hypothetical world or not.  But this is not the standard.  Congress instructed that an invention should only be denied a patent if obvious to “one of ordinary skill in the art.”  The 19th Century Supreme Court case on which this standard is based (incidentally a prime example of judicial activism) denied patentability to “the work of the skillful mechanic,” instead of Lemley’s preferred standard of “innovative scientists.”  More importantly, the expectation of the inventor’s reward plays no role in the question of patentability.

The process of invention and patenting are distinct.  An inventor may nevertheless chose not to patent, but that has nothing to do with the question of whether the invention would have been entitled to a patent in the first place.  Lemley’s logic walks us down a dangerous–and illogical–path to subjective evaluation of patentability, where one inventor’s decision not to patent would negatively impact other inventors’ ability to obtain patents simply because the mere existence of one inventor’s creation without patent protection suggests that other inventions likewise may exist in a hypothetical non-patent world.

Instead, those who criticize the patent system–and those who support it–ought to recognize that invention is largely incremental. We reward incremental inventions with patent protection because, in part, the increment that makes the difference between science fiction and science fact often cannot be predicted in advance.  As a culture, we decide whether inventions (as a class) deserve patent protection or not, but merely pointing out the incremental nature of the overall inventive process fails to advance the debate.



3 thoughts on “Patent Scholars Debate, But It Is What It Is

  1. Patrick,

    Ayn Rand anticipates Lemley’s argument in Atlas Shrugged, in a conversation between James Taggart and his wife:

    “He didn’t invent smelting and chemistry and air compression. He couldn’t have invented HIS metal but for thousands and thousands of other people. HIS Metal! Why does he think it’s his? Why does he think it’s his invention? Everybody uses the work of everybody else. Nobody ever invents anything. (Jim Taggart) She (Jim Taggart’s Wife) said, puzzled, ‘But the iron ore and all those other things were there all the time. Why didn’t anybody else make that Metal, but Mr. Rearden did?”

    James Taggart’s argument is used by every collectivist who wants to prove that no one every invents anything – it is always a collect effort. This argument is based on the nonsense that inventions are created out of thin air or the amorphous argument that it is impossible to delineate the efforts of one person from the efforts of another person.

    Posted by dbhalling | October 28, 2011, 6:56 pm
  2. I’m not going to dispute that “invention” is incremental.

    Lemley-like articles and rants by anti-software patent folks have a lot resonance with folks because of what I think a lot of lay people think the value of the patent system.

    I think people view a certain inequity in awarding patents over small increments. This is heightened when it’s clear that that patent office did not consider all of the the stuff that came before the patent. Indeed, even in litigation, turning up good evidence years later about the then-current state of affairs makes things worse. The unfairness arises because granting a patent for the incremental invention usually results in awarding rights [and sometimes very powerful rights] to a party that did not deserve it.

    And then piling on to the unfairness, the patent law enshrines the decision of the patent office and gives that person the benefit of the doubt that they were the first to make an incremental move (or to assemble a series of non-obvious things together) when in fact another may have done so.

    By contrast, when lay people think about the “ideal” of a patent, they think about reward people for some monumental/genius move in a field. They do not think, “oh, you added a pretty picture to your slide-to-unlock feature, you deserve a patent.” Of course, patent/ip folks recognize (and Lemley’s article demonstrates) that this too does not comport with reality.

    Even as a patent attorney, practicing in the software space, I tend to think that the pendulum has swung much too far towards allowing patent grants. The standard for obviousness remains a remarkably low barrier and in the game of poker against the patent office, the patent office is not the house.

    Posted by Mike | November 1, 2011, 5:52 pm

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