Monday, August 30, 2004

More on Mark Lemley's "rational ignorance" at the Patent Office

Jay Kesan [formerly of Pennie & Edmonds LLP] and S. Ghosh have recently published a critique of the paper by Mark A. Lemley, "Rational Ignorance at the the Patent Office," 95 Nw. L. Rev. 1495 (2001). [see Dennis Crouch's "Patently Obvious" blog; the cite given for the Kesan/Ghosh paper is 40 Hous. L. Rev. 1219 (2004)]

As a additional observation, we had discussed "rational ignorance" a year ago in L.B. Ebert, "Good Night Gracie?", Intellectual Property Today, p. 26 (August 2003)[available LEXIS]. The pertinent parts of the article are as follows:

The focus of HLR-1 [116 Harv. L. Rev. 2164 (2003)] on "high cost patents" derived from an earlier law review article by Lemley which concluded that it was not worthwhile to invest more resources at the Patent Office for purposes of obtaining a more accurate examination result. EN6

EN6 Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Nw. U. L. Rev. 1495 (2001). As a passing observation, one notes that the law reviews tend to cite to other law reviews, and do not tend to cite to texts contained in journals such as Intellectual Property Today or Intellectual Property Law & Business.


Briefly, the Lemley article argues that because the overwhelming majority of patents are never litigated or licensed, it is cheaper for society to make detailed validity determinations only in those cases, rather than in investing additional resources in examining all applications. The article does not argue that there should be no examination, just no more money to enhance the present examination. In some sense, the argument is for the status quo, in that it did not favor less resources for examination (e.g., a registration system) or more resources for examination.

In all the various arguments, there was no discussion of the value of having a publicly-available assemblage of disclosed, written-down, documents on innovation, with claims nominally satisfying the requirements of the patent law, including 35 USC 101, 102, 103 and 112. EN7 Walterscheid argued that the primary objective of intellectual property laws is not to reward the inventor/author but to secure for the public the benefits of the inventions/creations, a proposal consonant with the Constitutional text "to promote the Progress of Science and useful Arts." EN8 Whether or not a patent is ever litigated or licensed, there is some value to the public in knowing that the disclosure of the document is accurate. Even if not used, a patent may serve as stepping stone to something else. Furthermore, the sorting operation done by the Patent Office does give an imprimatur of reliability, whether or not the issued patent is ever litigated or licensed. This is the locus of concerns of people such as Bob Park and David Voss with examination by the Patent Office. EN9 What may look like a silly idea, unpatented, gathers credibility when patented, and thus patenting can re-direct investment resources. When an error is made, cost can be imposed on society, even in the absence of litigation or licensing.

Endnote 7. While Lemley's invalidity concerns pertained more to prior art, one recalls the image of Albert Einstein at the Swiss patent office evaluating that the thing worked. The value of the enablement, written description, and utility for entries into the public knowledge storehouse should not be overlooked.

Endnote 8. Edward C. Walterscheid, "The Remarkable -- and Irrational -- Disparity Between the Patent Term and the Copyright Term," 83 JPTOS 233 (April 2001). See pages 239, 243-244, 259.

Endnote 9. See L. B. Ebert, "Obtaining Sure and Reliable Information," Int. Prop. Today (Aug. 2000); "Taking a Walk on the Wild Side?", Int. Prop. Today (Dec. 2002). Separately, see the discussion of "transistor for hearing aid" text in "Foreseeability in Patent Law," 16 Berkeley Tech. L. J. 1045 (2001) which appears in "Pioneering, Innovation and Festo Last Looks," Int. Prop. Today (June 2002) and in "Supreme Court Festo: Equivalents Still Limited," Int. Prop. Today (July 2002).

In the academic area, we review submissions to scientific journals, not because of commercial implications, n10 but because we want our storehouse of information to be sufficiently accurate that we can continue to move forward, rather than getting bogged down in evaluating inaccuracies of the past. As mentioned by Garfield in discussing the Hamilton papers, different journals have different impacts, with a relatively few prestigious journals having disproportionate impact; directionally (but not absolutely, see Jan Hendrik Schon. Separately, see retraction of fabricated and falsified research findings mentioned in Science, 2003, 300, 1657.), these prestigious journals may have a higher index of reliability than other journals, as well as presenting more ground-breaking results. Separately, different journals serve different functions. The availability of various journals allows a sorting function, with discrimination existing among several parameters (for example, some journals may have a role to present material which is "newer" than others; some may have more technical details than others; some may be written for a scientific generalist and some may be written for an expert in a narrow field). In the patent area, we have a "one size fits all" approach, wherein there is one patent system, and one general approach for evaluating patentability. Who can say how many hours should be spent on a given application to justify its entry into the (patent) storehouse of knowledge?

Endnote 10. However, one observes that publication in a prestigious journal can have commercial implications.

Certain text within the Lemley article about "attention to in-force patents" caught my eye: "If they [companies] think about the problem at all, most sophisticated companies strenuously avoid reading other companies' patents because they don't want to be charged with knowledge of the patent's existence." First, if true, such activity defeats the purpose of having patents. Second, this is not my experience with companies, who know about the patents of competitors and seek advice in the form of opinions. Third, this text is not necessarily in keeping with observations of other attorneys. EN11

Endnote 11. See John R. Wetherell, "Patent Infringement: the Role of Opinions of Counsel," available at See also Edward G. Poplawski, "Effective Preparation of Patent Related Exculpatory Legal Opinions," available at

UPDATE: A copy of the Ghosh/Kesan paper may be obtained at
The paper apparently does not cite to the earlier work in Int. Prop. Today concerning "rational ignorance." We have a somewhat ironic situation about law review articles discussing ignorance at the USPTO, while the law reviews themselves are ignorant of published articles highly material to the topics they discuss.

Further, the Patent Office, in assessing whether or not a given patent application manifests the requirements of patentability, has limited resources and limited time to make a determination. Once the determination is made, either a dissatisfied applicant or a dissatified competitor has means to challenge the decision, and the analysis of the Patent Office is placed under scrutiny. Compare this to the world of law reviews, wherein after lengthy research with thorough access to LEXIS, authors can make false statements to support positions. In terms of procedure for correction, there is little chance that the offending law review will acknowledge mistakes and thereby warn readers of problems. A recent example of this sort of thing is given in


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