Sunday, September 05, 2004


Further on the article by Shubha Ghosh and Jay Kesan, WHAT DO PATENTS PURCHASE? IN SEARCH OF OPTIMAL IGNORANCE IN THE PATENT OFFICE, 40 Hous. L. Rev. 1219 (2004).

Of the text:
For example, Congress could adopt standards for patentability that are akin to the standards that the National Science Foundation (NSF) has for the granting of funds for research. n172 A critique of the NSF system is itself worthy of a paper and response, n173 but our point is that Congress could conceivably limit the grant of patents to inventions that are clearly cutting edge in a field of study. In this way, the USPTO would be promoting progress of a sort and would have guidelines for how to pursue its mandate. Furthermore, the scope of optimal ignorance for the USPTO would be given structure; the agency and its examiners would know what to look for and what to ignore within the scope of the mandate.

n172. National Science Foundation, Grant Proposal Guide (Oct. 2003), available at (listing the following characteristics: novel and untested ideas, emerging and potentially transformative ideas, new approaches to established topics, research for quick response to natural disasters, and innovative advances).

n173. For a discussion of the NSF and other institutions including the USPTO as they relate to innovation and information policy, see generally Brett Frischmann, Innovation and Institutions: Rethinking the Economics of U.S. Science and Technology Policy, 24 Vt. L. Rev. 347 (2000).

--> One might question the concepts 1) that NSF funding goes to "inventions that are clearly cutting edge in a field of study" AND that patents should be restricted to "inventions that are clearly cutting edge in a field of study."

Although some NSF funding goes to "cutting edge" work, the recent scandal over the work of Jan-Hendrik Schon illustrates that NSF funding can go to follow up on someone else's cutting edge work. Thus, the initial work by Schon was funded by Lucent/Bell Labs (not by NSF or other government agencies) but the follow up work was funded by government agencies, including NSF. In this particular case, the work was fraudulent and millions of dollars of public money was spent following up the fraudulent work. Separately, the initial "cutting edge" work on oxide superconductors was done by IBM and the initial "cutting edge" work on C60 was performed by Exxon in 1984, although much follow up work was funded by government agencies. Whether or not the NSF model is appropriate for optimizing patent law can be seriously questioned.

Separately, patent law is not restricted to "cutting edge" [pioneering] inventions. Incremental advances which are useful, novel and nonobvious should be protected to encourage such advances.

As a separate point, the idea that patent applications might be submitted to competitors for peer review (as happens with NSF grant proposals) can be criticized. The misuse of such information (whether advertent or inadvertent) has been documented (and was even the subject of a plot line on Law & Order ten years ago ["Big Bang" episode on proton lifetime; see
archives/2004_01_09_academicgame_archive.html and my article on "scientific doormen" at pages 34-35 of the January 1999 issue of Intellectual Property Today, available LEXIS]).

Thus, the "NSF standards" alternative of Ghosh and Kesan appears as an easily demolished strawman.

The most direct remedy for perceived issues at the PTO is to give at least sufficient resources to perform art searches in relevant patent and non-patent databases. Some mistakes will still be made, but then again Science and Nature published Schon's entirely fictionalized research as if it were real. Thus, provide a reasonable procedure for mistake correction.

Separately, Kieff provides a different alternative to that of Kesan, and describes Kesan:

"...which differs from the argument presented here in that it adheres to the orthodoxy of advocating methods for improving hard-look examination systems and eschews soft-look approaches like those explored in this work), and Shubha Ghosh & Jay Kesan, What Do Patents Purchase? In Search of Optimal Ignorance in the Patent Office 2–5 (Univ. of Ill. Coll. of Law, Ill. Law & Econ., Research Paper Series No. LE03-007, 2003), at (arguing that Patent Office examination of patent applications, especially better informed examination, is important in making issued patents more valuable as the objects of licensing deals). But, as discussed infra Part III.A, the rules relating to patent validity are, and should be, responsive to information that happens to be not known or easily knowable by the patent applicant. As a result, heaping added incentives to find this information on the back of the patent applicant is not likely to be an efficient tool for bringing this information to the attention of decisionmakers. For other bounty approaches, see Joseph Scott Miller, Building a Better Bounty: Litigation-Stage Rewards for Defeating Patents 7–9 (2003) (working paper, available online at (suggesting cash rewards be granted to those who successfully defeat the validity of a patent).
Yet another approach is to alter the framework for appellate review of patent cases, as explored in the recent important work by Rai. See generally Arti K. Rai, Fact, Law, and Policy: An Allocation-of-Powers Approach to Patent System Reform (Univ. of Pa., Inst. for Law & Econ., Research Paper No. 02-20, 2003), available at (advocating change in the appellate review process)."


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