Monday, February 05, 2007

Rochelle Dreyfuss on Jaffe/Lerner Innovation and its Discontents

This Georgia gator didn't see his shadow on February 2, but we'll probably have some cold weather anyway.

One IPBiz reader noted that my article "Bad patents or bad copyists?" did not mention the article by Rochelle Dreyfuss, "Pathological Patenting: The PTO as Cause or Cure," which appeared in the UMichigan Law Review, and which discussed the Jaffe/Lerner book in great detail (twenty pages of text and 92 footnotes!)

The Dreyfuss article did not mention the patent quality discussion of Quillen and Webster, although Jaffe and Lerner did refer to the Quillen and Webster thinking within Chapter 5 (page 142). Jaffe and Lerner stated that fully 1/4 of the seemingly new applications are actually refiled rejected filings, which Jaffe and Lerner termed continuations. Although Jaffe and Lerner did note criticism of Quillen and Webster (which they mistakenly attributed to "George" Clarke within note 163), they still concluded that there was a high allowance rate. By confusing "continuing" applications (which include continuations AND divisionals, cips (the latter two not involving refiled rejected filings)) and continuation applications, Jaffe and Lerner presaged the error Eli Kintisch made in the July 28, 06 issue of Science (and discussed in 88 JPTOS 743). The Dreyfuss article did not address this problem, which was a significant component of the IPFrontline article.

The Dreyfuss review states that "Adam Jaffe and Josh Lerner have given us a wonderfully timely book -- and also one that is beautifully executed," perhaps not the sort of thing Professor Field had in mind when he wrote in IPFrontline. The Dreyfuss review has some interesting lines (e.g., [The Jaffe/Lerner book] "uses as examples patents on inventions that are accessible to even the congenitally innumerate--the ubiquitous peanut butter and jelly sandwich..." IPBiz notes a similar strategy of proof by sound byte was used in KSR v. Teleflex.) IPBiz notes that the Dreyfuss review is not an unqualified endorsement of the Jaffe/Lerner approach and raises issues about some assertions made by Jaffe/Lerner.

The Dreyfuss review observes that "the book projects an image of pathology: according to the authors, thickets of strong but invalid patents are raising transaction costs and creating a drag on innovation." IPBiz notes that this is exactly the sort of thing Glenn Curtiss (and others) said about the patent of the Wright Brothers, LONG BEFORE the Court of Appeals for the Federal Circuit was created. The patent of the Wright Brothers was never invalidated. IPBiz notes that similar statements about the drag on innovation of the Selden patent were also made, long long ago. IPBiz notes that the "thicket" problem was especially intense in the early days of radio, again long long ago. There is nothing new here.

There is a curious remark about the second class status of patent law, ironic in view of the significant work of Dreyfuss herself.

In passing, IPBiz notes that Dreyfuss cites Rochester v. Searle for the proposition that CAFC is constraining the literal meaning of claims, although the basis for the Rochester case was invalidity for lack of written description, not a limitation on claim scope. Although the CAFC may be "regulating" patent law more through claim scope than through invalidity in some cases, the Rochester case, involving invalidity for lack of written description, is not an example of this behavior.

Although detailed discussion of the Jaffe/Lerner book is of interest, the impact of the Jaffe/Lerner position has been through shorter sound bytes, such as in the Harvard Business Review and in the Wall Street Journal (look here and here). In these quick hitters by Jaffe and Lerner, the 90% grant rate argument (unmentioned in the Dreyfuss article) plays a significant role. A concise analysis of the sound byte argument might be helpful.

Separately, in addition to points made about the favorable reception by the IP academic community of Jaffe/Lerner in the IPFrontline article, one notes that Professor Margaret Jane Radin of Princeton uses the Jaffe/Lerner book in the course "Patent Law and Innovation Policy."

In discussing Posner's book on plagiarism, Lawrence Velvel wrote:

In discussing plagiarism in law, Posner says ". . . as we'll see, originality is not highly prized in law" (p.15), and that publishing the work of another under one's own name is "consistent with the low regard in which the legal profession holds originality" (p. 33). In this vein he says that judges' clerks generally write judicial opinions, with the judges merely editing them, sometimes greatly, sometimes not so much, and then signing them with no attribution (pp. 20-21). He says that "verbatim passages from lawyers' briefs" appear in the opinions, without attribution (p. 21). He says that many judicial orders and findings of fact are cribbed from the lawyers in a case, without attribution (p. 21), that little value is ascribed to judicial originality -- sometimes it is actually disapproved, on the grounds that it tends to destabilize law, and that the Solicitor General signs briefs he hasn't written (p. 26) (as do partners in law firms).

The "success" of the Jaffe/Lerner book suggests that critical thinking may not be highly prized in law either. Grant rates based on models allowing for a rate in excess of 100% may be highly questioned. More directly, a model that allows a grant rate greater than 100% is rather obviously not correct. Additionally, inferences about allowance mechanics based on variations in the RATE of patent growth in certain classes are ambiguous. Separately, one notes the questionable article on proposed changes in continuing application practice which appeared in Science suggests that there can be more smoke than substance in the patent reform discussion. [see 88 JPTOS 743]


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