A New Justification for Granting Patents

I have spent the morning reading a fascinating article by Professor Mark Lemley entitled "The Myth of the Sole Inventor" which you can download free of charge from the Social Science Research Network. Prof. Lemley holds the Neukom chair at Stamford University and, despite the assertion of one of his detractors that he is not a patent attorney, he is also a partner of Durie Tangri which is a San Francisco law firm specializing in IP. The article seems to have appeared in the MLR (not our Modern Law Review but something published by the "U of M Law School" which could be the University of Michigan but equally the University of Maryland).

The article seems to have stimulated some hostility around the blogosphere. The same reviewer who denied that Prof. Lemley was a patent attorney described his article as "a socialist diatribe". Having read the article very carefully and more particularly having lived under several governments by a party that once described itself as socialist I really cannot understand that particular critique.

Professor Lemley's article is in three parts:

• the first traces the history of a number of important inventions such as the steam engine, light bulb, the aeroplane and penicillin and finds that in nearly every case several individuals had very much the same idea at approximately the same time;
• the second examines the justifications for granting patents such as the arguments that patents stimulate R & D and the dissemination of scientific knowledge but finds fault with all of them; and
• the third proposes Prof. Lemley's own justification which is that patents encourage races between different teams working on the same problem.

Although I was bristling at Prof. Lemley's examples that seemed to suggest just about everything in the world had been invented by an American - television by Philo Farnsworth, for example, rather than by John Logie Baird - I agree with his general theory that technical progress is essentially a group process, sometimes collaborative and sometimes competitive, but always incremental. Every patent specification that I have read commences with a review of the prior art before addressing the technical problem that the invention solves.

For me, the most interesting part of Prof. Lemley's article was the last. His starting point was that any justification of patent law must jibe with the historical evidence which he listed as follows at page 82:

• "Invention is a social phenomenon, not one driven by lone geniuses. Inventors are working in groups, interacting with each other and building on the prior work of others. But even where they work independently, they are often working in parallel to solve identified problems or to improve existing technology.
• Central control doesn‘t seem desirable given the actual history of important inventions. Where we have given strong control to a single patent owner, the result has generally been reduced improvement and delayed commercialization.
• A patent system that encourages innovation needs to encourage the diffusion of knowledge. Inventors are not working in isolation; they are affirmatively seeking out knowledge of what others are doing in a field. The importance of cumulative innovation suggests that we need to make sure information is actually communicated between different workers building on related work."

Prof. Lemley's justification is that patents encourage races between different teams working on the same problem and that is generally to the good because it encourages them to work harder and often produces a variety of solutions to the same problem. Helicopters as well as fixed wing aeroplanes for heavier than air flight was one example he suggested. Prof. Lemley recognizes that any theory of patents has its drawbacks. A patent confers a monopoly which like all monopolies restricts competition and drives up costs. He suggests moderating these disadvantages by modest changes to US patent law such as granting patents to the first to file rather than the first to invent. I think a better answer is to make more vigorous use of competition law and perhaps revive some of the compulsory licensing provisions that had to be scrapped to comply with TRIPS.

This is a fascinating topic and one tow which I might contribute my own article when I retire from the Bar but now I have to return to the grind of advising on the construction of patent claims and whether patents can be invalidated for obviousness, insufficiency or some other defect in the specification. However, should anyone want to discuss these matters over a cup of tea I should be more than happy to hear from them. Call me on 0800 862 0055 or use my contact form.