Yes, what a better way to spend a cold east coast winter day than to watch two scholars debate the absence of an independent invention defense for patents.

I previously wrote on Professor Mark Lemley’s comments to a proposal for an independent invention defense for patents by Professor Samson Vermont. Lemley did not argue per se against an independent invention defense, nor did my review suggest that. Rather, to capture the benefits of an independent invention defense, but to avoid possibly excessive costs of such a provision on innovation, Lemley proposed:

1...reform [the] standard for willful infringement to incorporate an independent development defense…
2...adopt a limited form of independent invention defense in the form of a prior user right.
3.give more consideration to simultaneous invention as grounds for not granting a patent.
4...take account of independent invention in setting the remedy for patent infringement…

Now, Vermont replies to Lemley’s points, agreeing with some of his arguments but taking issue with others. Samson Vermont, The Angel is in the Big Picture: A Response to Lemley, George Mason Law & Economics Research Paper No. 07-02, Michigan Law Review, Spring 2007, Available at SSRN.

First, and most significantly, finding merit in some of Lemley's arguments, and further clarifying his own proposal, Vermont posits that “neither the courts nor Congress should adopt the reinvention defense tomorrow.”

Vermont acknolwedges Lemley’s assertion that an independent invention defense may simply be “playing with fire,” possibly benefitting the creation of major ground-breaking innovations but potentially harming smaller scale inventions.

However, Vermont disagrees with Lemley’s point that the small cost of innovation in some industries does not necessarily imply reduced need for incentives via patents; the key difference between Lemley and Vermont stems from Lemley’s view that the relevant cost when considering innovation is the total cost to bring a product to market rather than simply the cost of invention or distribution (see Solveig on the marginal cost debate), and further, Lemley’s aversion to industry specific patent laws- a possibility Vermont''s position raises but which he does not address.

To Lemley’s argument that an indepdendent invention defense for patents may harm the market for patent licensing by reducing the certainty with which those patents are licensed, Vermont argues, and many scholars agree, that current licensing already occurs with no guarantee of exclusivity. Here, I believe that Lemley and Vermont are merely arguing on a matter of degree in certainty for ascertaining a patent's value.

On Lemley’s proposals, Vermont finds inadequacy and concern with mere changes to the willfulness doctrine and simultaneous invnetion as grounds for not granting a patent, yet Vermont agrees that Lemley's proposals on remedies for patent infringement and prior use rights may address many problems associated with a lack of independent invention defense in patent policy today.

So who wins the battle of the patent policy titans? Well, Lemley and Vermont both have strong arguments, and I believe they have a lot of common ground in the prospective benefits of an independent invention defense, however, I"m inclined to take Lemley's more cautious approach of several minor changes to patent policy rather than a new indepdendent invention defense.