|
A distinguishing feature of patent doctrine is the lack of an independent invention defense. Scholars such as Professor John Duffy view that this aspect of patent doctrine maintains creativity in innovation, decreases duplicative R&D and prevents researchers from isolating from each other to leverage the defense.
In a new article, Professor Mark Lemley argues that an independent invention defense in patent doctrine may reduce incentives to innovate and impose inefficiency on the market for patents. Should Patent Infringement Require Proof of Copying? (January 4, 2007), available at SSRN. Lemley highlights how current patent policy preserves incentives and benefits industrial structure by facillitating "open innovation."
Lack of an independent invention defense is important for R&D incentives, and thus, innovation. Lemley writes that if the barrier to R&D investment is uncertainty or cost, an independent invention defense can undermine incentives because inventors know others can diminish their investment recoupment and reduce the odds of success. Even if investment in R&D does not result in innovative technology, Lemley holds that the incentive of exclusivity offered by patents is still critical since knowledge obtained from R&D ultimately contibutes to society. …one advantage of the current system is that inventors invest more than they can reasonably expect to recoup, and that investment produces social benefits that significantly outweigh the actual expected benefits to the patentee. Society benefits from the difference… I am not yet persuaded that we can be sure that an independent invention defense will have no undue effect on incentives. An industrial structure marked by collaboration and diffusion of innovaton benefits from there being no independent invention defense.
Lemley posits that an independent invention defense may weaken patent rights, and thus hamper the market for patent licensing; a development that would impose substantial costs on society. Markets for patents and licensing are important because they can improve economic efficiency by allowing an inventor to find the most productive means of commercializing an innovation by licensing with the holders of complementary innovations and manufacturers. Further, transferring innovation through licensing supports diffusion of innovation across the technological community. An independent invention defense will significantly change any market for patent rights that might exist or be developing today. It is much easier to sell a right of absolute exclusion than a right of control that is potentially defeasible based on information—the fact of independent invention—that the patentee is unlikely to have at the time the sale occurs.
If an inventor obtains a patent... he can sell his patent rights to others who are better able to commercialize it, because he can guarantee them exclusivity… Commercializers will be less likely to purchase rights to patents under an independent invention system because they won’t know if they are buying exclusivity or just the right to participate in a duopoly or a triopoly. At the least they may delay any such purchase—and therefore slow commercialization—to see if independent developers surface. Lemley does not entirely downplay the potential value of an independent invention defense. In fact, he finds that such an addition to patent doctrine can be valuable to innovation in the technology industries, but reform must be approached cautiously in order to avoid debilitating effects.
Lemley outlines a set of proposals to capture the benefits of an independent invention defense, while curbing its potential drawbacks. First, we can and should reform our standard for willful infringement to incorporate an independent development defense… it makes little sense to describe someone who independently invents as a “willful infringer.” .. willfulness should be redefined as copying the technology...
Second, we could adopt a limited form of independent invention defense in the form of a prior user right. Under this approach... independent invention becomes a defense, but only if made sufficiently early in the process, such as before the patentee files its application…
Third…courts considering whether an invention is obvious are free to consider a variety of external market factors, almost all of which are found to favor patentability. Only one—simultaneous invention by others—is considered evidence that the invention shouldn’t be patentable. .. perhaps we should give this factor more significance…
Finally, we might take account of independent invention in setting the remedy for patent infringement. .. an injunction against a copier seems perfectly equitable, an injunction against an independent developer can render significant irreversible investments by the defendant worthless… I find it surprising that there is not a lot of discussion of an independent invention defense in patent law, among either FOSS or IPR supporters. Legislative proposals have considered this defense, thus it is not off the radar of policy makers. To FOSS policy positions, such a defense would provide many protections for FOSS development that its advocates currently seek in reforming the non-obvious doctrine. To IPR supporters, an independent invention defense can eliminate patent trolls, according to Lemley, “in one fell swoop.” Hopefully, if discussion emerges on an independent invention defense, it will be marked by recognition of how current patent doctrine helps innovation, as Lemley helps us understand in his new article.
posted by Noel Le @ 7:00 AM | Academia, Patents
Link to this Entry |
Printer-Friendly |
Email a Comment | Post a Comment(1)
|
