Craig Allen Nard

Constitutionalizing Patents: From Venice to Philadelphia

Patent law today is a complex institution in most developed economies, and the appropriate structure for patent law is hotly debated around the world. A crucial feature shared among the diverse patent systems of the industrialized world, even before the recent trend toward harmonization, is that modern patent regimes are x93constitutionalized,x94 meaning the self-restriction of executive and legislative discretion over the patent power. Given the lucrative nature of patent monopolies and the long history of granting patents as a form of patronage, the choice to confine patents within a legal framework that minimizes the potential for rent-seeking requires explanation. Why choose to constitutionalize patents? This paper answers this question by examining three salient constitutionalizing events through the lens of public choice theoryx96a theoretical framework all but absent in patent and innovation scholarship. Using interest-group analysis, we trace the constitutionalization of patent law from the Venetian patent statute of 1474, through the English 1624 Statute of Monopolies, to the Intellectual Property Clause of the United States Constitution. We argue that creating constitutional patent law institutions offered the opportunity to both increase the durability of the bargain between the state and the inventor and, in some cases, to limit the grant of patents to those most likely to increase the general welfare.

Invention, Refinement and Patent Claim Scope: A New Perspective on the Doctrine of Equivalents

The doctrine of equivalents (DOE) allows courts to expand the scope of patent rights granted by the Patent Office. The doctrine has been justified on fairness grounds, but it lacks a convincing economic justification. The standard economic justification holds that certain frictions block patent applicants from literally claiming appropriately broad rights, and thus, the DOE is available at trial to expand patent scope and overcome these frictions. The friction theory suffers from three main weaknesses. First, the theory is implausible on empirical grounds. Frictions such as limits of language, mistake, and unforeseeability are missing from the leading cases. Second, there is not a convincing answer to the question of why the doctrine of equivalents, rather than some other doctrinal approach, should be used to overcome the frictions. The frictions can be overcome, or at least mitigated, for example, by astutely amending claims during prosecution; through a reissue proceeding after the patent issues; or through artful claim drafting as an initial matter. Third, proponents of a far-reaching DOE fail to pay adequate attention to the notice function of patent claims and are insufficiently sensitive to patent laws delicate incentive dynamic. We develop a better explanation of why claim breadth falls short of the maximum breadth allowed by patent law. Our explanation replaces the passive patent attorney depicted in the friction theory with an active inventor and attorney who are capable of responding effectively to the frictions mentioned above. Whether an inventor obtains the broadest permissible claim breadth depends mostly on the talent and effort of the inventor and attorney in identifying what has been enabled. A good attorney predicts the embodiments that could be chosen by infringers and finds appropriate language to draft a suitably broad claim. We call this process claim refinement, and we develop a refinement theory of the doctrine of equivalents. We justify the doctrine of equivalents primarily as a tool for promoting efficient investment in claim refinement. Although critics of the DOE contend the doctrine unduly inhibits competition, we show the degree of competition is often unaffected by the presence or absence of the DOE. The inventor can block competition in the absence of the DOE by drafting broad patent claims. The DOE should be used to avoid socially wasteful preemptive refinement. We reject the popular notion that the DOE is especially appropriate in the case of unforeseeable, later-developed technology. We reach this conclusion because in certain cases patent applicants can capture unforeseen embodiments at relatively low cost through clever claim drafting strategies. And in other cases unforeseen equivalents are unattainable no matter the amount of time and money spent on refinement efforts. In the latter cases, patent applicants would not exert much effort refining their claims to cover these equivalents, and inventors incentives would not be much affected by a minute probability of loss of effective patent protection.

Institutional Choice & Interest Groups in the Development of American Patent Law: 1790–1865

This article analyzes the evolution of U.S. patent law between the first patent act in 1790 and 1865. We argue that this evolution is best understood through an interest group-based analysis, focused on the question of the choice of which institution interest groups select in their efforts to alter the law. Although the federal courts have generally been viewed as relatively costly to capture, we contend that the early nineteenth-century federal bench was often less costly for pro-patent interests to influence than the contemporaneous Congresses. The heavy reliance on the courts during this crucial period of patent law’s evolution thus makes sense. One major and several minor patent statutes were enacted, as well. Interest groups turned to Congress for two reasons. First, despite the general agreement between bench and bar on the appropriate evolutionary path for patent law, there remained in American law a powerful strain of anti-monopoly thought, hostile to patents. Although most patent cases ended up being litigated before sympathetic judges by the skilled patent bar, not every patent case did so and the proportion being litigated outside the small strata of experienced judges grew over time. Additionally, because of the “democratic” nature of patent practice, patent law touched individuals spread across the country and made litigation before judges with an anti-monopoly orientation a real risk. Interest groups therefore turned to Congress on occasion to “lock in” changes in the law that they had achieved through the courts. They also sought Congressional aid in correcting occasional dead-ends reached in the law’s development.