When has a researcher done enough to merit a patent? Should the patent belong to the researcher who first suggests an invention, or the one who brings it to fruition? The canonical dispute over a fox in Pierson v. Post is used to illustrate the competing policy considerations in deciding when to award a new property right, including providing efficient incentives, setting forth clear rules to guide future behavior, and respecting natural rights. In patent law, all of these considerations suggest that in practice, many patents are awarded too early, before an applicant has demonstrated that the invention is likely to work. The main problem seems to be not with the substantive standards, but with the Patent Office’s institutional competence to enforce these standards. A patent is supposed to teach a researcher of “ordinary skill” in the field how to make the invention without “undue experimentation.” Yet it often takes extraordinary skill to recognize when this standard is not met based merely on reading a patent application — expertise that the typical patent examiner lacks. To address this information asymmetry, it is worth experimenting with bringing those of extraordinary skill into the patent examination process through a robust peer review system. So far, opportunities for outside input such as the Peer To Patent pilot project have focused on providing examiners with additional prior art, but peer review would be far more valuable for evaluating patent disclosures to assess whether applicants have in fact done enough work to merit a patent, or whether it remains too early in the chase.
07 July 2016
'Pierson, Peer Review, and Patent Law' by Lisa Larrimore Ouellette in (2016) 69 Vanderbilt Law Review comments