In this paper, we show that there are important differences across patent examiners at the U.S. Patent and Trademark Office. We show that more experienced examiners cite less prior art, are more ...likely to grant patents, and are more likely to grant patents without any rejections. These results suggest that the most important decisions made by the patent office are significantly affected by the happenstance of which examiner gets an application. They also point to human resource policies as potentially important levers, hitherto neglected, in patent system reform.
Remedies for Robots Lemley, Mark A.; Casey, Bryan
The University of Chicago law review,
09/2019, Volume:
86, Issue:
5
Journal Article
Peer reviewed
What happens when artificially intelligent robots misbehave? The question is not just hypothetical. As robotics and artificial intelligence systems increasingly integrate into our society, they will ...do bad things. We seek to explore what remedies the law can and should provide once a robot has caused harm.
Remedies are sometimes designed to make plaintiffs whole by restoring them to the condition they would have been in "but for" the wrong. But they can also contain elements of moral judgment, punishment, and deterrence. In other instances, the law may order defendants to do (or stop doing) something unlawful or harmful.
Each of these goals of remedies law, however, runs into difficulties when the bad actor in question is neither a person nor a corporation but a robot. We might order a robot—or, more realistically, the designer or owner of the robot—to pay for the damages it causes. But it turns out to be much harder for a judge to "order" a robot, rather than a human, to engage in or refrain from certain conduct. Robots can't directly obey court orders not written in computer code. And bridging the translation gap between natural language and code is often harder than we might expect. This is particularly true of modern artificial intelligence techniques that empower machines to learn and modify their decision-making over time. If we don't know how the robot "thinks," we won't know how to tell it to behave in a way likely to cause it to do what we actually want it to do.
Moreover, if the ultimate goal of a legal remedy is to encourage good behavior or discourage bad behavior, punishing owners or designers for the behavior of their robots may not always make sense—if only for the simple reason that their owners didn't act wrongfully in any meaningful way. The same problem affects injunctive relief. Courts are used to ordering people and companies to do (or stop doing) certain things, with a penalty of contempt of court for noncompliance. But ordering a robot to abstain from certain behavior won't be trivial in many cases. And ordering it to take affirmative acts may prove even more problematic.
In this Article, we begin to think about how we might design a system of remedies for robots. Robots will require us to rethinkmany of our current doctrines. They also offer important insights into the law of remedies we already apply to people and corporations.
The imperial Supreme Court Lemley, Mark A
Harvard law review,
11/2022, Volume:
136, Issue:
1
Journal Article
Peer reviewed
The past few years have marked the emergence of the imperial Supreme Court. Armed with a new, nearly bulletproof majority, conservative Justices on the Court have embarked on a radical restructuring ...of American law across a range of fields and disciplines. Unlike previous shifts in the Court, this one isn't marked by debates over federal versus state power, or congressional versus judicial power, or judicial activism versus restraint. Nor is it marked by the triumph of one form of constitutional interpretation over another. On each of those axes, the Court's recent opinions point in radically different directions. The Court has taken significant, simultaneous steps to restrict the power of Congress, the administrative state, the states, and the lower federal courts. And it has done so using a variety of (often contradictory) interpretative methodologies. The common denominator across multiple opinions in the last two years is that they concentrate power in one place: the Supreme Court.
Probabilistic Patents Lemley, Mark A.; Shapiro, Carl
The Journal of economic perspectives,
04/2005, Volume:
19, Issue:
2
Journal Article
Peer reviewed
Open access
Economists often assume that a patent gives its owner a well-defined legal right to exclude others from practicing the invention described in the patent. In practice, however, the rights afforded to ...patent holders are highly uncertain. Under patent law, a patent is no guarantee of exclusion but more precisely a legal right to try to exclude. Since only 0.1% of all patents are litigated to trial, and since nearly half of fully litigated patents are declared invalid, this distinction is critical to understanding the economic impact of patents. The growing recognition among economists and legal scholars that patents are probabilistic property rights has significant implications for our understanding of patents in four important areas: (1) reform of the system by which patents are granted; (2) the legal treatment of patents in litigation; (3) the incentives of patent holders and alleged infringers to settle their disputes through licensing or cross-licensing agreements rather than litigate them to completion; and (4) the antitrust limits on agreements between rivals that settle actual or threatened patent litigation. PUBLICATION ABSTRACT
When is a design just a design, and when is it a trademark? Over the last several decades, courts have developed a clear framework for evaluating the distinctiveness of certain unconventional marks, ...especially those typically conceived of as "trade dress." The Supreme Court has drawn a line between product packaging, on the one hand, and product design, on the other. Packaging features are treated just like any other potential trademark in the sense that we protect them automatically if they are inherently distinctive, and we require evidence of secondary meaning if they aren't. Product design is different. Like color, it is incapable of being inherently distinctive and can be protected only when it has acquired secondary meaning. There's just one problem with this fundamental rule: It isn't true. Or at least, it isn't the whole truth. As we show in this article, sometimes courts and the Trademark Office don't recognize features like logos as being part of a product's design, and as a result, they ignore the categorization system and evaluate the claimed features for inherent distinctiveness. Something similar happens with certain product packaging features, except in reverse. In other words, courts are engaged in a previously unrecognized "step zero" before they classify trade dress features and apply the normal rules of distinctiveness for product packaging and product configuration. In that largely implicit step, courts and trademark examiners make their own judgments about the role of that feature, and particularly whether they believe consumers are likely to regard those features as trademarks.
While courts and the Trademark Office have been slow to articulate rules for step zero - or even to acknowledge that it exists - we show in this article that in practice they are recognizing what we call "trademark spaces": locations that consumers are likely to assume are serving as trademarks. When they apply this implicit step zero, courts and the Trademark Office frequently treat the location of a claimed feature on the product or package as an important determinant of trademark status. As we describe in detail, some locations are special. Use in those spaces goes a long way to convincing a court or trademark examiner that the design is a trademark. The recognition of trademark spaces offers a way to rationalize the step zero analysis and to begin thinking more systematically about the relationship between distinctiveness and use as a mark. Courts can and should evaluate use in a trademark space as part of the broader step zero inquiry. But they should do so explicitly and based on evidence, not instinct. Bringing step zero out into the open will help us better understand when and why consumers react to certain designs as trademarks. And it will pave the way for us to reject claims to own things that either do not or should not function as trademarks.
MISSING THE FOREST FOR THE TROLLS Lemley, Mark A.; Melamed, A. Douglas
Columbia law review,
12/2013, Volume:
113, Issue:
8
Journal Article
Peer reviewed
Patent trolls are increasingly blamed for the growing costs of patent litigation and seemingly excessive damages awards and patent royalties. There is much to support these allegations. Trolls now ...account for a majority of all patent assertions, win both larger judgments and larger settlements than do firms that practice patents, and do so despite complaints and some evidence that they assert weak patents. Nonetheless, we think the focus on trolls obscures more complex and fundamental problems with the patent system. There are at least three different troll business models that have varying effects on the patent system. Based on our review of the economics of patent assertions, we find that patent assertions by practicing entities can create problems that, while sometimes different from, are at least as costly as those created by trolls. Many of the problems associated with trolls are in fact problems that stem from the disaggregation of complementary patents into multiple hands. Our review takes us beyond labels and the search for "bad actors" and leads us to focus instead on aspects of the patent system that give rise to the problems, and on changes in patent law that will ameliorate them. These changes include updating standards for issuing patents and patent remedies, implementing measures to reduce abusive patent litigation, and heightened legal scrutiny of disaggregation of patent portfolios. We conclude that trolls are a symptom of larger flaws in the patent system and that those who have focused on trolls have, in effect, been missing the forest for the trolls.
Traditional justifications for patents are based on direct or indirect contribution to product creation. Non-practicing entities (NPEs) might provide such innovation, either directly, through working ...the patent or transfer of technology to others who do, or indirectly, when others copy. Available evidence suggests, however, that ex post licensing demands from NPEs do not normally involve these activities. Some have argued that patents are valuable without01/technology transfer because the ability to exclude may drive commercialization that would not otherwise occur. We demonstrate that even if commercialization theories sometimes justify patent protection, they cannot justify most NPE lawsuits or licensing demands.
The antibody patent paradox Lemley, Mark A; Sherkow, Jacob S
The Yale law journal,
02/2023, Volume:
132, Issue:
4
Journal Article
Antibodies constitute a staggering $145 billion annual market - an amount projected to almost double by 2026. Consequently, patents covering antibodies are among the most valuable in the patent ...system. But antibody patents are being struck down left and right, victims of the Federal Circuit's recent shift to strengthen two doctrinal areas of patent law: enablement and the written description requirement. For each, the Federal Circuit has heightened requirements that patentees disclose or teach how to make and use the "full scope" of their inventions. There are good reasons to be skeptical of the Federal Circuit's attack on genus claims in chemistry generally. But it seems to be a particular problem for antibodies. Applying the Federal Circuit's reinvigorated written description and enablement requirements to antibodies and their chemical structure fits poorly with the science underlying the molecules themselves. Immune-receptor production, a semi-random and galactically expansive process, produces antibodies that are startlingly different in both structure and function. There is no way to describe genus claims to antibodies that satisfy the court's current tests. The science simply doesn't allow it. At the same time, this change in the Federal Circuit's jurisprudence is a legitimate reaction to some of the problems with the long-standing (and long-permitted) practice of claiming antibodies in functional terms. Functional claiming can lead to overbroad patents that stifle future innovation, as it has done in the software industry. Perhaps the Federal Circuit is wary of a similar result in biotechnology. Fortunately, we think there is a middle ground. A new (or, really, quite old) form of patent claim drafting would give inventors effective control over true substitutes without giving them the power to block real improvements: means-plus-function claims and infringement by the equivalents. Those doctrines limit patentees to claiming only the specific structural features of antibodies they both possessed and described, but also entitle them to assert their patents against antibodies with equivalent functions but different structural characteristics. If the economics of intellectual property center on balancing a need for protection beyond the literal invention with a desire to allow improvements, this seems a step in the right - or, at least in a doctrinally permissible and economically sensible-direction. Whether patentees go for such a solution remains to be seen. Recent empirical evidence on antibody claims has yet to document such a shift. Patent attorneys may need to get over their historical reluctance to writing their claims in such a fashion. Our solution won't give patentees everything they want. But they just might find it gives them what they need.
Standard-setting organizations ("SSOs") regularly encounter situations in which one or more companies claim to own proprietary rights that cover a proposed industry standard. The industry cannot ...adopt the standard without the permission of the intellectual property ("IP") owner (or owners). How SSOs respond to those who assert IP rights is critically important. Whether or not private companies retain IP rights in group standards will determine whether a standard is "open" or "closed." It will determine who can sell compliant products, and it may well influence whether the standard adopted in the market is one chosen by a group or one offered by a single company. SSO rules governing IP rights will also affect how standards change as technology improves. Given the importance of SSO rules governing IP rights, there has been surprisingly little treatment of SSO intellectual property rules in the legal literature. My aim in this article is to fill that void. To do so, I have studied the IP policies of dozens of SSOs, primarily but not exclusively in the computer networking and telecommunications industries. This is no accident; interface standards are much more prevalent in those industries than in other fields. In the end, I hope to convince the reader of four things. First, SSO rules governing IP fundamentally change the way in which we must approach the study of IP. It is not enough to consider IP rights in a vacuum; we must consider them as they are actually used in practice. And that means considering how SSO rules affect IP incentives in different industries. Second, there is a remarkable diversity among SSOs in how they treat IP rights. This diversity is largely accidental, and does not reflect conscious competition between different policies. Third, the law must accommodate the modern role of SSOs. Antitrust rules may unduly restrict SSOs even when those organizations are serving procompetitive ends. And enforcement of SSO IP rules presents a number of important but unresolved problems of contract and IP law, issues that will need to be resolved if SSO IP rules are to fulfill their promise of solving patent holdup problems. My fourth conclusion is an optimistic one. SSOs are a species of private ordering that may help solve one of the fundamental dilemmas of IP law: the fact that intellectual property rights seem to promote innovation in some industries but harm innovation in others. SSOs may serve to ameliorate the problems of overlapping IP rights in those industries in which IP is most problematic for innovation, particularly in the semiconductor, software, and telecommunications fields. The best thing the government can do is to enforce these private ordering agreements and avoid unduly restricting SSOs by overzealous antitrust scrutiny.
DISAPPEARING CONTENT Lemley, Mark A
Boston University law review,
09/2021, Volume:
101, Issue:
4
Journal Article
Peer reviewed
One of the great advantages of digital content has been that, for the last forty years, people have had access to whatever content they want, whenever they wanted it. That is starting to change. ...We're moving backwards. Content is disappearing-not just becoming available only in limited times or circumstances but becoming entirely unavailable. It doesn't need to be that way. It is now cheap and easy enough to make all content available. If the copyright owner can't or won't continue to provide a published work, others should be permitted to pick up the slack. Fair use should encompass a right of access to published content. That right, like all of fair use, ought to have limits and exceptions. I discuss a number of complications and reasons why copyright owners might lawfully remove content. But a basic right to continued access to published work is consistent with the fundamental purposes of copyright. In the past, we might have aspired to a world in which all the works of history were available forever. That's now an achievable goal. The dead hand control of copyright shouldn't stand in the way.
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