Patent disclosure

Iowa Law Review

Volumn 94, Issue 2, 2009, Pages 539-606

  Fromer, Jeanne C ^a  

^a Fordham Law School ^*

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EID: 64949147427     PISSN: 00210552     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (398)

1. Cf. Herbert A. Johnson, The Wright Patent Wars and Early American Aviation, 69 J. AIR L. & COM. 21, 23-38, 56-61 (2004) (discussing the patents obtained by the Wright Brothers on their "flying machine," the ensuing patent litigation, and the resulting patent pools).
2. See generally T.A. HEPPENHEIMER, FIRST FLIGHT: THE WRIGHT BROTHERS AND THE INVENTION OF THE AIRPLANE (2003).
3. See Letter from Sir Isaac Newton to Robert Hooke (Feb. 5, 1675) ("If I have seen further [than you and Descartes] it is by standing on the shoulders of Giants."), reprinted in ROBERT K. MERTON, ON THE SHOULDERS OF GIANTS: A SHANDEAN POSTSCRIPT, at ii (1965).
4. U.S. CONST, art. I, sect; 8, cl. 8.
5. For some recent examples, see J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124, 142 (2001) (noting that disclosure is important because it is the quid pro quo for the right to exclude);
6. Alan L. Durham, Patent Symmetry, 87 B.U. L. REV. 969, 983 (2007) (noting the role disclosure plays);
7. Jennifer E. Rothman, The Questionable Use of Custom in Intellectual Property, 93 VA. L. REV. 1899, 1966 (2007) (staring that property rights are granted in exchange for disclosure).
8. E.g., Alison E. Cantor, Using the Written Description and Enablement Requirements to Limit Biotechnology Patents, 14 HARV. J.L. & TECH. 267, 280-310 (2000) (discussing the enablement and written-description requirements of 35 U.S.C. sect; 112);
9. Matthew H. Solomson, Patently Confusing: The Federal Circuit's Inconsistent Treatment of Claim Scope as a Limit on the Best Mode Disclosure Requirement, 45 IDEA383, 384-423 (2005) (discussing section 112's best-mode requirement).
10. E.g., W. Michael Schuster, Comment, Subjective Intent in the Determination of Antitrust Violations by Patent Holders, 49 S. TEX. L. REV. 507, 517 (2007) ("Disclosures of new technology can serve as the basis for new innovation.").
11. E.g., Brenner v. Manson, 383 U.S. 519, 533-34 (1966) (explaining the purposes of disclosure and the pressure not to disclose);
12. Douglas Lichtman, How the Law Responds to Self- Help, 1J.L. ECON.&POL'Y215, 255 (2005) (noting that disclosure is "rarely revealing");
13. Peter K. Yu, The International Enclosure Movement, 82 IND. L.J. 827, 847 (2007) (suggesting that patent disclosures are frequently too cryptic).
14. See infra note 69 and accompanying text (discussing the resulting consensus on disclosure).
15. Timothy R. Holbrook, Possession in Patent Law, 59 SMU L. REV. 123, 133-35 (2006);
16. Note, The Disclosure Function of the Patent System (or Lack Thereof), 118 HARV. L. REV. 2007, 2014-17 (2005) [hereinafter Note, Disclosure Function];
17. cf. KatherineJ. Strandburg, What Does the Public Get''Experimental Use and the Patent Bargain, 2004 WIS. L. REV. 81, 105, 111, 119 (advocating that disclosure is irrelevant for self-disclosing inventions).
18. See sources cited supra note 9.
19. Infra text accompanying notes 220-21.
20. 35 U.S.C. sect;284 (2000).
21. See id. sect; 282 (including "invalidity of the patent for failure to comply with [a] requirement [of patentability]" as a defense to patent infringement).
22. Id. sect;sect; 101-103.
23. Id. sect; 131.
24. Id. sect; 154(a).
25. But cf. Edmund W. Kitch, The Nature and Function of the Patent System, 20 J.L. & ECON. 265, 285-86 (1977) (theorizing that patent rights lead to efficient control by the patentee through manufacturing and licensing).
26. In the late fifteenth century, the Republic of Venice implemented the first administrative patent system to reward inventors. BRUCE W. BUGBEE, GENESIS OF AMERICAN PATENT AND COPYRIGHT LAW 21 (1967).
27. Before granting a patent, the Venetian government required a successful demonstration of the invention before the patent administrators, id., necessitating some disclosure. More directly influential on the American patent system was the development of a patent system in Great Britain almost one century after the Venetian system. See generally ROBERT P. MERGES, PETER S. MENELL & MARK A. LEMLEY, INTELLECTUAL PROPERTY IN THE NEW TECHNOLOGICAL AGE 124-25 (2d ed. 2000).
28. In 1778, the British judiciary grafted onto their patent laws the additional requirement that patent applicants clearly and fully describe their inventions in a specification. Liardet v. Johnson, (1778) 481 N.B. 173 (K.B.). Nonetheless, before the creation of this judicial requirement, it was not unheard of for an inventor in Great Britain to disclose his invention in a patent application. BUGBEE, supra, at 42;
29. Adam Mossoff, Rethinking the Development of Patents: An Intellectual History, 1550-1800, 52 HASTINGS L.J. 1255, 1289-91 (2001).
30. The motivations for an inventor's voluntary disclosure were typically proof of inventorship, delineation of the invention's metes and bounds to prevent infringement, and preemption of a requirement of a working model. Mossoff, supra, at 1289-90. In Liardet, Judge Mansfield expressly noted as disclosure's purpose the public use of the information when the patent term expires. See E. Wyndham Hulme, On the History of the Patent Law in the Seventeenth and Eighteenth Centuries, 18 LAW Q. REV. 280, 285 (1902) (describing how the patent seeker "'must specify upon record [the] invention in such a way as shall teach an artist,'" at the expiration of the patent "'to make it-and to make it as well as [the inventor]; for then at the end of the term, the public have the benefit of it.'" (quoting Liardet v. Johnson, (1778) 481 N.B. 173 (K.B.))).
31. This requirement marks the accepted origin of the patent monopoly grant in exchange for disclosure of the invention. Mossoff, supra, at 1288. In fact, a study of nineteenth- century English innovation shows that industries that tended to patent (and thus disclose) had wider geographic diffusion of innovations than industries that used alternate protection mechanisms. Petra Moser, Do Patents Weaken the Localization of Innovations? Evidence from World's Fairs, 1851-1915, at 23-24 (Nat'l Bureau of Econ. Research, Working Paper No. 941571, 2008), available at http://papers.ssm.com/sol3/papers. cfmPabstract-ioV941571.
32. 35 U.S.C. § 122(b) (2000).
33. An applicant certifying that he will not seek patent protection in another country is one of the most prominent exceptions to the eighteen-month disclosure requirement. Id. § 122(b) (2) (B).
34. In any event, pre-grant publication underscores the primacy of the disclosure function to the patent system, as disclosure is mandated even for those applications that are never granted. As another example of how patent policy emphasizes disclosure's importance, an "invention" can be patented even if someone else has already invented it but has maintained it in secrecy. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1305 (Fed. Cir. 2006).
35. 35 U.S.C. § 112.
36. Id. §113.
37. Id. §112.
38. Guang Ming Whitley, Comment, A Patent Doctrine Without Bounds: The "Extended" Written Description Requirement, 71 U. CHI. L. REV. 617, 629 (2004).
39. Id.
40. 35 U.S.C. § 112. This, however, does not mean that a person skilled in the art must be enabled to make and use "a perfected, commercially viable embodiment absent a claim limitation to that effect." CFMT, Inc. v. Yieldup Int'l Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003).
41. Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1360 (Fed. Cir. 2007) (citing 35 U.S.C. § 112).
42. 35 U.S.C. § 112.
43. The best-mode requirement is met so long as the patent document objectively discloses the best mode that the inventor subjectively conceived by the time the inventor files the patent application. Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 963 (Fed. Cir. 2001).
44. The three statutory content requirements are understood to be independent of one another. For example, an invention can be described without it being enabled, such as when a patent contains a description of a chemical compound for which there is no known production method. U.S. PATENT & TRADEMARK OFFICE, U.S. DEP'T OF COMMERCE, MANUAL OF PATENT EXAMINING PROCEDURE § 2161 (8th ed., rev. 7 2008) [hereinafter MPEP].
45. 37 C.F.R. § 1.77 (2008);
46. MPEP, supra note 27, § 601(1).
47. HARRY KURSH, INSIDE THE U.S. PATENT OFFICE 114 (1959).
48. Significant criticism has been lobbed at the patent system regarding its failings in uncovering relevant prior art, resulting in issued patents for inventions that are obvious or not novel. See, e.g., Beth Simone Noveck, "Peer to Patent": Collective Intelligence, Open Review, and Patent Reform, 20 HARV. J.L. & tECH. 123,130-38 (2006) (arguing that the PTO search capabilities for prior art are inadequate because they do not allow examiners to find the prior art they need).
49. There have been different proposed solutions to this problem: a greater burden should be placed on the patent applicant to produce this prior art, Jay P. Kesan & Marc Banik, Patents as Incomplete Contracts: Aligning Incentives for R&D Investment with Incentives to Disclose Prior Art, 2 WASH. U. J.L. & POL"Y 23, 26-27 (2000);
50. PTO examiners should be better trained to locate relevant prior art, which should be made more easily available, AM. INTELL. PROP. LAW ASS'N, PATENTING BUSINESS METHODS l (2000), available at http://cyber.law.harvard.edu/ ilaw/BMP/aipla-white-paper.pdf; or the public should be allowed to participate in patent examination or attack issued patents on the basis of prior art, Noveck, supra, at 143-61.
51. See also Mark A. Lemley, Rational Ignorance at the Patent Office, 95 NW. U. L. REV. 1495, 1496-97 (2001) (rejecting some solutions as disproportionate to the problem when most issued patents are worthless and the novelty or nonobviousness of valuable patents can be challenged in litigation).
52. 37 C.F.R.§ 1.56(a).
53. Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 VA. L. REV, 1575, 1597- 99 (2003);
54. Donald F. Turner, The Patent System and Competitive Policy, 44 N.Y.U. L. REV. 450, 450- 51 (1969).
55. That said, not enough is known empirically about how patents promote innovation. Mark A. Lemley, Reconceiving Patents in the Age of Venture Capital, 4 J. SMALL & EMERGING BUS. L. 137, 139 (2000);
56. LiorJ. Strahilevitz, Wealth Without Markets?, 116 YALE L.J. 1472, 1483 (2007).
57. Other theories occasionally proffered to justify a patent system are grounded in notions of reward or moral rights. See, e.g., Lawrence C. Becker, Deserving To Own Intellectual Property, 68 CHI.- KENT L. REV. 609, 619-29 (1993) (exploring how desert-for-labor arguments are attractive explanations of patent theory but do not justify the scope of patents, for example, to preclude others who have independently invented a patented invention from using it).
58. U.S. CONST, art. I, § 8, cl. 8. For explications of this clause, see I. BERNARD COHEN, SCIENCE AND THE FOUNDING FATHERS 308 (1995) and Dotan Oliar, Making Sense of the Intellectual Property Clause, 94 GEO. L.J. 1771, 1772-77 (2006).
59. This is particularly true of industries in which the inventive process is typically long, expensive, and uncertain, such as the pharmaceutical and semiconductor industries. Burk&Lemley, supranote 31, at 1581-82.
60. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 481 (1974).
61. COMM. ON NEW TECH. & INNOVATION IN BLDG., NAT'L RESEARCH COUNCIL, THE ROLE OF PUBLIC AGENCIES IN FOSTERING NEW TECHNOLOGY AND INNOVATION IN BUILDING 70 (David R. Dibner & Andrew C. Lerner eds., 1992);
62. Jim Chen, There's No Such Thing as Biopiracy . . . and It's a Good Thing Too, 37 MCGEORGE L. REV. 1, 24 (2006).
63. Vincenzo Denicolò & Luigi Alberto Franzoni, The Contract Theory of Patents, 23 INT'L REV. L. & ECON. 365, 365-66 (2003). A comparative study of nineteentircentury innovation shows that countries with patent laws generated more diverse forms of invention than those without. See generally Petra Moser, How Do Patent Laws Influence Innovation? Evidence from Nineteenth-Century World's Fairs, 95 AM. ECON. REV. 1214 (2005).
64. Sudipto Bhattacharya & Jay R. Ritter, Innovation and Communication: Signalling with Partial Disclosure, 50 REV. ECON. STUD. 331, 332 (1983);
65. Denicolò & Franzoni, supra note 36, at 366;
66. Brett M. Frischmann & Mark A. Lemley, Spillovers, 107 COLUM. L. REV. 257, 268-69 (2007);
67. cf. Mossoff, supra note 18, at 1288 (viewing the patentee's eventual dedication of the invention to the public as a form of Lockean social contract).
68. Universal Oil Prods. Co. v. Globe Oil & Ref. Co., 322 U.S. 471, 484 (1944); Gill v. Wells, 89 U.S. 1, 25-26 (1874).
69. WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 295 (2003).
70. See DAVID A. HOUNSHELL &JOHN KENLY SMITH, JR., SCIENCE AND CORPORATE STRATEGY: DU PONT R&D, 1902-1980, at 249 (1988) (describing how the invention of nylon created the possibility of other synthetic polymers);
71. R. Polk Wagner, Information Wants To Be Free: Intellectual Property and the Mythologies of Control, 103 COLUM. L. REV. 995, 1034 (2003) (arguing that the availability of information is "crucial to the advancement of our culture and our economy").
72. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 481 (1974);
73. Oren Bar-Gill & Gideon Parchomovsky, The Value of Giving Away Secrets, 89 VA. L. REV. 1857, 1861 (2003);
74. Wesley M. Cohen & Richard C. Levin, Empirical Studies of Innovation and Market Structure, in 2 HANDBOOK OF INDUSTRIAL ORGANIZATION 1059, 1086-89 (R. Schmalensee & R.D. Willig eds., 1989);
75. Carolyn C. Cooper, Nineteenth-Century American Patent Management as an Invisible College of Technology, in LEARNING AND TECHNOLOGICAL CHANGE 40, 40 (Russ Thompson ed., 1993);
76. Maureen A. O'Rourke, Toward a Doctrine of Fair Use in Patent Law, 100 COLUM. L. REV. 1177,1183 (2000);
77. Suzanne Scotchmer & Jerry Green, Novelty and Disclosure in Patent Law, 21 RAND J. ECON. 131, 134-35 (1990).
78. Empirical evidence suggests that technologists "find it very valuable to know what technical problem a competitor is trying to solve, what technical approach has been adopted, or what approach has succeeded." Cohen & Levin, supra, at 1094 n.47. There is nonetheless a concern that the existence of numerous patents in an area can cause "patent thickets," wherein "[v]arious parties may be able to lay claim to the same technologies or to aspects of the same technology," Burk&Lemley, supra note 31, at 1614, which deters research due to the decreased probability of inventing that which is more than marginally better or different. Turner, supra note 31, at 455.
79. Cf. Rebecca S. Eisenberg, Proprietary Rights and the Norms of Science in Biotechnology Research, 97 YALE L.J. 177, 219 (1987) ("The requirement of early disclosure suggests that certain uses of patented inventions during the patent term do not constitute patent infringement.").
80. E.g., 6 THE WRITINGS OF THOMAS JEFFERSON 180 (H.A. Washington ed., Washington, D.C., Taylor & Maury 1854). Thomas Jefferson elaborates: He who receives an idea from me, receives instructions himself without lessening mine; as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature.
81. Id.
82. See U.S. Patent No. 7,011,317 (filed May 19, 2003) (Cart Wheel with Bearing Components).
83. See U.S. Patent No. 7,114,785 (filed Oct. 3, 2003) (Aerodynamic Surfaced Bicycle Wheel).
84. See U.S. Patent No. 6,047,965 (filed Oct. 21,1998) (Randomized Roulette Wheel).
85. Note, Disclosure Function, supra note 9, at 2010; accord Denicolò & Franzoni, supra note 36, at 367-68; cf. Holbrook, supra note 9, at 126 (highlighting that disclosure demonstrates the patent applicant's possession of the patented invention).
86. See JOEL MOKYR, THE LEVER OF RICHES: TECHNOLOGICAL CREATIVITY AND ECONOMIC PROGRESS 6-11, 186-90 (1990) (highlighting the historical importance of sharing information about inventions in driving technological and, thus, economic progress);
87. Paul M. Romer, Endogenous Technological Change, 98 J. POL. ECON. S71, S84-S85, S89 (1990) (examining how inventors use previous patents to improve on designs for similar inventions).
88. Cooper, supra note 41, at 40.
89. Romer, supra note 48, at S72.
90. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
91. R. Polk Wagner, Reconsidering Estoppel: Patent Administration and the Failure of Festo, 151 U. PA. L. REV. 159, 164-65 (2002).
92. See Clarisa Long, Patent Signals, 69 U. CHI. L. REV. 625, 636-37, 648 (2002) (noting that patent disclosures "can indicate what lines of research the firm is undertaking and what the firm considers] valuable, oudine a research trajectory that adumbrates fields the firm may be branching into next, [and] disclose how fast the firm is proceeding within a particular area of research"). Recent work highlights how some patent documents contain public advocacy, such as those for inventions regulating access to abortion, John R. Thomas, Liberty and Property in the Patent Law, 39 HOUS. L. REV. 569, 580-84 (2002), and describing tax shelters, Rachel Emma Silverman, The Patented Tax Shelter-Lawyers, Financial Advisers Are Getting Exclusive Rights to Estate-Planning Strategies, WALL ST. J., JUNE 24, 2004, at Dl. Cf. Timothy R. Holbrook, The Expressive Impact of Patents: An Emerging Political Geography of Intellectual Property in Biotechnology, 84 WASH. U. L. REV. 573, 575-81 (2006) (arguing that some patents convey negative messages about homosexuality);
93. Jonathan Kahn, Race-ing Patents/Patenting Race, 92 IOWA L. REV. 353, 355- 60 (2007) (contending that patents can send signals about race).
94. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) ("[C]ompetitors are entitled to review the public record, apply the established rules of claim construction, ascertain the scope of the patentee's claimed invention and, thus, design around the claimed invention.").
95. See Denicolo & Franzoni, supra note 36, at 367 (assuming innovation is the result of "serendipity").
96. ERIC VON HIPPEL, DEMOCRATIZING INNOVATION 70 (2005).
97. Examples include "reduced levels of competition" and "wasteful design-around efforts by competitors." Kesan & Banik, supra note 29, at 23-24.
98. ROBERT FRIEDEL, A CULTURE OF IMPROVEMENT: TECHNOLOGY AND THE WESTERN MILLENNIUM 3 (2007).
99. YOCHAI BENKLER, THE WEALTH OF NETWORKS: HOW SOCIAL PRODUCTION TRANSFORMS MARKETS AND FREEDOM 301-55 (2006);
100. see also Shubha Ghosh, The Merits of Ownership; Or, How I Learned To Stop Worrying and Love Intellectual Property: Review Essay of Lawrence Lessig, The Future of Ideas, and Siva Vaidhyanathan, Copyrights and Copywrongs, 15 HARV.J.L. & TECH. 453, 495 (2002) ("Patent law is an instrument for reaching certain distributive justice goals that balance the interests of creators, entrepreneurs, and users.");
101. Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 COLUM. L. REV. 839, 908 (1990) ("Such a structure does tend to generate rapid technical progress.");
102. Tim Wu, Intellectual Property, Innovation, and Decentralized Decisions, 92 VA. L. REV. 123, 141-42 (2006) ("Decentralized industry structures seem to have the strongest track record for inculcating innovation and economic growth.");
103. Paul M. Romer, The Concise Encyclopedia of Economics: Economic Growth, http://www.econlib.org/library/Enc/EconomicGrowth.html (last visited Feb. 20, 2009) ("[I]t is ideas, not objects, that poor countries lack.");
104. cf. B. ZORINA KHAN, THE DEMOCRATIZATION OF INVENTION: PATENTS AND COPYRIGHTS IN AMERICAN ECONOMIC DEVELOPMENT, 1790-1920, at 3 (2005) (suggesting that in early American thought on patent law, "[g]enius was redefined as the province of the many, not the rare gift of the few"). In fact, Zorina Khan argues that a carefully designed patent system made available to schoolteachers as much as machinists is what set the early United States apart from other countries offering patent protection at the time. See id. at 6-19, 28-65.
105. FREDERIC M. SCHERER, INDUSTRIAL MARKET STRUCTURE AND ECONOMIC PERFORMANCE 381 (1970). An inventor might rationally choose to forego a patent on his invention and instead keep the invention secret (either under the relevant trade secret regimes or as actual secrets).
106. David D. Friedman, William M. Landes & Richard A. Posner, Some Economics of Trade Secret Law, 5 J. ECON. PERSP. 61, 64 (1991).
107. David Friedman, William Landes, and Richard Posner reason: Inventors choose trade secret protection when they believe that patent protection is too costly relative to the value of their invention, or that it will give them a reward substantially less than the benefit of their invention (as reflected, in part, in the length of time before any else will invent it)., because the length (or other conditions) of patent protection is insufficient.
108. Id. Such an inventor would either not market the invention or market it without fully disclosing how the invention was made or its underlying theory. It is sometimes possible to keep a marketed product or process secret, convincing inventors not to disclose-and therefore not to patent-their invention. Burk & Lemley, supra note 31, at 1584; Note, Disclosure Function, supra note 9, at 2015-16. Though many products can be reverse-engineered, there are significant practical and legal barriers to reverse-engineering patented inventions that underscore the patent document's primacy in disclosing an invention. Infra text accompanying notes 85-99. An inventor's choice to patent an invention that is easily reverse-engineered requires him to divulge more information in the patent than the object itself does. It is therefore wrong to maintain that patentees should not be concerned when divulging inordinate amounts of information in the patent document for such inventions. See Note, Disclosure Function, supra note 9, at 2015 (asserting that this is not a concern).
109. Denicolò & Franzoni, supra note 36, at 367.
110. Rebecca S. Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56 U. CHI. L. REV. 1017,1028-30 (1989).
111. In fact, recent work has theorized that inventors are more likely to choose patent protection over secrecy for these reasons. Rajshree Agarwal & Michael Gort, First-Mover Advantage and the Speed of Competitive Entry, 1887-1986, 44J.L. & ECON. 161, 174 (2001).
112. Denicolò & Franzoni, supra note 36, at 367.
113. Cf. Brenner v. Manson, 383 U.S. 519, 534 (1966) (noting "the highly developed art of drafting patent claims so that they disclose as little useful information as possible"). There are exceptions, such as patentees wanting to secure capital in reliance on their patents. Long, supra note 53, at 637. But this does not mean they will reveal as much as the patent system requires or ought to require, only that they will reveal as much as is necessary to reach those goals, which do not necessarily coincide with those of patent law. Id. at 626. Most pointedly, there is every reason to think that disclosure of an invention's function-quite the minimal disclosure-is sufficient to attract attention from capital providers, who can then personally and confidentially inquire into the invention's operation more deeply.
114. There are other incentives not to disclose information, primarily that the more information disclosed, the greater the chance that the scope of the patent right will be constricted. Infra text accompanying notes 122-24;
115. see also infra Part III.A.2 (suggesting that marking the layers of patent documents could reduce the possibility of constricting the scope of the patent right).
116. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141,150-51 (1989); Merges & Nelson, supra note 59, at 844-45.
117. E.g., Mark A. Lemley, An Empirical Study of the Twenty-Year Patent Term, 22 AIPLA Q.J. 369, 422 (1994) (concluding that "overall, patentees will benefit from the new twenty-year term").
118. E.g., Denicolò & Franzoni, supra note 36, at 368 (finding that "early 'disclosure' through the patent specification is socially valuable");
119. Ronald E. Myrick, William P. Skladony & Ram Nath, The Technological Innovation Process: Patent Documentation as a Source of Technological Information, 9 SANTA CLARA COMPUTER & HIGH TECH. L.J. 355, 356 (1993) (recognizing the value of learning from others).
120. Strandburg, supra note 9, at 105, 111 (arguing further that these inventions came about because of the patent incentive). A recent student note makes a similar argument. Note, Disclosure Function, supra note 9, at 2014-17.
121. Strandburg, supra note 9, at 119.
122. Holbrook, supra note 9, at 133-35.
123. ESTEBAN BURRONE & GURIQBAL SINGH JAIYA, INTELLECTUAL PROPERTY (IP) RIGHTS AND INNOVATION IN SMALL AND MEDIUM-SIZED ENTERPRISES 3 (2004), available at http://www.wipo.int/sme/en/ documents/pdf/iprs-innovation.pdf ("It has been estimated that patent documents contain 70% of the world's accumulated technical knowledge and that most of the information contained in patent documents is either never published elsewhere or is first disclosed through the publication of the patent application.");
124. Long, supra note 53, at 647; Myrick, Skladony & Nath, supra note 69, at 360 & n.17; Fiona Murray & Scott Stern, Do Formal Intellectual Property Rights Hinder the Free Flow of Scientific Knowledge? 7 n.3 (Nat'l Bureau of Econ. Research, Working Paper No. 11465, 2005), available at http://www.nber.org/papers/wll465.
125. That said, some recent economic work demonstrates that inventors sometimes publish a scientific article and secure a patent on the same invention, typically in the academy when the subject matter both contributes to scientific knowledge and constitutes technological development. Fiona Murray, Innovation as Convolution of Scientific and Technological Networks: Exploring Tissue Engineering, 31 RES. POL'Y 1389, 1389-90 (2002);
126. Murray & Stern, supra, at 20. And recent theoretical work concludes that technologists might rationally change the state of the prior art by preemptively publishing their findings in non-patent research publications to prevent competitors from earning patents on the basis that their competitors' innovations are either not novel or are obvious. Gideon Parchomovsky, Publish or Perish, 98 MICH. L. REV. 926, 926-30 (2000);
127. cf. Douglas Lichtman, Scott Baker & Kate Kraus, Strategic Disclosure in the Patent System, 53 VAND. L. REV. 2175, 2179-89 (2000) (positing that leading innovators might choose to publish preemptively to drive competitors out of an innovation or patent race, but with the risk that they might preempt themselves from ultimately obtaining patent protection). Thus, patent applicants might preemptively publish and then file for a patent within one year of the date of publication under the applicable patent laws. Parchomovsky, supra, at 940-41, 950. If inventors are publishing their findings in this manner, there will be disclosure outside of the patent system. Nonetheless, there is reason to doubt that this form of strategic disclosure occurs often. For one thing, innovators employing strategic disclosure might harm themselves by giving their competitors information about an invention and how close they are to realizing the invention. Lichtman, Baker & Kraus, supra, at 2216. Moreover, the notion of strategic publication relies on questionable assumptions.
128. See Rebecca S. Eisenberg, The Promise and Perils of Strategic Publication To Create Prior Art, 98 MICH. L. REV. 2358, 2360-61 (2000) (emphasizing that current patent laws "prevent [] a lagging firm from defeating the patent claims of a leading firm by publishing interim research results that merely duplicate what the leading firm has already done," that "[publication of inadequate research results by a lagging rival might actually help the patent applicant to establish that the invention was nonobvious," and "often the publishing rival would be better off turning the same disclosure into a patent application of its own"). Internal critique aside, even if inventors are publishing preemptively, there is no reason to think they will relinquish any competitive advantage and disclose more information than they must to prevent a competitor from obtaining or retaining a patent. Preemptive publication, assuming the information therein is kept to the minimum necessary, should approach but not exceed the quantum and quality of disclosure necessary to secure a patent. Amgen Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293, 1306 (Fed. Cir. 2006);
129. Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005). Nonetheless, this Article argues that such typical patent disclosure is likely not to be sufficiently useful to other technologists to stimulate further innovation. The same would thus hold true of strategic disclosures.
130. Eisenberg, supra note 42, at 216-17. Moreover, an inventor will not want to invoke the statutory bar to patentability by publishing about an invention more than one year before the filing of a patent application for that invention. 35 U.S.C. § 102 (b) (2000).
131. Supra text accompanying notes 65-66.
132. See Bayh-Dole Act, Pub. L. No. 96-517, 94 Stat. 3015 (1980) (codified as amended at 35 U.S.C. §§ 200-212, 301-307) (allowing patents to be sought on federally funded research).
133. Margo A. Bagley, Academic Discourse and Proprietary Rights: Putting Patents in Their Proper Place, 47 B.C. L. REV. 217, 218-21 (2006). There is an intense drive within the scientific and engineering research communities to publish results, whether in patent documents or elsewhere. Robert Merton emphasizes the centrality of scientific publication-encompassing both professional recognition of scientists' original work and the ability for other scientists to test, learn about, and build upon such work-to the reward structure of the scientific community. See generally ROBERT K. MERTON, THE SOCIOLOGY OF SCIENCE (1973). On this reasoning, scientists have the incentive to publish their new discoveries or inventions prompdy. Patent law falls somewhat in line with this structure by requiring disclosure to be reviewable by other scientists and the PTO. Eisenberg, supra note 42, at 207-08. Yet it delays disclosure about the invention, because the patent document is published after some hold-up. Id. at 216-17.
134. Merges & Nelson, supra note 59, at 898-900 (attributing this norm to the cumulative nature of chemical-process innovation).
135. Joshua S. Gans & Scott Stern, Incumbency and R&D Incentives: Licensing the Gale of Creative Destruction, 9 J. ECON. & MCMT. STRATEGY 485, 485 (2000) (positing that firms consider licensing transactions as "a strategic substitute for in-house research");
136. Robert P. Merges, Commercial Success and Patent Standards: Economic Perspectives on Innovation, 76 C AL. L. REV. 803, 868-69 (1988).
137. ALAN HYDE, WORKING IN SILICON VALLEY: ECONOMIC AND LEGAL ANALYSIS OF A HIGH- VELOCITY LABOR MARKET 27-90 (2003);
138. Ronald J. Gilson, The Legal Infrastructure of High Technology Industrial Districts: Silicon Valley, Route 128, and Covenants Not To Compete, 74 N.Y.U. L. REV. 575, 585-86, 593 (1999).
139. See ADAM B. JAFFE & JOSH LERNER, INNOVATION AND ITS DISCONTENTS: HOW OUR BROKEN PATENT SYSTEM IS ENDANGERING INNOVATION AND PROGRESS, AND WHAT TO DO ABOUT IT 60-64 (2004) (discussing this trend with regard to cross-licensing generally).
140. See ALFONSO GAMBARDELLA, SCIENCE AND INNOVATION: THE US PHARMACEUTICAL INDUSTRY DURING THE 1980s, at 47 (1995) ("[A]cademic scientists will be more inclined to exchange ideas with people that they deem to be part of the same 'club.'" (citation omitted));
141. ERIC VON HIPPEL, THE SOURCES OF INNOVATION 6, 76-91 (1988) (discussing the common phenomenon of informal sharing of technological know-how information among economic rivals).
142. See supra note 59 (suggesting that the American patent system,
143. Infra text accompanying notes 268-70.
144. Holbrook, supra note 9, at 133-35;
145. Strandburg, supra note 9, at 105, 111;
146. accord Carmen Matutes, Pierre Regibeau & Katharine Rockett, Optimal Patent Design and the Diffusion of Innovations, 27 RAND J. ECON. 60, 63 (1996) (listing reverse engineering and patent disclosure as equivalent ways to learn about an invention);
147. Note, Disclosure Function, supra note 9, at 2015 (suggesting that reverse-engineering can frequently serve as a cheaper substitute to patent disclosure for information acquisition).
148. In the abstract, it would seem to be a much easier decision for an inventor to patent, rather than conceal, an invention, which when distributed, will not be easily reproduced or understood via reverse-engineering. Lee Kovarsky, A Technological Theory of the Arms Race, 81 IND. L.J. 917, 960 (2006);
149. Note, Disclosure Function, supra note 9, at 2015.
150. Kurt M. Saunders, Patent Nonuse and the Role of Public Interest as a Deterrent to Technology Suppression, 15 HARV. J.L. & TECH. 389, 391 (2002). This nonuse in no way means that information about such inventions is not valuable. Infra text accompanying notes 237-41. There are various reasons why a patentee would choose to suppress an informationally valuable patent, such as when a patent is obtained defensively "whereby competing firms use patents as bargaining chips to negotiate with competitors and to secure certain niches in the marketplace," Gideon Parchomovsky & R. Polk Wagner, Patent Portfolios, 154 U. PA. L. REV. 1, 26-27 (2005);
151. accord Saunders, supra, at 392-96 (describing examples of firms suppressing their patents for inventions as varied as synthetic caviar, photocopier technology, and less carcinogenic cigarettes, to deter competitors from advancing in the relevant technological field and to prevent cannibalizing their own profits), or the patent lacks commercial value, Saunders, supra, at 391.
152. Note, Disclosure Function, supra note 9, at 2016.
153. See Robert P. Merges, Commercial Success and Patent Standards: Economic Perspectives on Innovation, 76 CAL. L. REV. 803, 805-06 (1988) (criticizing the Federal Circuit rule that considers an invention's commercial success as supportive of its nonobviousness because success is often attributable to other factors, such as marketing).
154. JAMES POOLEY, TRADE SECRETS § 5.02[5] (1997). Relatedly, reverse-engineering inherendy may be prohibitively expensive. Note, Disclosure Function, supra note 9, at 2017.
155. Robert A. Migliorini, The Narrowed Experimental Use Exception to Patent Infringement and Its Application toPatented Computer Software, 88 J. PAT. & TRADEMARK OFF. SOC'Y 523, 537 (2006).
156. 35 U.S.C. § 154(a)(1) (2000).
157. Madey v. Duke Univ., 307 F.3d 1351, 1361-62 (Fed. Cir. 2002) (quoting Embrex, Inc. v. Serv. Eng'g Corp., 216 F.3d 1343, 1353 (Fed. Cir. 2000)). See generally Ted Hagelin, The Experimental Use Exemption to Patent Infringement: Information on Ice, Competition on Hold, 58 FLA. L. REV. 483, 489-504 (2006) (describing the exception's evolution). Many criticize the limited scope of the exception for retarding innovation. Rochelle Dreyfuss, Protecting the Public Domain of Science: Has the Time for an Experimental Use Defense Arrived?, 46 ARIZ. L. REV. 457, 457-61 (2004);
158. Hagelin, supra, at 503;
159. Strandburg, supra note 9, at 102. There is a disconnect in patent doctrine between physical and informational uses of a patented invention. The former is allowed in the most limited forms, if at all, but the latter can be used without restraint. Judge Pauline Newman has criticized this gulf: in her view, the narrow experimental-use exception is inconsistent with the patent policy of providing useful technological information, as the patent disclosure is thus practically unusable until the end of the patent term. Integra Lifesciences I, Ltd. v. Merck KGaA, 331 F.3d 860, 873-76 (Fed. Cir. 2003) (Newman, J., concurring in part and dissenting in part), vacated on other grounds, 545 U.S. 193 (2005);
160. cf. Hagelin, supra, at 513-15 (elaborating on Judge Newman's point). Reasonable minds might disagree whether this formalistic distinction between the physical and informational reflects the fine line patent law must straddle between promoting further innovation and giving teeth to the patent right. Without diminishing the need-especially in certain fields-for physical use of a patented invention, those who would broaden the experimental-use exception might be appeased in part by more useful information disclosures empowering technologists to experiment with informational approximations of a patented invention.
161. Quanta Computers, Inc. v. LG Elecs., Inc., 128 S. Ct. 2109, 2115 (2008).
162. Id. at 2115-16; cf. Daniel Laster, The Secret Is Out: Patent Law Preempts Mass Market License Terms Barring Reverse Engineering for Interoperability Purposes, 58 BAYLOR L. REV. 621, 624-25 (2006) (suggesting that state contract law cannot be invoked to prevent reverse-engineering of unpatented software because patent law, and the bargain it contains, preempts it).
163. Julie E. Cohen & Mark A. Lemley, Patent Scope and Innovation in the Software Industry, 89 CAL. L. REV. 1, 33-35 (2001). Of course, such restrictions must comply with antitrust laws and the doctrine of patent misuse. Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700, 708 (Fed. Cir. 1992). But because a restriction on reverse-engineering does not expand the scope of the patent, it is thought to be legal. Pamela Samuelson & Suzanne Scotchmer, The Law and Economics of Reverse Engineering, 111 YALE L.J. 1575, 1584 n.39 (2002). But cf. id. at 1626-30 (noting that such restrictions are dubitable as to mass-market licenses, typically for computer software). There have been hardly any cases challenging the legality of reverse-engineering restrictions. Thomas F. Cotter, The Procompetitive Interest in Intellectual Property Law, 48 WM. & MARYL. REV. 483, 541 n.225 (2006).
164. Mark I. Koffsky, Note, Patent Preemption of Computer Software Contracts Restricting Reverse Engineering: The Last Stand?, 95 COLUM. L. REV. 1160, 1166 (1995). But see Lichtman, supra note 7, at 255 ("Where an inventor is interested in profiting from his invention, a patent removes the worry that the idea will be stolen and thus frees the inventor to scream his idea from the mountaintops.").
165. Cohen & Lemley, supra note 96, at 17-21; Samuelson & Scotchmer, supra note 96, at 1611 &n.l74.
166. This analysis would seem to sit in some tension with the accepted notion that inventors will not patent their creations when they cannot easily be reverse-engineered for the asserted reason that one would not disclose an invention that can be kept secret for an indefinite period past the patent term. Note, Disclosure Function, supra note 9, at 2016. These points are reconcilable because even when there are no theoretical or practical difficulties to reverse- engineer an invention, the legal constraints on reverse-engineering are put in place by the patent system. Without the patent system, there would not be legal protection from reverse- engineering.
167. Accord Doug Lichtman, Substitutes for the Doctrine of Equivalents, 93 GEO. L.J. 2013, 2022- 23 (2005) (stating that researchers do not read patents because they do not want to be accused of willful or contributory infringement).
168. By contrast, there is evidence that inventors rely on other technical literature to learn about developments in their field and as a basis for further innovation. Anthony F. Breitzman, An Objective Analysis of the Effect of IEEE Publications on Subsequent Patented Technology, CHI RESEARCH, July 29, 2003, http://www.ieee.org/portal/cms-docs/products/citations/Report. pdf; Wesley M. Cohen et al., R&D Spillovers, Patents and the Incentive to Innovate in Japan and the United States, 31 RES. POL'Y 1349, 1362-64 (2002).
169. Burrone & Singh Jaiya, supra note 73, at 9-10;
170. Kitch, supra note 17, at 287 (describing the patent document as a "balky mechanism" for disclosure);
171. Fed. Trade COMM'N, DEP'T of Justice Antitrust Div., Roundtable: Competition, Economic, and Business Perspectives on Substantive Patent Law Issues: Non-Obviousness and Other Patentability Criteria, 79-80 (2002) (comments of Robert Barr) (transcript available at http://www.ftc.gov/opp/intellect/021030trans.pdf).
172. This evidence, while suggestive of poor disclosure, does not definitively pinpoint it as the reason for the disinclination to read patents. Nonetheless, the qualitative evidence and intuition suggest that improved disclosure ought to lead to a non-negligible increase in inventors' reliance on patents to inform their research.
173. IAIN M. COCKBURN & REBECCA HENDERSON, SURVEY RESULTS FROM THE 2003 INTELLECTUAL PROPERTY OWNERS ASSOCIATION SURVEY ON STRATEGIC MANAGEMENT OF INTELLECTUAL PROPERTY (2003), available at http://www.ipo.org/AM/Template.cfm?Section= Home&Template=/CM/ ContentDisplay.cfrn&ContentFileID=55152. This statistic likely overstates how many actually conduct patent searches to inspire their research in the first place, as the survey question lumps together research with the later stages of development, which are more likely to involve patent searches. It also probably overstates how many normally conduct patent searches by addressing only how many always do them.
174. Adam B. Jaffe, Manuel Trajtenberg & Michael S. Fogarty, The Meaning of Patent Citations, in ADAM B. JAFFE& MANUEL TRAJTENBERG, PATENTS, CITATIONS, AND INNOVATIONS: A WINDOW ON THE KNOWLEDGE ECONOMY 379, 390 & fig.5 (2002) [hereinafter Meaning of Patent Citations] (reporting that, in a survey of just under 400 inventors with patents, about 38% of the inventors learned about the invention described in certain patent citations before or during the development of their patented inventions). In fact, many of a patent's citations to other patents are included not by the inventor but by the inventor's patent lawyers or by the PTO examiner during patent prosecution (examination by the PTO of the patent application to determine patentability).
175. Id. at 390;
176. Ricardo J. Caballero & Adam B. Jaffe, How High Are the Giants' Shoulders: An Empirical Assessment of Knowledge Spillovers and Creative Destruction in a Model of Economic Growth, in PATENTS, CITATIONS, AND INNOVATIONS, supra, at 89, 106 & n.22;
177. Adam B. Jaffe, Michael S. Fogarty & Bruce A. Banks, Evidence from Patents and Patent Citations on the Impact of NASA and Other Federal Labs on Commercial Innovation, in PATENTS, CITATIONS, AND INNOVATIONS, supra, at 261, 278. That said, if an inventor learns about a patent post-invention, he will have retained the knowledge gleaned therefrom in advance of and possibly in inspiration of his next inventions.
178. Meaning of Patent Citations, supra note 105, at 389. When asked how related a patent citation was to their patented invention, inventors ranked a near-majority of the citations as barely related. See id. at 385 ("44% of the citations did not rank above 2 [out of 5] on either relatedness dimension. At the other extreme, only 14% of the citations were rated at 4 or greater on either relatedness dimension.").
179. Wolfgang Glanzel&Martin Meyer, Patents Cited in the Scientific Literature: An Exploratory Study of 'Reverse' Citation Relations, 58 SCIENTOMETRICS 415, 415-22 (2003) (analyzing all citations to utility patents issued between 1980 and 2000 in publications between 1996 and 2000 in the Institution for Scientific Information's Science Citation Index). The citation data might, however, understate the links between the technological world of patents and the scientific world. See Murray, supra note 73, at 1395-96 (noting links between the two in the forms of "consulting, Scientific Advisory Board membership, licensing, sponsored research and firm founding").
180. Meaning of Patent Citations, supra note 105, at 387-89, 388 fig.3;
181. cf. Cohen et al., supra note 101, at 1362-64 (describing similar results for the American respondents in a comparative study of the Japanese and American patent systems, though the Japanese respondents ranked patent literature to be the most important source of information for research and development). Though technical literature was not a significant influence on the surveyed inventors, the study found it was approximately two-and-a-half times more significant than patent literature. Meaning of Patent Citations, supra note 105, at 388 fig.3.
182. See, e.g., Matutes, Regibeau&Rockett, supra note 85, at 63 ("We assume that imitation [of a patented invention] can occur with no lag [because] the . . . knowledge can be inferred from the patent file.").
183. Accord James Bessen, Patents and the Diffusion of Technical Information, 86 ECON. LETTERS 121, 122 (2005);
184. Ashish Arora, Marco Ceccagnoli&Wesley M. Cohen, R&D and the Patent Premium 17 (Nat'l Bureau of Econ. Research, Working Paper No. 9431, 2003), available at 〈http://www.nber.org/papers/w9431〉 (finding that patent disclosures appear to have no measurable impact on information flows). The evidence presented in this Section is for the most part consistent with the alternative hypothesis that a small number of individuals are reading patent documents and elsewhere disseminating to a wider audience the information contained therein, thereby keeping the patent relevant. The closest this maps onto reality, however, is with regard to a handful of companies marketing patent databases that rewrite some of the information in the patent document to make it more accessible. Infra note 111. However, this rewriting happens without the inventors' input, making its reliability suspect because the patent document is often difficult to comprehend accurately. Infra Part III.A.
185. The ensuing discussion is principally agnostic with regard to whether the government should restructure itself or allow the private sector to do so. Because the patentee tends to possess the relevant information in a way that others do not, the government might prefer to exercise direct control over the patentee to regulate disclosure. At the same time, the private sector, with its eye more carefully on the market, has begun to recognize-more insightfully than the government-informational deficiencies in the patent document and library and has attempted to repair them, notwithstanding lack of input from the secretive patentee. See Delphion, Delphion Citation Link Analytical Tool for Patent Research, http://www.delphion. com/products/research/products-citelink (last visited Sept. 30, 2008) (visualizing patent networks connected by their citations to one another);
186. Thomson Delphion, Text Clustering Linguistic Analysis for Patent Data, http://www.delphion.com/products/research/products- cluster (last visited Sept. 30, 2008) (creating links between patents based on user-specified textual similarities);
187. Thomson Reuters, Derwent World Patents Index, http://scientific. thomson.com/media/gmscorppdfs/dwpi.pdf (last visited Sept. 30, 2008) (classifying patents, standardizing their presentation of certain information, and rewriting titles and abstracts for clarity). The allocation of responsibilities between the government and the private sector is beyond the scope of this discussion.
188. Relatedly, the discussion also does not solidify which governmental branch is best equipped to structure informational rules for the patent document and library. Congress and the PTO are better placed than courts to consider broadly the disclosure needs of different industries, while courts-participating in case-by-case adjudication-will generally be better at divining the shape of ideal disclosure in any particular case. See Jeffrey J. Rachlinski, Bottom-Up Versus Top-Down Lawmaking, 73 U. CHI. L. REV. 933, 933-37 (2006) (positing such differences between legislative and judicial bodies). And the PTO, with its technically trained staff, would seem to be better placed than Congress and the courts to appreciate the type of information needed for useful disclosure.
189. The same can be true of legal rules. See Meir Dan-Cohen, Decision Rules and Conduct Rules: On Acoustic Separation in Criminal Law, 97 HARV. L. REV. 625, 630-34 (1984) (suggesting that, in criminal law, conduct rules are transmitted to the general public and rules to make decisions about individuals' conduct are channeled to officials applying conduct rules).
190. For another thing, the text of a scholarly legal article might be directed at legal academics generally, while the footnotes might contain supplemental information for those working in the specific field of the writing. See generally JM. Balkin, The Footnote, 83 NW. U. L. REV. 275 (1988- 1989) (deconstructing the legal footnote).
191. The notion of a "layered" document is borrowed from research on digital libraries in the field of computer science: an electronic document can be composed of various layers with related content (each with its own associated behaviors), such as the "align[ment of] a video clip with [its] script and language translations so that. . . the playing video can be presented simultaneously in multiple languages [and] the video can be searched with text-based techniques." Thomas A. Phelps&Robert Wilensky, Multivalent Documents: Inducing Structure and Behaviors in Online Digital Documents, in PROCEEDINGS OF THE 29TH ANNUAL HAWAII INTERNATIONAL CONFERENCE ON SYSTEMS SCIENCE 144 (1996), available at 〈http://ieeexplore.ieee. org/iel2/3511/10449/00495332.pdf; cf. Lawrence Lessig, Creative Economies, 2006 MICH. ST. L. REV. 33, 40 (describing a Creative Commons license as having three layers: an education layer to convey the license to the public, a lawyer-readable layer written in "legalese," and a machine-readable layer for search engines).
192. Henry E. Smith, The Language of Property: Form, Context, and Audience, 55 STAN. L. REV. 1105,1108 (2003).
193. Id. In the context of intellectual-property theory, Clarisa Long sees three categories of audiences: infringement avoiders, "who merely wish to avoid infringing the property owners' rights and have litde interest in comprehending the good beyond those boundaries"; transactors, "who wish to transact with owners of goods, either to consume the good or to enter into some other contractual negotiation [s]"; and builders, "who, in addition to fulfilling their legal duties of avoidance, do wish to comprehend the good in greater detail because they are interested in building on it or inventing around it." Clarisa Long, Information Costs in Patent and Copyright, 90 VA. L. REV. 465, 491-92 (2004) (emphasis omitted). After establishing these categories, Long observes that the different legal observers will invest varying amounts of energy into understanding the information contained in a patent document based on their respective varying concerns with regard to infringing the relevant patent.
194. Id. at 481-82, 492-94.
195. Though not expressed as such, Long's categories are a variant on my distinction between the legal and technical; her work focuses instead on avoiders requiring less information than builders rather than on the need for separate layers on the basis that avoiders (and the governmental and legal actors engaging with avoiders) and builders need different information.
196. That these layers have different audiences is occasionally hinted at in other contexts, but it is not explicitly stated. See, e.g., STACY V. JONES, THE PATENT OFFICE 150 (1971) (noting in the course of describing how the patent document is publicly available that "[t]he Patent Office has several publics: the lawyers and inventors with whom it does business directly, the corporation executives and technologists who use it as a research center, and the vast general citizenry").
197. There is also an economic (meta-) layer to the patent document in the sense that a good deal of information that is or could be in the document is useful for studying the operation and efficacy of the patent system. Useful information of this sort includes: the ability to match patents to their firms, as the firm assigned the patent often changes over time (to study patenting behavior of firms); whether a citation to the prior art was included by the patent applicant or by the examiner, and if included by the applicant, whether the citation came to light during research and development or during investigation into the patentability of the invention (to study spillovers of knowledge); and fields of future research, a norm in many sciences (to study knowledge spillovers or for the legal purpose of assessing obviousness of future inventions).
198. For example, there has been a heavy focus on drafting and construing patent claims. See generally ROBERT C. FABER, LANDIS ON MECHANICS OF PATENT CLAIM DRAFTING (5th ed. 2003) (discussing claim drafting);
199. Christopher A. Cotropia, Patent Claim Interpretation and Information Costs, 9 LEWIS & CLARK L. REV. 57 (2005) (discussing the information costs associated with the difficulty in identifying inventions);
200. Joseph Scott Miller, Enhancing Patent Disclosure for Faithful Claim Construction, 9 LEWIS & CLARK L. REV. 177 (2005) (arguing that the PTO can improve claim construction by enhancing disclosure);
201. Lee Petherbridge, Positive Examination, 46 IDEA 173 (2006) (arguing that the patent examiner should articulate what property rights the applicant has in the patent);
202. cf. SMALL & MEDIUM-SIZED ENTER. DIV. OF THE WORLD INTELLECTUAL PROP. ORG., RESEARCH AND INNOVATION ISSUES IN UNIVERSITY-INDUSTRY RELATIONS 6 (2002), available at http://www.wipo.int/sme/en/documents/pdf/fp6.pdf C'[T]he patent jargon' in which patent applications are written differs significandy from the language of technical journals.");
203. F. Scott Kieff, The Case for Registering Patents and the Law and Economics of Present Patent-Obtaining Rules, 45 B.C. L. REV. 55, 112 (2003) ("Th[e] approach to [patent] claiming and drafting . is the job of a good patent lawyer and one reason why patents are legal documents drafted by lawyers for interpretation by judges and lawyers, not technical documents evaluated by peer review."). Another example of scholarly focus on the legal layer of the patent document has been with regard to disclosure of prior art by the patent applicant to assess an invention's novelty and nonobviousness. E.g., Kesan & Banik, supra note 29, at 36.
204. Judge Rich helped draft the 1952 Patent Act, the first codification of the federal patent laws, which is still substantially intact, and served as a judge on the Court of Customs and Patent Appeals and later on the U.S. Court of Appeals for the Federal Circuit. John F. Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 SUP. CT. REV. 273, 296 n.82.
205. Giles S. Rich, Foreword to DONALD S. CHISUM, CRAIG A. NARD, HERBERT F. SCHWARTZ, PAULINE NEWMAN & F. SCOTT KIEFF, PRINCIPLES OF PATENT LAW, at iii, v-vi (2d ed. 2001).
206. Merges & Nelson, supra note 59, at 844-45.
207. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
208. NAT'L RESEARCH COUNCIL OF THE NAT'L ACADS., A PATENT SYSTEM FOR THE 21ST CENTURY 63 (Stephen A. Merrill et al. eds., 2004), available at http://books.nap.edu/htmI/ patentsystem/39-80.pdf; cf. Michael Risen, The Failure of Public Notice in Patent Prosecution, 21 HARV. J.L. & TECH. 179, 224-25 (2007) ("Improving a patent's specification is an important way to clarify the patent's claims.").
209. See Timothy R. Holbrook, Substantive Versus Process-Based Formalism in Claim Construction, 9 LEWIS & CLARK L. REV. 123, 139-44 (2005) (describing the far-reaching application of the dedication rule).
210. Cf. Elliot Soloway, Beth Adelson & Kate Ehrich, Knowledge and Processes in the Comprehension of Computer Programs, in THE NATURE OF EXPERTISE 129, 137-43 (Michelene T.H. Chi, Robert Glaser & M.J. Farr eds., 1988) (observing that the comprehension of computer source code by advanced computer programmers is reduced to that of beginners when they are presented with source code that violates the discourse rules of programming). Joseph Miller highlights the flipside of this concern: that the technical complexity of patents is getting in the way of understanding the legal aspects of the patent document, principally "predictable patent claim boundaries." Miller, supranote 118, at 180.
211. Risch, supra note 123, at 227.
212. In re Dossel, 115 F.3d 942, 946 (Fed. Cir. 1997); cf. Sean B. Seymore, Heightened Enablement in the Unpredictable Arts, 56 UCLA L. REV. 127, 130-31 (2008) (asserting that an absence of "supporting data or examples" for inventions in certain unpredictable fields like chemistry make it hard for those in the field to comprehend these inventions' full implications).
213. E.g., Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996) (discussing the rights of investors to secure their invention with patents); Jeanne C. Fromer, Claiming Intellectual Property, 76 U. CHI. L. REV. (forthcoming 2009), available at http://papers.ssrn.com/sol3/ papers.cfm?abstract-id=1273449.
214. One can get around such difficulties by prioritizing the different modes, wherein a more highly prioritized mode will be used for interpretive purposes before a lower one. Note, Looking to Statutory Intertext: Toward the Use of the Rabbinic Biblical Interpretive Stance in American Statutory Interpretation, 115 HARV. L. REV. 1456, 1479 n.164 (2002);
215. see In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) ("[D]ictionary definitions must give way to the meaning imparted by the specification.").
216. To the extent that the technical layer is not fully separated from the legal layer, a rethinking of patent-interpretation rules would have to accompany any discussion of redesigning the patent document because of the link between document structure and interpretation. Such exploration, while important, is beyond this work's scope.
217. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
218. See Consol. Elec. Light Co. v. McKeesport Light Co., 159 U.S. 465, 472-77 (1895) (applying this principle in the context of the light bulb).
219. See Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1360 (Fed. Cir. 2007) ("[T]o be enabling, the specification of the patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.").
220. 35 U.S.C. § 112 (2000).
221. Id.
222. E.g., Long, supra note 115, at 499 ("Observers who read patent documents carefully can often discover .what the patentee thinks of the competition or competing products.");
223. Myrick, Skladony & Nath, supra note 69, at 356 (discussing how patent documents are a good source of technical information on a given "technological art");
224. Smith, supra note 114, at 1174 (discussing how invention users can process the information disclosed in patent documents). But cf. Holbrook, supra note 9, at 131-46 (elaborating some legal reasons why the patent document does not serve the disclosure function).
225. Cf. Note, Disclosure Function, supra note 9, at 2024-25 (alluding to disclosure's inadequacy in the sense that one needs more information than the patent document currently contains to practice the patented invention).
226. E.g., Micheline T.H. Chi, Paul Feltovich & Robert Glaser, Categorization and Representation of Physics Problems by Experts and Novices, 5 COGNITIVE SCI. 121, 122 (1981) (discussing differences in novice-expert understanding of problems based on how the problems are represented);
227. Richard J. Koubek&Timothy P. Clarkston, The Training of Knowledge Structures for Manufacturing Tasks, 37 ERGONOMICS 765, 778 (1994).
228. Helen M. Berman&Rochelle C. Dreyfuss, Reflections on the Science and Law of Structural Biology, Genomics, and Drug Development, 53 UCLA L. REV. 871, 898 (2006).
229. Sec Long, supra note 115, at 499 (describing the requirements of a patent application).
230. Some of the useful information that can appear in the patent document-such as experimental results and the patentee's views on competing products, id. at 499&n.70-is not specifically mandated (at least across the board) and appears idiosyncratically.
231. At the same time, it is useful to develop an external measure of whether disclosure is useful. This measure can come from psychology (by studying how experts understand the disclosure) or empirical work (by studying different technology industries to ascertain the information they need to innovate).
232. See supra text accompanying notes 114-15 (emphasizing the importance of audience design in constructing legal documents).
233. Smith, supra note 114, at 1111, 1122.
234. Id. at 1107-08. Nevertheless, the information contained in a patent document cannot be idiosyncratic because the information is being broadcast to a group of experts without a necessary relationship amongst one another, however small the group's size. Compare these circumstances to the situation of two contracting parties with an ongoing relationship, in which it makes some sense to defer to their possibly idiosyncratic contractual commitments because they worked them out together. Id. at 1108.
235. Cf. Steven L. Schwarcz, Rethinking the Disclosure Paradigm in a World of Complexity, 2004 U. ILL. L. REV. 1, 5-6 (arguing that the complexity of some structured transactions means that information provided under current securities disclosure rules either oversimplifies the transactions or provides so much detail that most experts are overwhelmed).
236. See generally CLAUDE E. SHANNON & WARREN WEAVER, THE MATHEMATICAL THEORY OF COMMUNICATION (1963) (originating the mathematical study of information by focusing on the redundancy and entropy of information).
237. Smith supra note 114, at 1161.
238. Martin Shapiro, Toward a Theory of Stare Decisis, 1 J. LEGAL STUD. 125, 127-34 (1972).
239. Bruce K. Bromage&Richard E. Mayer, Quantitative and Qualitative Effects of Repetition on Leamingfrom Technical Text, 78J. EDUC PSYCHOL. 271, 276-77 (1986).
240. Intuitively, repetition is needed less for experts than for novices, but this is less true for more complex technical topics, and depends on whether repetition occurs through literal repetition or through subtle redundancies. Id. at 277. Because the technical information in patent documents is often complex, carefully designed repetition should be useful to experts looking to understand the described invention.
241. See Miller, supra note 118, at 180-82 (comparing three patent documents issued in 1904, 1954, and 2004, respectively, and concluding that they look structurally similar with claims and drawings). One historical analysis suggests that, though the patent system is currently seen-at least in its ideal form-as a public benefit of stimulating invention and disclosure, "the idea that the patent system was intended primarily for the benefit of inventors as opposed to that of the general public remained in place well into the nineteenth century." Edward C. Walterscheid, Patents and Manufacturing in the Early Republic, 80 J. PAT. & TRADEMARK OFF. SOC'Y 855, 856 (1998). This stance might explain why there was little early emphasis on the structure of the patent document. Furthermore, inventions early in the history of the American patent system tended to be available commercially and also to be simple and mechanical in nature, meaning they were frequently self-disclosing, Cooper, supra note 41, at 40, suggesting that patent disclosures were less important historically than today. And the relatively new enterprise of thinking about the effects of legal rules on the flows of information-whether between members of the public or between the public and the government-might explain why the subject has remained dormant.
242. Yuichiro Anzai, Learning and Use of Representations for Physics Expertise, in TOWARD A GENERAL THEORY OF EXPERTISE: PROSPECTS AND LIMITS 64, 87 (K Anders Ericsson & Jacqui Smith eds., 1991); Richard E. Mayer, Illustrations That Instruct, in 4 ADVANCES IN INSTRUCTIONAL OSYCHOLOGY 253, 263-67 (Robert Glaser ed., 1993).
243. Patent Act of July 4, 1836, ch. 357, §§ 6, 20, 5 Stat. 117, 119, 125 (repealed 1870). See generally Kendall J. Dood, Patent Models and the Patent Law: 1790-1880 (Part I), 65 J. PAT. & TRADEMARK OFF. SOC'Y 187 (1983) [hereinafter Dood, Patent Models I\ (discussing the use of models in early American patent law);
244. Kendall J. Dood, Patent Models and the Patent Law: 1790- 1880 (Part II--Conclusion), 65 J. PAT. & tRADEMARK OFF. SOCY234 (1983) (same). Nonetheless, it had been tradition since the earliest federal patent laws to submit a model. Dood, Patent Models I, supra, at 190-208.
245. In 1925, Congress decided to sell the previously required models. KURSH, supra note 29, at 28;
246. Donald w. Hogan, Unwanted Treasures of the Patent Office, 9 AM. HERITAGE 16, 16-19 (1958), available at http://www.americanheritage.eom/articles/magazine/ah/1958/2/1958-2-16.shtml. The
247. 35 U.S.C. § 114 (2000); 37 C.F.R. § 1.91(a)(2), (b) (2006). Similarly, the PTO can require an applicant to provide specimens or ingredients for inspection or experimentation with regard to claimed inventions of compositions of matter. 35 U.S.C. § 114. It would thus seem that requiring a dynamic digital model would fall within the statutory authority of the PTO.
248. U.S. PATENT OFFICE, THE STORY OF THE AMERICAN PATENT SYSTEM 1790-1940, at 14,28 (1940).
249. MPEP, supra note 27, § 608.03. The PTO not long ago requested a working model of a warp drive described in a patent application as creating a curvature of the space-time continuum. Mark T. Kopec, U.S. Patent & Trademark Office, Office Action re: Application No. 10/182,373, at 6 (Dec. 22, 2005), available at http://patentlaw.rypepad.com/10182373.pdf. Even when not required, a patent applicant can submit a model. 37 C.F.R. §§ 1.91 (a), 1.93.
250. See generally FREDERICK KUHL, RICHARD WEATHERLY & JUDITH DAHMANN, CREATING COMPUTER SIMULATION SYSTEMS: AN INTRODUCTION TO THE HIGH LEVEL ARCHITECTURE (1999) (detailing how to create computerized simulations). Under current law, simulation of a patented invention probably does not constitute patent infringement. See Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1256 (Fed. Cir. 2005) (refusing to find infringement when there was evidence only of computerized simulation, rather than an "actua[l] carr[ying] out" of a claimed method). Nonetheless, requiring disclosure and allowing public use of dynamic models eliminates the possibility that a patent would be infringed by their use.
251. Similarly, for software patents or other inventions written in computer source code, it would be relatively straightforward for the PTO to collect and publish the source code. Cf. FED. TRADE COMM'N, TO PROMOTE INNOVATION: THE PROPER BALANCE OF COMPETITION AND PATENT LAW AND POLICY ch.3, at 49 (2003), available at http://www.ftc.gov/os/2003/10/innovationrpt. pdf (noting that some experts advocate the disclosure of source code). One court recently recognized that source code (or its descriptive equivalent) should have been included in the patent document to provide structure for means-plus-function claims, and that the patent disclosure was thus inadequate. Touchcom, Inc. v. Dresser, Inc., 427 F. Supp. 2d 730, 735-36 (E.D.Tex. 2005).
252. Cf. Cotropia, supra note 118, at 58 (" [inventions are difficult to define-the difficulty stemming in part from the intangible nature of inventions. Inventions are ideas, information, and concepts. While an invention has physical manifestations, these are merely examples of the invention."); Long, supra note 115, at 537 ("[A]n object's tangibility lowers information costs for observers. The tangible embodiment of the invention serves as a referent for its protected attributes. When objects are tangible, the general idea of the object-as-a-thing can be more readily conveyed."); Strandburg, supra note 9, at 103 ("[F]or scientists and engineers, understanding is often, if not virtually always, a hands-on experience."). The dynamic model is not dissimilar to the relatively common practice of patent attorneys' placement of sample biological strains in depositories in the course of securing a patent for an invention encompassing unique biological materials, which cannot be replicated solely based on a written description. Eisenberg, supra note 42, at 208;
253. see 37 C.F.R. § 1.802 (permitting reference to deposited biological material in a patent disclosure). Upon patenting, these biological strains become available to the public for disclosure purposes. Eisenberg, supra note 42, at 208. Their availability makes tangible that which was both intangible and irreproducible based on the written, prosaic elements of the patent document. MPEP, supra note 27, § 2402.
254. Supra text accompanying notes 89 and 93.
255. See generally Mayer, supra note 153 (categorizing scientific text and illustrations); accord Jill H. Larkin & Herbert A. Simon, Why a Diagram Is (Sometimes) Worth Ten Thousand Words, 11 COGNITIVE SCI. 65,99 (1987) (same).
256. Mayer, supra note 153, at 267.
257. Id. at 268.
258. Id. at 268-69, 271. These predictions are borne out by studies. Id. at 272-73. Though Mayer thinks that explanative illustrations are probably more useful for novices in a particular domain than experts, id. at 275; see also Richard E. Mayer, Using Illustrations To Promote Constructivist Learning from Science Text, in THE PSYCHOLOGY OF SCIENCE TEXT COMPREHENSION 333, 348-49, 354 (JoseÁ Otero, José A. León & Arthur C. Graesser eds., 2002), Mayer's findings are grounded in far less complex systems than typical patented inventions.
259. Mayer, supra note 153, at 269.
260. See id. at 270-71 (oudining several potential problems with the static format).
261. For examples of animations made for patent litigation showing an invention at work, see Animators at Law, Courtroom Animation, Trial Exhibits and Litigation Technology, http://www.animators.com/aal/samples/samplesanimation. html (last visited Sept. 30, 2008) and Interact Mediaworks, Demonstrative Evidence That Persuades, http://www.interactmedia works.com (last visited Sept. 30, 2008).
262. Cf. Mayer, supra note 153, at 278. Mayer states: [L]ine drawings are often more effective than actual photographs in explaining how a system such as the human circulatory system works. Photos contain a great deal of specific information, much of which is irrelevant to understanding how the system works. Simplified line drawings, by contrast, focus attention on relevant components and state changes.
263. Id.
264. Some psychologists have concluded that "it is the content and structure of instructional materials, and not the media and modalities in which they are presented that is important for comprehension of complex devices." Mary Hegarty, N. Hari Naraynan & Pam Freitas, Understanding Machines from Multimedia and Hypermedia Presentations, in THE PSYCHOLOGY OF SCIENCE TEXT COMPREHENSION, supra note 166, at 357, 372. Assuming the conclusion's validity in the context of the controlled studies from which it is derived, its application to the patent document is undermined by the observation that the inventions described in patents are typically far more complex than those in the studies (such as simple toilet-tank systems). See id. at 380. Because of the increased complexity, one modality might be more useful than another in the patent document for two related reasons: first, the probability of successfully teaching a complex invention is higher when important aspects of it are conveyed in multiple modalities (such as text with pictures and animations), and second, certain modalities (here, dynamic models) are more likely than others (here, text and pictures) to teach particular aspects of a complex invention succinctly, and thus clearly.
265. Cf. Richard E. Mayer, Comprehension as Affected by Structure of Problem Representation, 4 MEMORY & COGNITION 249, 253 (1976) ("[Diagrams produce better performance if they replace particularly complicated verbal representation presumably due to faster accessing of information, and diagrams result in poor performance if they are substituted for well-structured verbal representation, presumably due to distraction."). Furthermore, the studies' conclusion is in no way based on how much observers prefer multiple modalities to a single modality. A principal problem with the disclosure function is that inventors are not turning to the patent document to inform their research. If they liked doing so, they might do it more often, regardless of the precise comparative cognitive efficacy of multimodal and unimodal documents.
266. See supra notes 86-99 and accompanying text (discussing the difficulties of reverse- engineering a patented invention).
267. See Marianne Elshout-Mohr & Maartje van Daalen-Kateijns, Situated Regulation of Scientific Text Processing, in THE PSYCHOLOGY OF SCIENCE TEXT COMPREHENSION, supra note 166, at 223, 233 (discussing how such exemplars are helpful to communicating scientific information).
268. Smith, supra note 114, at 1161-62.
269. PATENT TECH. MONITORING TEAM, U.S. PATENT & TRADEMARK OFFICE, U.S. PATENT STATISTICS CHART, CALENDAR YEARS 1963-2007, http://www.uspto.gov/web/offices/ac/ido/ oeip/taf/us-stat.htm (last visited Sept. 30, 2008).
270. Lemley, supra note 29, at 1499-1500.
271. Robert P. Merges, As Many as Six Impossible Patents Before Breakfast: Property Rights for Business Concepts and Patent System Reform, 14 BERKELEYTECH. L.J. 577,606-09 (1999).
272. A pro-patent bias also arises because the PTO is wholly funded by patent-applicant fees. Stuart Minor Benjamin & Arti K. Rai, Who's Afraid of the APAT: What the Patent System Can Learn from Administrative Law, 95 GEO. L.J. 269, 314 (2007).
273. Supra Part IIA.
274. Cf. Mark D. Janis, On Courts Herding Cats: Contending with the "Written Description" Requirement (and Other Unruly Patent Disclosure Doctrines), 2 WASH. U. J.L. & POL'Y 55, 61 (2000) ("[B]y devising an essentially standardless disclosure doctrine that can be deployed arbitrarily, the Federal Circuit has effectively arrogated to itself unbridled authority to strike down claims for inadequate disclosure.").
275. Long, supra note 115, at 506.
276. Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1365 (Fed. Cir. 2006).
277. Sec John R. Allison & Mark A. Lemley, Empirical Evidence on the Validity of Litigated Patents, 26 AIPLA QJ. 185, 208-10, 209 tbl.2 (1998) (analyzing Federal Circuit decisions from 1989 to 1996).
278. Congress, the PTO, the courts, or industry norms might fashion these rules. The PTO and courts might more easily work out rules for a particular patent situated in a particular industry. There is a concern, though, with courts having the primary responsibility to fashion these rules. As discussed below in Section D, only a very limited set of patent disclosures can and will be challenged in court. Industry norms would be useful as they would fully comprehend the practical benefits and demerits of particular disclosures, but even were such norms to develop, they might not be able to sanction inadequate disclosures as the government might. Cf. Eric Talley, Disclosure Norms, 149 U. PA. L. REV. 1955, 1955-64 (2001) (positing that norms of corporate disclosure can work together with judicial rules). For an analysis suggesting that it might make sense for each industry to structure its own disclosure rules, see infra note 205.
279. Another option is to perform patent audits-a more detailed round of patent examination-either randomly or based on certain red flags of patentability. If audits carried sufficient risks to patentees, patentees might feel forced to reveal more information initially.
280. Experts process information differently than ordinary people. Paul J. Feltovich, Kenneth M. Ford & Robert R. Hoffman, A Preliminary Tour of Human and Machine Expertise, in EXPERTISE IN CONTEXT: HUMAN AND MACHINE, at xiii, xiii (Paul J. Feltovich, Kenneth M. Ford & Robert R. Hoffman eds., 1997). To take but one strand of relevant psychological research, experts are more abstract than novices in two ways: first, they reason at a more abstract level, and second, their expertise is represented with more (moderately) abstract concepts. Colleen M. Zeitz, Some Concrete Advantages of Abstraction: How Experts' Representations Facilitate Reasoning, in EXPERTISE IN CONTEXT: HUMAN AND MACHINE, supra, at 43, 43-44. For example, a physicist will tend to characterize a mechanics problem by the abstract concepts of forces, relationships between forces, and the relevant principles. Id. at 43.
281. Abstract representations are helpful to obtain and maintain expertise in a particular domain because abstractions are more stable in the face of the acquisition of new information; are more easily triggered, as they are cued by a wider range of problems; and make an expert less susceptible to processing irrelevant concrete details. Id. at 45.
282. To obtain and maintain expertise in an area, an individual must therefore become proficient at processing information at the appropriate level of abstraction. Id. at 44.
283. In light of these findings, one cognitive scientist suggests that the most useful type of instruction is that which occurs at the moderately abstract conceptual level to "provid[e] learners with a framework to which they can attach more detailed levels of new information to form a coherent, fleshed-out structure [enhancing] both knowledge organization and proceduralization." Id. at 60.
284. This finding, among others, should be incorporated into a rethinking of the structure and content of the patent document to provide information at the most useful degree of abstraction. The current structure of the patent document does contain some abstractions, but the wrong ones. In theory, the patent document goes into ever- increasing amounts of detail, depending on how much a reader wants to know. Namely, there are steadily increasing amounts of information in the title, the abstract, the brief summary of invention, and the detailed description. Nevertheless, the increasing level of detail is prosaic rather than conceptual in the sense that each increasingly concrete structural unit contains more detailed language about the invention rather than more concrete detail. To aid disclosure, there should be a hierarchical description that explains an invention and how it solves a problem from an abstract level to a more concrete level. Id.
285. 37 CF.R. § 1.72 (2006).
286. Id.
287. MPEP, supra note 27, § 606.
288. The title also cannot contain variations on the word "improvement. " Id.
289. The examiner will request a better title from the applicant; if the applicant fails to supply a satisfactory title, the examiner will re-title the patent. Id. § 606.01.
290. Eg., U.S. Patent No. 4,683,784 (filed Feb. 11, 1986);
291. U.S. Patent No. 4,363,344 (filed May 9, 1979).
292. E.g., U.S. Patent No. 5,268,993 (filed June 4, 1991);
293. U.S. Patent No. 4,031,519 (filed Nov. 11, 1974).
294. E.g, U.S. Patent No. 4,275,473 (filed July 25, 1979);
295. U.S. Patent No. 3,778,851 (filed Feb. 24, 1972).
296. An apt tide is useful to later recall: psychologists have shown that "providing a thematic title to participants prior to reading an ambiguous passage has dramatic effects on later recall. [and more specifically,] those who read the titles recalled approximately twice as much as those who read the ambiguous passage without the benefit of its title." Suzanne Mannes & Marie St. George, Effects of Prior Knowledge on Text Comprehension: A Simple Modeling Approach, in MODELS OF UNDERSTANDING TEXT 115, 115 (Bruce K. Britton & Arthur C. Graesser eds., 1996).
297. Another approach to getting more useful titles might involve less-direct methods. For example, the government might award stronger or broader patent protection to a patentee whose patent has been cited fifty times by other entities in a non-collusive fashion. This rule gives the patentee the incentive to write a clear title to help other entities locate its patent for citation.
298. See Guy J. Groen & Vimla L. Patel, The Relationship Between Comprehension and Reasoning in Medical Expertise, in THE NATURE OF EXPERTISE, supra note 125, at 287, 295-96 (concluding that medical experts are better able to make medical inferences when clinical medical information is presented in a proper order); Mannes & St. George, supra note 194, at 115, 117 (discussing the use of outlines appearing before the text).
299. Compare Elshout-Mohr & van Daalen-Kateijns, supra note 173, at 225 ("[S]tudies showed that recall was always better for text with high coherence than with low coherence, for students with both low and high knowledge about the [scientific] subject matter "), with id. at 225-26 (describing paradoxical findings). The authors found: The paradoxical result was that high-knowledge participants performed better on texts with low rather than high coherence in tests that tap deep comprehension and reasoning When coherence gaps occur, students are challenged to use available prior knowledge to establish local coherence relations, to figure out the macrostructure of the text, and to elaborate the textual material with what they already know The combination of a high-coherence text and high background knowledge may induce a 'feeling of knowing' or an 'illusion of comprehension,' which prevents readers from deep processing of the text.
300. Id.
301. See GEORGE LAKOFF, WOMEN, FIRE, AND DANGEROUS THINGS: WHAT CATEGORIES REVEAL ABOUT THE MIND 56 (1987) (discussing notions of exemplars of categories and degrees of membership within a category);
302. George F. Wheeler, Creative Claim Drafting: Claim Drafting Strategies, Specification Preparation, and Prosecution Tactics, 3 J. MARSHALL REV. INTELL. PROP. L. 34, 43 (2003) ("[C]onvey in your specification that there are many ways to carry out the invention. Challenge the inventors to conceive several different embodiments of the invention, with many different features. Describe more than one embodiment when you can do so.").
303. An abundance of commentary suggests that business-method patents are frequently granted to inventions that are not novel, are obvious, or are not patentable subject matter. E.g., John R. Thomas, The Patenting of the Liberal Professions, 40 B.C. L. REV. 1139, 1143-63 (1999) (patentable subject matter); Andrew Kopelman, Note, Addressing Questionable Business Method Patents Prior to Issuance: A Two-Part Proposal, 27 CARDOZO L. REV. 2391, 2393-94 (2006) (novelty and obviousness).
304. But see John R. Allison & Emerson H. Tiller, The Business Method Patent Myth, 18 BERKELEY TECH. LJ. 987, 989-1006 (2003) (positing, after conducting an empirical analysis, that business-method patents are not inferior to other patents). The current disclosure requirements, rather than providing too litde useful information, might simply provide too much information for business methods, thereby obfuscating their frequent simplicity. An oft- criticized patent is Amazon.com's patent on its "one-click" method for ordering merchandise on the Internet. U.S. Patent No. 5,960,411 (filed Sept. 12, 1997);
305. Allison & Tiller, supra, at 993;
306. Jeanne C. Fromer, The Layers of Obviousness in Patent Law, 22 HARV. J.L. & TECH. 75, 86-87 (2008). To the extent that the one-click method should not have been patentable, provision of a model, which would appear simple, or the software code, which would be succinct, might highlight patentability concerns.
307. Burk & Lemley, supra note 31, at 1576. That said, in interpreting the type of information required for enablement, the relevant industry matters to setting the standard of a person skilled in the relevant art.
308. See Craig Allen Nard, A Theory of Claim Interpretation, 14 HARV. J.L. & TECH. 1, 43-81 (2000) (dissecting the person having skill in the art). And it is thought that "[i]n contrast to the applied sciences, the judiciary has required a more detailed disclosure in chemistry, and the experimental sciences" because "'results are often uncertain, unpredictable, and unexpected.'" Seymore, supra note 127, at 137 (quoting Schering Corp. v. Gilbert, 153 F.2d 428, 433 (2d Cir. 1946)).
309. Dan Burk and Mark Lemley describe industry differences: Industries vary in the speed and cost of research and development. in the ease with which inventions can be imitated by others, in the need for cumulative or interoperative innovation rather than stand-alone development, and in the extent to which patents cover entire products or merely components of products. Burk & Lemley, supra note 31, at 1577; accord Merges & Nelson, supra note 59, at 880-84 (discussing four models of inventive advances: discrete inventions, cumulative technologies, chemical technologies, and science-based technologies).
310. E.g., Merges & Nelson, supra note 59, at 882 (positing, for instance, that the scope of the patent right is more significant with cumulative technologies than with discrete inventions because granting broad patents to pioneers for the former type of invention might prevent industry growth and development).
311. See Burk & Lemley, supra note 31, at 1577 (demonstrating how patent law, though facially uniform, is applied differently depending on the industry to develop differing legal standards of obviousness, enablement, and written description).
312. Cf. id. at 1652-54 (suggesting some ways in which the written-description requirement varies by technology).
313. Berman & Dreyfuss, supra note 139, at 898-99. Though there are many different ways to decide on industry- or technology-specific disclosure rules, one promising avenue might be to grant the industry a significant role in delineating the sorts of information useful to patent disclosure. As those working in a particular industry both disclose their inventions in patent applications and consume the patent disclosures of others in the industry, infra text accompanying notes 264-66, they are uniquely situated to balance out the information they would like to provide as patentees and the information they would like to read as consumers of the information in others' patents. Of course, any such solution would have to avoid being captured by coordinated industry efforts to minimize overall disclosure when more or different disclosure is optimal.
314. Cf. Burk & Lemley, supra note 31, at 1637 ("[B]oth public choice theory and practical experience warn that each new amendment to the patent statute represents an opportunity for counterproductive special interest lobbying. Technology-specific patent legislation will encourage rent-seeking by those who stand to benefit from favorable legislation." (footnotes omitted)).
315. Cf. Merges & Nelson, supra note 59, at 880 (emphasizing that discrete inventions "do[] not point the way to wide ranging subsequent technical advances").
316. U.S. Patent & Trademark Office, Patent Full-Text and Full-Page Image Databases, http://www.uspto.gov/patft/index.html (last visited Sept. 30, 2008). For a recounting of the successful fight to make patent information publicly available in the 1820s, see Cooper, supra note 41, at 45-47.
317. E.g., Delphion Research Intellectual Property Network- International and U.S. Patent Search Database, http://www.delphion.com (last visited Sept. 30, 2008).
318. Brian Kahin, Through the Lens of Intangibles: What Patents on Software and Services Reveal About the System, in PATENTS, INNOVATION AND ECONOMIC PERFORMANCE 209, 211 (2004) (attributing to a Cisco employee the quote that "there are too many patents to be able to even locate which ones are problematic").
319. See supra Part III.A.3.b (noting the ambiguous nature of patent tides).
320. MPEP, supra note 27, § 601(111).
321. KURSH, supra note 29, at 114. For a list of the current classification classes, see United States Patent and Trademark Office, http://www.uspto.gov/web/offices/opc/documents/ caa.pdf (last visited Sept. 30, 2008).
322. U.S. PATENT & TRADEMARK OFFICE, U.S. DEPARTMENT OF COMMERCE HANDBOOK OF CLASSIFICATION 9, available, at http://www.uspto.gov/web/ offices/opc/documents/handbook. pdf.
323. John R. Allison & Mark A. Lemley, The Growing Complexity of the United States Patent System, 82 B.U. L. REV. 77, 92 (2002).
324. Id.
325. "Analogous arts" are the fields a technical expert in a particular field would think of consulting when working in that field, which the Federal Circuit addresses in ruling on obviousness in light of prior art. In reKahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006).
326. But cf. Katherine J. Strandburg et al., Law and the Science of Networks: An Overview and an Application to the "Patent Explosion," 21 BERKELEY TECH. LJ. 1293, 1298-99 (2006) (finding increasing disparity between the most-cited and the least-cited patents).
327. This emergent classification is similar to Amazon.com's recommendation that a certain percentage of people who bought one book also bought another one.
328. Cf. Noveck, supra note 29, at 146 (labeling self-tagging a "folksonomy") (citing Clay Shirky, Ontology Is Overrated: Categories, Links, and Tags, http://www.shirky.com/writings/ ontology-overrated.html (last visited Sept. 30, 2008)).
329. Glanzel & Meyer, supra note 107, at 426.
330. Id.
331. Holbrook, supra note 9, at 142-43; Mark A. Lemley & Ragesh K. Tangri, Ending Patent Law's Willfulness Game, 18 BERKELEY TECH. L.J. 1085, 1100-02 (2003);
332. Edwin H. Taylor & Glenn E. Von Tersch, A Proposal To Shore Up the Foundations of Patent Law That the Underwater Line Eroded, 20 HASTINGS COMM. & ENT. L.J. 721, 724 (1998);
333. Note, Disclosure Function, supra note 9, at 2017-23.
334. Jurgens v. CBK, Ltd., 80 F.3d 1566,1570 n.2 (Fed. Cir. 1996).
335. 35 U.S.C. § 284 (2000);
336. Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed. Cir. 1992). The Federal Circuit has justified this standard as both deterring "intentional disregard of legal rights," Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1342 (Fed. Cir. 2004) (en banc), and "quantifying the equities as between patentee and infringer," SRI Int'l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462,1468 (Fed. Cir. 1997). Upon finding willful infringement, a court might also choose to award attorney's fees. 35 U.S.C. § 285;
337. Knorr- Bremse, 383 F.3d at 1347.
338. In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc). Willfulness is determined by evaluating the totality of circumstances based on factors like deliberate copying of another's ideas, duration of infringement, and the infringer's motivation. Read Corp., 970 F.2d at 826-28.
339. SRIInt'l, 127 F.3d at 1464-65.
340. See Kahin, supra note 209, at 211-12 (identifying willful infringement as a principal reason why engineers at Cisco Systems, Inc. avoid information in patents); Lemley, supra note 29, at 1516 ("[M]ost sophisticated companies strenuously avoid reading other companies' patents because they don't want to be charged with knowledge of the patent's existence.").
341. 35 U.S.C. §§ 102-103 (2000).
342. Note, Disclosure Function, supra note 9, at 2022.
343. Supra notes 65-66 and accompanying text.
344. Supra text accompanying notes 175-83.
345. The patent laws provide for the PTO's reissuance of a patent "for the invention disclosed in the original patent" when "through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing." 35 U.S.C. § 251. But only the patentee-not a third party-can seek reissue. See id. In any case, disclosure defects cannot be cured in a reissue application. In re Hay, 534 F.2d 917, 920 (C.C.P.A. 1976).
346. 35 U.S.C. §§301-307, 311-318. Outside parties have limited participation rights in reexamination, see id. §§ 302, 311, 314(b)(2), which occurs according to the same procedures and standards as patent examination, id. § 305. This procedure is useful for patents whose novelty or nonobviousness is in doubt and has the express purpose of strengthening "investor confidence in the certainty of patent rights." H.R. REP. NO. 96-1307, at 3 (1980);
347. In re Recreative Techs. Corp., 83 F.3d 1394, 1396-97 (Fed. Cir. 1996).
348. Congress limited the scope of reexamination to prior art to avoid abusive practices to "harass the patentee and waste the patent life." Id. Reexamination as structured has been opposed for not allowing challengers to participate. Joseph Farrell & Robert P. Merges, Incentives to Challenge and Defend Patents: Why Litigation Won't Reliably Fix Patent Office Errors and Why Administrative Patent Review Might Help, 19 BERKELEY TECH. L.J. 943, 965 (2004). It also has been opposed for being limited to correcting only patentability issues related to prior art. Mark D. Janis, Rethinking Reexamination: Toward a Viable Administrative Revocation System for U.S. Patent Law, 11 HARV. J.L. & TECH. 1, 53-54 (1997).
349. 35 U.S.C. §§ 281-282.
350. Medlmmune, Inc. v. Genentech, Inc., 549 U.S. 118, 126-27 (2007).
351. EMC Corp. v. Norand Corp., 89 F.3d 807, 811 (Fed. Cir. 1996). This recitation generally continues to be accurate after the Supreme Court's recent ruling on the case-or- controversy requirement in declaratory-judgment actions in which a patent licensee sues the patentee without first repudiating the license agreement. Medlmmune, 549 U.S. at 126-37.
352. Lemley, supra note 29, at 1501.
353. That said, the PTO devotes more hours to examining patents that are less likely to be litigated, John L. King, Patent Examination Procedures and Patent Quality, in PATENTS IN THE KNOWLEDGE-BASED ECONOMY 54, 66-67 (Wesley M. Cohen & Stephen A. Merrill eds., 2003), making it somewhat more likely that it will detect inadequate disclosure.
354. Kieff, supra note 118, at 73; Lemley, supranote 29, at 1497, 1510-11.
355. See supra note 41 (discussing patent thickets).
356. VERNON M. RUTTAN, TECHNOLOGY, GROWTH, AND DEVELOPMENT: AN INDUCED INNOVATION PERSPECTIVE 67 (2001); Arti K. Rai & Rebecca S. Eisenberg, Bayh-Dole Reform and the Progress of Biomedicine, 66 LAW & CONTEMP. PROBS. 289, 297-98 (2003).
357. But see Jay P. Kesan & Andres A. Gallo, Why "Bad" Patents Survive in the Market and How Should We Change?-The Private and Social Costs of Patents, 55 EMORY L J. 61, 76 (2006) (criticizing the quality of the patent-examination process).
358. Peer review could be implemented on a case-by-case basis when the examiner is uncertain about the adequacy of disclosure, in certain fields in which disclosure is often inadequate, or across the board.
359. Cf. Nature.com, Getting Published in Nature. For Authors and Referees, htrp://www. nature.com/nature/authors/get-published/index.html (last visited Sept. 30, 2008) (describing Nature's peer-review process).
360. Another option might be to adopt a variation of Beth Noveck's project of community patent review (being implemented in trial version by the PTO), Noveck, supra note 29, at 127- 29 (proposing review by the public of the adequacy of prior art-and thus the novelty and nonobviousness-in patent applications), and allow anyone to provide comments on the adequacy of technical disclosure. A problem with (closed or open) peer review of disclosure is that feedback might be misleading or wrong: first, competitors have self-interest to deter issuance of patents to their rivals, maximize disclosure, impose greater communication costs on their rivals, and learn more about their rivals' works; second, allowing anyone to contribute feedback increases the chance that reviewers provide irrelevant feedback. Noveck addresses the second problem by allowing the public to rank feedback already provided, but that alone does not minimize the first problem of self-interest, a problem that afflicts a PTO-selected "blue ribbon" panel as well as self-selected public reviewers. To minimize this problem, feedback should be advisory by having the examiner act as a critical gatekeeper, cf. Noveck, supra note 29, at 156-57 (providing that reviewers' information is provided to the examiner for ultimate review), and allowing the patent applicant to defend against suggestions.
361. Annotation also might be privatized. For examples, see supra note 111.
362. Allowing annotations should not turn the patent into a document editable by the anonymous public, as with Wikipedia entries. In such a system, those with biased or contorted views of the patent laws, might rapidly capture the system, which could lead to the replacement of accurate information. Cf. Stacy Schiff, Know It All: Can Wikipedia Conquer Expertise?, NEW YORKER, July 31, 2006 (discussing similar concerns with Wikipedia). A more successful system would allow only the addition of commentary, possibly with attribution.
363. See generally BABYLONIAN TALMUD, translated in THE TALMUD: THE STEINSALTZ EDITION (Adin Steinsaltz trans. & ed., 1999) (interposing attributed rabbinic commentary with the Talmudic text).
364. That said, the unforeseen path of subsequent innovation might render patent disclosures inadequate, which might yield a great deal of annotation.
365. See Benjamin & Rai, supra note 178, at 320-28 (discussing the combination of patent law with administrative-law principles).
366. To varying degrees, the PTO and the federal courts are composed of lay individuals who would need to decide whether disclosure in the technical layer is adequate. Lay decisionmakers can rely on expert testimony, as they often do in areas beyond their ken. Scott Brewer, Scientific Expert Testimony and Intellectual Due Process, 107 YALE L.J. 1535, 1678 (1998) (discussing but criticizing the prevalence of this practice). Nonetheless, lay decisionmaking introduces more room for error than would unbiased expert decisionmaking, and the need to rely on experts increases the costs of bringing or defending a disclosure challenge, which decreases patent value.
367. Those bringing such actions should have sufficient interest in adequate disclosure of that patent as a proxy for avoiding actions brought to harass patentees.
368. Cf. Christopher R. Leslie, The Anticompetitive Effects of Unenforced Invalid Patents, 91 MINN. L. REV. 101, 104-05 (2006) (arguing that private parties be able to challenge mere possession of an invalid patent as an antitrust violation); Jason Mazzone, Copyfraud, 81 N.Y.U. L. REV. 1026, 1078-83 (2006) (proposing broad standing for the public in civil litigation to rein in false copyright notices).
369. Provision of an action for inadequate disclosure must guard against collusive settlement of meritorious suits brought by a competitor against a patentee to the detriment of the public. Cf. C. Scott Hemphill, Paying for Delay: Pharmaceutical Patent Settlement as a Regulatory Design Problem, 81 N.Y.U. L. REV. 1553, 1557-62 (2006) (discussing a similar concern with regard to settlement of patent-infringement actions brought by a drug patentee against an intended manufacturer of a generic version of the drug for the purpose of delaying entry of generic drugs into the marketplace). One solution to this problem is to make these actions qui tarn, in the sense that they cannot be terminated without government approval as they are not only actions brought on behalf of the public but also the government, which granted the patent.
370. See supra notes 65-66 and accompanying text.
371. Long, supra note 53, at 626.
372. Id.
373. Lemley, supra note 29, at 1498-99 (including in this cost PTO filing fees and the attorney's fees for meeting with the inventor, writing the patent application, and responding to PTO office actions).
374. Increasing the cost of disclosure might affect individual inventors more severely than those employed by large firms, who can more readily shoulder the burden of increased costs. The typical patentee long ago moved away from the basement inventor to the firm inventor. Allison & Lemley, supra note 214, at 96.
375. However, new business models funding individuals, e.g., Intellectual Ventures, http://www.intellectualventures.com (last visited Jan. 19, 2009) (providing an example of a new business model), might diminish the trend as well as support increased costs of patent disclosure. Even were that not the case, disclosure requirements might be structured to require less of the more easily burdened basement inventor. Cf. 17 C.F.R. § 240.13e-3 (2008) (eliminating various securities disclosure obligations for companies with less than 300 shareholders that do not trade their securities on an exchange);
376. Stephen J. Choi, Behavioral Economics and the Regulation of Public Offerings, 10 LEWIS & CLARK L. REV. 85, 121 (2006) (observing how the Securities and Exchange Commission has not required as much disclosure from smaller businesses as it has from larger ones).
377. Patent law has a dedication rule pursuant to which subject matter disclosed in the patent document but not claimed therein is dedicated to the public. Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1054 (Fed. Cir. 2002). This rule would seem to discourage revelation in the patent of anything more than that which is claimed-something more likely to happen under a system of invigorated disclosure (unless the rule is applied only to the legal layer, not the technical layer). Concomitantly, the rule will encourage inventors to claim all that must be disclosed in an invigorated system. Broader claims-and broader patent scope-might therefore accompany broader disclosure and might negate the increased cost the dedication rule would seem to impose.
378. Cf. Risch, supra note 123, at 227 ("The marginal costs of accurately describing and enabling an invention are likely to be low because the applicant can be expected to have a full grasp of what he believes was invented.").
379. Lemley, supra note 29, at 1508.
380. Supra Part III.A.3.b.
381. Supra Part III.D.
382. Cf. Merges & Nelson, supra note 59, at 916. The authors state: [I]t is important to bear in mind that every potential inventor is also a potential infringer. Thus a 'strengthening' of property rights will not always increase incentives to invent; it may do so for some pioneers, but it will also greatly increase an improver's chances of becoming enmeshed in litigation. Id. Henry Smith relatedly notes: [S]peakers have as much interest in being understood as hearers have in understanding. But the question remains why speakers do not unilaterally place more of the cost of communication on hearers. Part of the explanation resides in the fact that most people are speakers and hearers, and a speaker who consistently imposes costs on hearers will find himself without conversational partners. Smith, supra note 114, at 1137.
383. ROBERT AXELROD, THE EVOLUTION OF COOPERATION 7-10 (1984).
384. Cf. Cohen & Levin, supra note 41, at 1094 (noting ';the simple 'disincentive effect' of spillovers" alongside the "offsetting incentive to invest in 'absorptive capacity' to make use of [spillovers]"); Arijit Mukherjee & Scott Stern, Disclosure or Secrecy?: The Economics of Open Science 16-17 (July 5, 2007), available at http://papers.ssrn.com/sol3/papers.cfmPabstract- id=998548 (exploring how a scientist's choice between keeping secret and publishing his work depends on other scientists' choices, and concluding that systemic openness leads to greater public welfare). A private scheme of sharing of useful information might be difficult to attain, as ABC Widget Company might be interested in learning only about the patented inventions of XYZ Widget Company, XYZ Widget Company might be interested in learning only about those of QED Widget Company, and QED Widget Company might be interested in learning only about those of ABC Widget Company.
385. Supra text accompanying notes 65-66.
386. See Long, supra note 115, at 496 (arguing that "owners know more about their property" and therefore, it is "eas[ier] for owners to convey information about an intellectual good to others"). That said, the inventor also has a greater interest than any other entity in minimizing this disclosure, which weakens the argument that the inventor is best placed to disclose.
387. Id. at 496, 504-05.
388. Wagner, supra note 52, at 218.
389. Similarly, with regard to modifying the willful-infringement rule, patenting might be deterred on the margins because damage awards in patent-infringement suits will be lower if willful infringement is less likely to be found.
390. As an example, the Federal Circuit set a high standard for skill in the art for software patents, under which a patented software invention is sufficiendy enabled to a software engineer so long as the mere function of the software is revealed. Dan L. Burk, Biotechnology in the Federal Circuit: A Clockwork Lemon, 46 ARIZ. L. REV. 441, 450 (2004) (citing N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941 (Fed. Cir. 1990)).
391. This would also have the beneficial effect, in the eyes of many, of decreasing the ever- increasing numbers of patents filed and granted. E.g., Shubha Ghosh & Jay Kesan, What Do Patents Purchase? In Search of Optimal Ignorance in the Patent Office, 40 HOUS. L. REV. 1219, 1246 (2004) (arguing that the PTO "grants too many patents").
392. One might nonetheless object on the basis that the more patents that are issued-even invalid ones-the better the disclosure function operates due to the increased amounts of revealed information available to stimulate further innovation. While that might hold true for, say, adequately disclosed patents that are unenforceable due to inequitable conduct, see Agfa Corp. v. Creo Prods. Inc., 451 F.3d 1366, 1377 (Fed. Cir. 2006) (emphasizing that inequitable conduct is almost always uncovered after a patent's issuance, in which case the public gets the benefit of disclosure even though the patent is unenforceable), patents containing inadequate disclosure will increase the noise-to-signal ratio in the already noisy patent library, making it yet harder to locate useful patents.
393. Cf. In reFisher, 427 F.2d 833, 839 (C.C.P.A. 1970) ("[35 U.S.C. § 112] requires that the scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art."). Other commentators have proposed doing away with a one-size-fits-all patent right in a different way by suggesting that the patent term should vary based instead on the technology at issue and the economic concerns of the relevant industry. E.g., Jeff Bezos, Bezos and O'Reilly Spearhead Call for Patent Reform: An Open Letter from Jeff Bezos on the Subject of Patents, O'REILLY, MAR. 9, 2000, http://www.oreilly.com/news/ amazon-patents.html (suggesting that patents for business methods and software, unlike those for pharmaceuticals where there is usually clinical testing, complex physical processes, and the like, should have limited terms).
394. Of course, there is another important reason other than disclosure that patents are granted-namely, to stimulate innovation in the first instance. Supra text accompanying notes 33-36. With that notable goal also in play, the extent of the patent right should depend only in part on disclosure.
395. See Ian Ayres & Robert Gertner, Filling Gaps in Incomplete Contracts: An Economic Theory of Default Rules, 99 YALE L.J. 87, 94-95, 97-100 (1989) (discussing penalty-default rules generally);
396. cf. Kesan & Banik, supra note 29, at 26-27, 30 (arguing that patent applicants should, in exchange for disclosing relevant prior art, be given the incentive of a strong presumption of patent validity with regard to that art); Wagner, supra note 52, at 168-69 (applying the theory of penalty-default rules to the rules of prosecution-history estoppel).
397. E.g., eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 395 (2006) (Roberts, C.J., concurring) (noting the historic practice "of granting injunctive relief upon a finding of infringement in the vast majority of patent cases").
398. E.g., Yochai Benkler, Siren Songs and Amish Children: Autonomy, Information, and Law, 76 N.Y.U. L. REV. 23, 112-13 (2001) (suggesting that "too complete a reliance on property rights undermines personal autonomy").