Peripheral disclosure

University of Pittsburgh Law Review

Volumn 74, Issue 1, 2012, Pages 1-45

  Rantanen, Jason ^a  

^a UNIVERSITY OF IOWA COLLEGE OF LAW   (United States)

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[No Author keywords available]

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EID: 84874719790     PISSN: 00419915     EISSN: None     Source Type: Journal    
DOI: 10.5195/lawreview.2012.190     Document Type: Review

References (138)

1. The fundamental role information plays in the innovation process is largely undisputed. Meaningful technological advancement simply cannot occur in its absence. The concept of building upon the work of others is traditionally captured by the image of standing on the shoulders of giants, a metaphor used most famously by Isaac Newton. This primacy of information in the innovation process holds notwithstanding suggestions that the most significant innovations may be conceived of by newcomers to a given field. See THOMAS S. KUHN, THE STRUCTURE OF SCIENTIFIC REVOLUTIONS 89-90 (1962). Without the necessary conceptual tools and pre-existing scientific frameworks, such pioneers would themselves be unable to produce their revolutionary concepts.
2. The two traditionally advanced justifications for the patent system are disclosure theory and incentive theory. This article focuses primarily on disclosure theory. For a discussion of the various theories of the patent system, see, for example, Mark A. Lemley, The Myth of the Sole Inventor, 110 MICH. L. REV. 709, 736-49 (2012).
3. Jeanne C. Fromer, Patent Disclosure, 94 IOWA L. REV. 539, 541 (2009).
4. In addition to Professor Fromer, scholarship in support of the value of patent disclosure includes: Dan L. Burk, The Role of Patent Law in Knowledge Codification, 23 BERKELEY TECH. L. J. 1009 (2008);
5. Lisa Larrimore Ouellerte, Do Patents Disclose Useful Information?, 25 HARV. J. L. & TECH. 531 (2012);
6. Sean B. Seymore, The Teaching Function of Patents, 85 NOTRE DAME L. REV. 621, 627 (2010);
7. Margaret McInerney, Note, Tacit Knowledge Transfer with Patent Law: Exploring Clean Technology Transfers, 21 FORDHAM INTELL. PROP. MEDIA & ENT. L. J. 449 (2011).
8. Others discussing disclosure theory take a more neutral approach while still recognizing the potential value of patent disclosure. See Rebecca S. Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56 U. CHI. L. REV. 1017, 1028-30 (1989);
9. Note, The Disclosure Function of the Patent System (Or Lack Thereof), 118 HARV. L. REV. 2007 (2005).
10. See, e.g., Kewanee Oil Co. v. Bicron Corp., 416 U. S. 470, 480-81 (1974) ("In return for the right of exclusion-this 'reward for inventions, '-the patent laws impose upon the inventor a requirement of disclosure. To insure adequate and full disclosure so that upon die expiration of the 17-year period 'the knowledge of the invention ensures to the people, who are thus enabled without restriction to practice it and profit by its use', the patent laws require that the patent application shall include a full and clear description of the invention and 'of the manner and process of making and using it' so that any person skilled in the art may make and use the invention. ") (citations omitted). Disclosure is also a common justification for the patent system discussed in blue-ribbon commission reports.
11. See, e.g., PRESIDENT'S COMMISSION ON THE PATENT SYSTEM, TO PROMOTE THE PROGRESS OF USEFUL ARTS IN AN AGE OF EXPLODING TECHNOLOGY 10-11 (1966) (identifying one of the purposes of the patent system as enabling early public disclosure of new technology to reduce duplication of efforts);
12. FED. TRADE COMM'N, TO PROMOTE INNOVATION: THE PROPER BALANCE OF COMPETITION AND PATENT LAW AND POLICY 4-7(2003), available at http://www.ftc.gov/os/2003/10/innovationrpt.pdf (same).
13. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U. S. 55, 63 (1998) ("[T]he patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time.");
14. See, e.g., J. Jonas Anderson, Secret Inventions, 26 BERKLEY TECH. L. J. 917, 940-46 (2011);
15. Alan Devlin, The Misunderstood Function of Disclosure in Patent Law, 23 HARV. J. L. & TECH. 401, 410-11 (2010);
16. Timothy R. Holbrook, Possession in Patent Law, 59 SMU L. REV. 123 (2006);
17. Katherine J. Strandburg, What Does the Public Get? Experimental Use and the Patent Bargain, 2004 WIS. L. REV. 81 (2004);
18. These requirements are laid out in 35 U. S. C. § 112 (2006). One might also add claim construction to this list, if one were to adopt Judge Lourie's view of its role as restricting patent scope based on the patent's disclosure.
19. See Jason Rantanen, Crown Packaging v. Ball Metal Beverage Container: The Problem-Solution Approach to Written Description Issues, PATENTLY-O (Apr. 12, 2011), http://www.patentlyo.com/patent/2011/04/crown-packaging-v-ball-metal- beverage-container-theproblem-solution-approach-to-written-description. html.
20. No prior author has ever developed the concept I refer to as peripheral disclosure in any depth. Although the broad idea of patents as facilitating (rather than forcing) information disclosure is one that is frequently mentioned in articles and texts, only a sentence or two is devoted to the idea without any source citation. See, e.g., WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 328 (2003) ("In the absence of a patent option, inventors would invest many more resources in maintaining trade secrecy (and competitors in unmasking them) and inventive activity would be inefficiently biased toward inventions that can be kept secret.");
21. CRAIG ALLEN NARD & R. POLK WAGNER, PATENT LAW 2 (2008) (noting that patents may reduce the incentive to hide information);
22. John M. Golden, Principles for Patent Remedies, 88 TEX. L. REV. 505, 522 (2010) (commenting that the absence of patent rights might cause scientists, engineers, and their employers to fail to make many currently routine disclosures such as through trade shows and conventions, promotional materials and manuals). The concept of peripheral disclosures might be considered a form of patent spillover.
23. See Brett M. Frischmann & Mark Lemley, Spillovers, 107 COLUM. L. REV. 257 (2007).
24. The literature relating to this debate could fill an entire article by itself. Significant examples include Kenneth J. Arrow, Economic Welfare and the Allocation of Resources for Invention, in NAT'L BUREAU OF ECON. RESEARCH, THE RATE AND DIRECTION OF INVENTIVE ACTIVITY: ECONOMIC AND SOCIAL FACTORS 609, 615(1962), available at http://www.nber.org/chapters/c2144;
25. Kenneth W. Dam, The Economic Underpinnings of Patent Law, 23 J. LEGAL STUD. 247 (1994);
26. Edmund W. Kitch, The Nature and Function of the Patent System, 20 J. L. & ECON. 265, 276 (1977);
27. See generally JAMES BESSEN & MICHAEL J. MEURER, PATENT FAILURE: HOW JUDGES, BUREAUCRATS, AND LAWYERS PUT INNOVATORS AT RISK (2008);
28. MICHELE BOLDRIN & DAVID K. LEVINE, AGAINST INTELLECTUAL MONOPOLY (2008) (proposing the abolition of patent "monopolies" and viewing the disclosure function of patents as having little value, but not considering the peripheral disclosure effects of patents);
29. 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 (2004).
30. Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011).
31. Discussion relating to the issue of disclosure has largely focused on the impact of the effective elimination of the best mode requirement. See Ryan Vacca, Patent Reform and Best Mode: A Signal to the Patent Office or a Step Toward Elimination, 75 ALB. L. REV. 279, 293-95 (2012) (suggesting that the "best mode" requirement has been rendered toothless and applicants may actively conceal the best mode if the chance that the PTO catches the omission are low);
32. Bron D'Angelo, The America Invents Act: What Remains of Best Mode, GORDON & REES LLP NEWSLETTER (Nov. 2011), http://www.gordonrees.com/documents/ IPNewsletter-Nov2011-BestMode.pdf (suggesting applicants may opt to disclose only so much of the "best mode" to satisfy the individual examiner, potentially preventing the public from knowing how the invention is best carried out).
33. See, e.g., Eldred v. Ashcroft, 537 U. S. 186, 226-27 (2003) (Stevens, J., dissenting);
34. Pfaff v. Wells Elecs., Inc., 525 U. S. 55, 63 (1998) ("[T]he patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time.").
35. It is largely undisputed that greater investment in research and development leads to more new inventions. See Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 COLUM. L. REV. 839, 878 (1990).
36. See, e.g., Kewanee Oil Co. v. Bicron Corp., 416 U. S. 470, 480 (1974) ("The patent laws promote this progress by offering a right of exclusion for a limited period as an incentive to inventors to risk the often enormous costs in terms of time, research, and development.").
37. See Pfaff v. Wells Elecs., Inc., 525 U. S. 55, 63 (1998);
38. Kewanee, 416 U. S. at 480 ("In return for the right of exclusion-this 'reward for inventions, '-the patent laws impose upon the inventor a requirement of disclosure.") (citation omitted);
39. 35 U. S. C. § 112 para. 1 (2006). Note that the paragraph numbering is by convention; the paragraphs of § 112 are not numbered in the text.
40. 35 U. S. C. §112 para.3 (2006).
41. See also Lee Petherbridge & Jason A. Rantanen, In Memoriam Best Mode, 64 STAN. L. REV. Online 125(2012), http://www.stanfordlawreview.org/online/in- memoriambest-mode (providing an alternative theoretical explanation of the importance of the best mode requirement).
42. 35 U. S. C. § 112 (2006) (describing the requirements of the patent specification).
43. See 35 U. S. C. § 122 (2006) (requiring that most applications be published 18 months after filing). Applicants may be able to effectively extend the time their application is kept secret through the use of a provisional application.
44. See Dennis D. Crouch, Is Novelty Obsolete? Chronicling the Irrelevance of the Invention Date in U. S. Patent Law, 16 MICH. TELECOMM. & TECH. L. REV. 53 (2009).
45. See Timothy Holbrook, Patents, Presumptions, and Public Notice, 86 IND. L. J. 779, 786 (2011) (describing patents as a "somewhat bizarre mix of the technical and legal").
46. (citing NAT'L RESEARCH COUNCIL, A PATENT SYSTEM FOR THE 21ST CENTURY 36, 120-21 (Stephen A. Merrill et al. eds., 2004).
47. But see Jerry R. Selinger, In Defense of "Best Mode": Preserving the Benefit of the Bargain for the Public, 43 CATH. U. L. REV. 1071, 1071-72, 1096-97 (1994));
48. The America Invents Act effectively terminated the best mode requirement by eliminating virtually all of the consequences of failing to disclose the best mode. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011);
49. Lee Petherbridge & Jason A. Rantanen, The Pseudo-Elimination of Best Mode: Worst Possible Choice?, 59 UCLA L. REV. DISC. 170.
50. In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007);
51. see Jason A. Rantanen, An Objective View of Fault in Patent Infringement, 60 AM. U. L. REV. 1575, 1629-31 (2011)
52. It bears noting that not all inventors seek to directly monetize their inventions. Non-monetary factors may provide a powerful motivation for some inventors to invent. Katherine J. Strandburg, for instance, argues that user innovators may not just develop and use their own inventions-without seeking financial gain from exclusionary practices-but are also willing to freely reveal their inventions to others. See Katherine J. Strandburg, Users as Innovators: Implications for Patent Doctrine, 79 U. COLO. L. REV. 467, 474-81 (2008). But while I agree with Professor Strandburg that non-pecuniary motivations to invent may be a significant force, in many instances investment in technological development is driven largely by the goal of financial reward.
53. This need not be a purely hypothetical exercise. The world of pre-patent Europe provides a rich example. One need look no further than the culture of secrecy among engineers and architects, in which information was rarely recorded and inventions were rarely shared-until a patent system came along, of course. For a detailed history of innovation and secrecy during this period, see generally WILLIAM EAMON, SCIENCE AND THE SECRETS OF NATURE: BOOKS OF SECRETS IN MEDIEVAL AND EARLY MODERN CULTURE (1996);
54. PAMELA O. LONG, OPENNESS, SECRECY, AUTHORSHIP: TECHNICAL ARTS AND THE CULTURE OF KNOWLEDGE FROM ANTIQUITY TO THE RENAISSANCE (2001).
55. One alternative mechanism for promoting invention that does not rely on secrecy is that of a prize system. See, e.g., Michael Abramowicz, Perfecting Patent Prizes, 56 VAND. L. REV. 115 (2003) (discussing prize systems in detail). Yet there are weaknesses and limitations of a prize system that suggest that it is probably not an optimal mechanism for promoting most types of inventions that will directly interest consumers.
56. See Michael Risch, Trade Secret Law and Information Development Incentives, in THE LAW AND THEORY OF TRADE SECRECY: A HANDBOOK OF CONTEMPORARY RESEARCH 152, 155 (Rochelle C. Dreyfuss & Katherine J. Strandburg eds., 2010), available at http://papers.ssra.com/sol3/papers.cfm? abstract-id=1411579) (noting that "disclosure of secret information for public use negates both secrecy and most of the value that could come from that secrecy.").
57. See Wesley M. Cohen et al., Protecting Their Intellectual Assets: Appropriability Conditions and Why U. S. Manufacturing Firms Patent (Or Not), 17 (Nat'l Bureau of Econ. Research, Working Paper No. 7552, 2000) (reporting the results of a study indicating that for 96% of respondents, prevention of copying was a motive for patenting);
58. Stuart J. H. Graham et al., High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey, 24 BERKELY TECH. L. J. 1255, 1297 (2009) (reporting the results of a study indicating that the most important reason respondent startups gave for patenting was to prevent others from copying the startup's products and services).
59. The British chemist and industrialist Henry Perkin's development of mauve dye provides an early example of peripheral disclosure: after discovering how to create mauve dye, he both patented and published his result, while at the same time building a successful dye business around his invention. See Michaela M. Sousa et al., A Study in Mauve: Unveiling Perkin's Dye in Historic Samples, 14 CHEMISTRY EUR. J. 8507 (2008).
60. Arti Kaur Rai, Regulating Scientific Research: Intellectual Property Rights and the Norms of Science, 94 NW. U. L. REV. 77, 89-90 (1999).
61. See William Hubbard, Inventing Norms, 44 CONN. L. REV. 369 (2011).
62. This ability comes with a caveat-under the current legal regime, such publication will probably only occur after the application has been filed. The publication could be up to a year before the filing date, given the one-year grace period of 35 U. S. C. § 102 (b) (1965), but if the inventor intends to file internationally, any pre-filing publication could prevent the inventor from obtaining a patent.
63. This explanation of PCR, and Mullis's contribution, is grossly oversimplified. For a slightly longer explanation of the invention of PCR, see The History of PCR (RU 9577), SMITHSONIAN INST. ARCHIVES, http://siarchives.si. edu/research/videohistory-catalog9577.html (last visited July 2, 2012).
64. For a detailed history and ethnographic account of the invention of PCR, see generally PAUL RABINOW, MAKING PCR: A STORY OF BIOTECHNOLOGY (1996).
65. For example, more than 3% of all PubMed articles refer to PCR. See John M. S. Bartlett & David Stirling, A Short History of the Polymerase Chain Reaction, 226 METHODS IN MOLECULAR BIOLOGY 3, 5 (John M. Walker ed., 2003).
66. See, e.g., Kary Mullis et al., Specific Enzymatic Amplification of DNA in Vitro: The Polymerase Chain Reaction, in 51 COLD SPRING HARBOR SYMPOSIA ON QUANTITATIVE BIOLOGY 263 (1986);
67. Kary Mullis & Fred A. Faloona, Specific Synthesis of DNA in Vitro via a Polymerase-Catalyzed Chain Reaction, 155 (F) METHODS IN ENZYMOLOGY 335 (1987);
68. Randall K. Saiki et al., Analysis of Enzymatically Amplified β-globin and HLA DQα DNA with Allele-Specific Oligonucleotide Probes, 324 NATURE 163-66 (1986); (Pubitemid 17180630)
69. Randall K. Saiki et al., Enzymatic Amplification of Beta-Globin Genomic Sequences and Restriction Site Analysis for Diagnosis of Sickle Cell Anemia, 230 SCIENCE 1350 (1985);
70. Randall K. Saiki et al., A Novel Method for the Prenatal Diagnosis of Sickle Cell Anemia, 324 AMER. SOC. HUM. GENETICS 164 (1985).
71. According to Google Scholar, the Taq article, Randall K. Saiki et al., Primer-Directed Enzymatic Amplification o/DNA with a Thermostable DNA Polymerase, 239 SCIENCE 487(1988), has been cited by 15, 449 scholarly publications as of June 5, 2012.
72. See A. Graham Bell, Researches in Telephony, 12 PROCEEDINGS OF THE AMERICAN ACADEMY OF ARTS AND SCIENCES 1, 1-10 (1876);
73. A. Graham Bell, Researches in Electric Telephony, 6 JOURNAL OF THE SOCIETY OF TELEGRAPH ENGINEERS 385, 385-421 (1877);
74. U. S. Patent No. 174, 465 (1876).
75. See, e.g., G. Marconi, Wireless Telegraphy, 28 JOURNAL OF THE INSTITUTION OF ELECTRICAL ENGINEERS 273, 273-290 (1899).
76. L. H. Baekeland, The Synthesis, Constitution, and Uses of Bakelite, 1 IND. ENG. CHEM. 149, 149-61 (1909);
77. HAROLD EVANS ET AL., THEY MADE AMERICA 97 (2004) (provides a short biography of Baekeland's life and inventions).
78. Who actually invented the laser is a question that historians continue to debate. See NICK TAYLOR, LASER: THE INVENTOR, THE NOBEL LAUREATE, AND THE THIRTY-YEAR PATENT WAR (2000);
79. JEFF HECHT, BEAM: THE RACE TO MAKE THE LASER (2010). Regardless, all three of the front-running candidates for the title published about their work.
80. A. L. Schawlow & C. H. Tomas, Infrared and Optical Masers, 112 PHY. REV. 1940, 1940-49 (1958);
81. Leonard R. Solon, Raphael Aronson & Gordon Gould, Physiological Implications of Laser Beams, 134 SCI. 1506, 1506-08 (1961).
82. See also William Kingston, Streptomycin, Schatz v. Waksman, and the Balance of Credit for Discovery, 59 J. HIST. MED. ALLIED. SCI. 441, 450 (2004) ("Because Merck financed Waksman's research, any successful results were of course intended to be protected by patents.").
83. See Albert Schatz, Elizabeth Bugle & Selman A. Waksman, Streptomycin, a Substance Exhibiting Antibiotic Activity Against Gram-Positive and Gram-Negative Bacteria, 55 EXP. BIOL. MED. 66, 66-69 (1944);
84. Albert Schatz & Selman A. Waksman, Effect of Streptomycin and Other Antibiotic Substances upon Mycobacterium tuberculosis and Related Organisms, 57 EXP. BIOL. MED. 244, 244-48 (1944);
85. Selman A. Waksman & Albert Schatz, Streptomycin-origin, nature, and properties, 34 J. AM. PHARM. ASSOC. 273, 273-91 (1945).
86. For Schatz's account of the development of streptomycin, see Albert Schatz, The True Story of the Discovery of Streptomycin, 4 ACTINOMYCETES 27, 27-39(1993), available at http://www.albertschatzphd.com/?cat= articles&subcat=streptomycin&itemnum=001. Google Scholar indicates that the 1944 article has been cited 566 times as of June 5, 2012.
87. CHARLES GOODYEAR, THE APPLICATIONS AND USES OF VULCANIZED GUM-ELASTIC WITH DESCRIPTIONS AND DIRECTIONS FOR MANUFACTURING PURPOSES (1855).
88. William M. Chardack, Andrew A. Gage & Wilson Greatbatch, Experimental Observations and Clinical Experiences With the Correction of Complete Heart Block by an Implantable Self-Contained Pacemaker, 7 TRANSACTIONS-AM. SOC'Y FOR ARTIFICIAL INTERNAL ORGANS 286, 286-94 (1961);
89. WILSON GREATBATCH, THE MAKING OF THE PACEMAKER: CELEBRATING A LIFESAVING INVENTION 30 (2000).
90. See, e.g., Stefano Breschi & Christian Catalini, Tracing the Linkages Between Science and Technology: An Exploratory Analysis of the Research Networks Among Scientists and Inventors, 39 RES. POL'Y 14 (2010) (reporting the central role of author-inventors in ensuring the connectivity between scientific research networks and private technology). Even commentators who are skeptical of the conventional disclosure function of patents acknowledge the importance of scientific publications.
91. See, e.g., Ralph Katz, Managing Technological Innovation in Organizations, in THE HUMAN SIDE OF MANAGING TECHNOLOGICAL INNOVATION 675 (Ralph Katz ed., 2d ed. 2004);
92. Donald C. Pelz, Creative Tensions in the Research and Development Climate, in MANAGING PROFESSIONALS IN INNOVATIVE ORGANIZATIONS 37-48 (Ralph Katz ed., 1988);
93. Ralph Katz, Motivating Technical Professionals Today, 48 RES.-TECH. MGMT. 19(2005), available at http://www.ingentaconnect.com/content/iri/rtm/2005/ 00000048/00000006/art00004#expand/collapse;
94. Fiona Murray, The Role of Academic Inventors in Entrepreneurial Firms: Sharing the Laboratory Life, 33 RES. POL'Y 643 (2004).
95. For a theoretical discussion of the concept, see generally Gideon Parchomovsky, Publish or Perish, 98 MICH. L. REV. 926 (2000);
96. Rebecca S. Eisenberg, The Promise and Perils of Strategic Publication to Create Prior Art: A Response to Professor Parchomovsky, 98 MICH. L. REV. 2358 (2000).
97. Dow Chemical is one company that makes extensive use of scholarly publications. Journal Publications, Dow, http://www.dow.com/innovation/ knowledge/journal/ (last visited July 2, 2012).
98. David L. Schwartz, Protecting Improvements to Manufacturing Processes, 17 INTELL. PROP. & TECH. L. J. 8, 10-11 (2005) (same). This decision may in part depend on how easy the invention would be to reverse-engineer. Perhaps, due to the nature of PCR, Cetus might have been unable to maintain their secrecy; i.e., they are self-disclosing inventions. In that instance, Cetus might not have invested resources towards their development at all, as discussed infra Part III. C, if its primary purpose was to obtain profit from its investments in research. An alternative does bear consideration-perhaps Cetus and Dr. Mullins were motivated by other reasons to invent-reputational purposes, for instance, or humanitarianism.
99. For a discussion of how firms embrace patents, see Brenda Sandburg, Cisco Streamlines Patent Process, THE RECORDER (Sept. 20, 2005), http://www.law.com/ jsp/cc/PubArticleCC.jsp?id=900005437299 (registration required).
100. For two viewpoints on the discovery of the double-helical structure of DNA, compare JAMES D. WATSON, THE DOUBLE HELIX: A PERSONAL ACCOUNT OF THE DISCOVERY OF THE STRUCTURE OF DNA (1968)
101. with ANNE SAYRE, ROSALIND FRANKLIN AND DNA (1975).
102. See Mark Lemley, Patenting Nanotechnology, 58 STAN. L. REV. 601, 609 (2005).
103. Numerous companies offer tours of their factories. See, e.g., Ben & Jerry's Ice Cream-Waterbwy Factory Tours, BEN & JERRY'S, http://www.benjerry.com/scoop-shops/factory-tours/ (last visited July 2, 2012);
104. Boeing: Future of Flight Aviation Center & Boeing Tour, BOEING, http://www.boeing.com/commercial/tours/index.html (last visited July 2, 2012);
105. JPL Public Tours-Free Public Tours, JET PROPULSION LABORATORY, http://www.jpl.nasa.gov/events/tours/views/index.cfm (last visited July 2, 2012);
106. York Facility Factor Tours, HARLEY-DAVIDSON, http://www.harley-davidson. com/en-US/Content/Pages/Factory-Tours/york.html (last visited July 2, 2012).
107. Similar to the factory tour are documentary television programs explaining how various products are manufactured. While these programs do not reveal every manufacturing secret, they often demonstrate useful and novel techniques, some of which may be protected by patents. An example is the television program "How It's Made" on the Science channel. How IT'S MADE (Science Channel 2001-Present). http://science.discovery.com/tv/how-its- made/ (last visited July 2, 2012).
108. Vacuum Cleaners, DYSON, www.dyson. com/vacuums/default.asp (last visited July 2, 2012).
109. Ashish Arora & Andrea Fosfuri, Licensing in the Chemical Industry, 16 n. 17 (Heinz College, Working Paper No. 24, 1998), available at http://www.heinz.cmu.edu/research/310full.pdf.
110. See also Dow Chemical Company Employee Agreement, Dow, http://msdssearch.dow.com/PublishedLiteratureDOWCOM/dh-03ed/0901b803803edb96. pdf?filepath=familyhealth/pdfs/noreg/165-02004.pdf&fromPage=GetDoc.
111. Kurt W. Swogger, Edmund M. Carnahan, Wendy D. Hoenig & Anthony R. Frencham, The Development of a New Generation of Novel Olefin Block Copolymers: From Molecular Design to Market Development, Dow (June 2006), http://www.dow.com/scripts/litorder.asp?filepath=infuse/pdfs/noreg/788-00301. pdf.
112. See Patents, DOW, http://www.dow.com/innovation/achievements/patents/ (last visited July 2, 2012).
113. See Ted Sichelman & Stuart J. H. Graham, Patenting by Entrepreneurs: An Empirical Study, 17 MICH. TELECOMM. & TECH. L. REV. 111, 137 n. 141 (2010) ("First-mover advantages are particularly relevant in fast-moving industries, such as software and the Internet.").
114. see Alan Devlin & Neel Sukhatme, Self-Realizing Inventions and the Utilitarian Foundation of Patent Law, 51 WM. & MARY L. REV. 897 (2009).
115. Nor is this concept purely theoretical; Petra Moser's study of world fairs indicates that patent systems shift inventive activity more towards the creation of self-disclosing inventions. See Petra Moser, Innovation Without Patents-Evidence from the World Fairs (Apr. 15, 2011) (unpublished working paper), available at http://ssrn. com/abstract=930241. This shift has profound consequences in terms of the informational content these inventions provide to the public.
116. Admittedly, just as with the product marketing discussed supra Part III. B., it would be absurd to claim that every self-disclosing invention was a consequence of a patent system. The heavy plow was invented long before the advent of even the Venetian patent system. LYNN WHITE JR., MEDIEVAL TECHNOLOGY AND SOCIAL CHANGE 50 (1962) ("[O]nce the Slavs got the heavy plough, we have no reason to date its arrival among them very long before the Avar invasion of 568 [AD]....");
117. Edward C. Walterscheid, The Early Evolution of the United States Patent Law: Antecedents (Part 1), 76 J. PAT. & TRADEMARK OFF. SOC'Y 697, 707-09 (1994). That is not the point; the point is that the existence of a patent system exerts some pressure, at least at the margins, on the willingness of potential inventors to invest in self-disclosing inventions as opposed to secret inventions. The extent of that effect is necessarily the subject of future, likely empirical, research.
118. See In re Violation of Rule 28 (D), 635 F.3d 1352 (Fed. Cir. 2011).
119. Most firms will undoubtedly seek protective orders, such as under Federal Rule of Civil Procedure 26 (c), to preserve the confidentiality of their technical information. Such devices work-to a point. See, e.g., Alan Lawrence, Comment, The Value of Copyright Law as a Deterrent to Discovery Abuse, 138 U. PENN. L. REV. 549, 565-69 (1989) (discussing the limitations of protective orders in protecting trade secrets). In addition, courts are generally reluctant to limit public access to their proceedings, even when trade secrets might be involved.
120. See, e.g., U. S. Investigations Servs., LLC v. Callihan, No. 2:11-cv-0355, 2011 WL 1157256 (W. D. Pa. Mar. 29, 2011) (denying trade secret plaintiffs request to close courtroom during a temporary restraining order proceeding). Furthermore, the more advanced the stage of litigation, the more difficult it is to shield such information from public eyes.
121. See In re Violation of Rule 28 (D), 635 F.3d at 1358 (commenting that "[w]here the party seeks to limit the disclosure of information actually introduced at trial, an even stronger showing of prejudice or harm may be required to warrant limitations on disclosure.").
122. For instance, it is frequently difficult to prove that an NDA has been breached, or a critical third party may refuse to sign an NDA. See Stuart J. H. Graham & Ted Sichelman, Why Do Start-Ups Patent?, 23 BERKELEY TECH. L. J. 1063, 1082 (2008). This may be particularly true when the refusing third party has significant power relative to the inventor, such as in the case when an inventor is dealing with a large corporation that may be the only viable licensee of the technology. Furthermore, nondisclosure agreements are unable to bind third parties who come into possession of the technology, and thus patents can provide security even against these entities.
123. See Robert P. Merges, Contracting into Liability Rules: Intellectual Property Rights and Collective Rights Organizations, 84 CALIF. L. REV. 1293, 1347-48 (1996).
124. F. Scott Kieff, Property Rights and Property Rules for Commercializing Inventions, 85 MINN. L. REV. 697 (2001).
125. Not all inventors may choose to monetize their patents through third party uses of the technology. This category of peripheral disclosure thus may not apply to these self-use inventors. But many, many inventions are monetized through licensing transactions and other third-party uses. See Ted Sichelman, Commercializing Patents, 62 STAN. L. REV. 341, 368 n. 158 (2010) (citing reports of licensing transactions in the hundreds of billions of dollars annually).
126. John F. Duffy, Rethinking the Prospect Theory of Patents, 71 U. CHI. L. REV. 439 (2004).
127. Note that while this concept may provide some theoretical support for the existence of a patent system, it is not costless, at least as the patent system is currently structured. Under the current regime, patentees need not disclose the existence of patents at the same time as they disclose their technology, thus allowing the patentee to spring its patents on a perhaps unsuspecting adopter of its technology once that technology has been widely adopted-the quintessential patent troll. See Jason A. Rantanen, Slaying the Troll: Litigation as an Effective Strategy Against Patent Threats, 23 SANTA CLARA COMPUTER & HIGH TECH. L. J. 159, 164-66 (2006) (exploring the concept of patent trolls). Furthermore, patentees may extract rents from users of their technology even if that technology was developed independently.
128. Christopher A. Cotropia & Mark A. Lemley, Copying in Patent Law, 87 N. C. L. REV. 1421, 1425 (2009) (explaining that copying is not required to prove liability for patent infringement). Consequently, the probabilistic reward of patent rights is available even to inventors who decline to disseminate their technology but later choose to assert their patent rights against those who independently developed the technology. This article does not purport to offer a solution to either type of patent trolls, merely to point out that it is logical to expect that under a patent system entities are encouraged to disclose their technology in order to hasten its adoption by others as opposed to maintain that technology in secrecy.
129. A scientific article is likely to present information in a different way from a product manual, which itself may give different insights than examining the embodiment of a self-disclosing invention. See also North American Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1580 (Fed. Cir. 1993) (Rader, J., dissenting) ("Although a patent specification may supply guidance about the meaning of claim terms [] scientific literature differs in purpose, scope, and legal effect from patent writings.").
130. See Comments to Peripheral Disclosure, PATENTLY-O, http://www.patentlyo. com/patent/2011/08/peripheral-disclosure.html (last visited July 2, 2012). This may be so, but there are also limits to the amount of information conventional disclosures can and do reveal.
131. Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 30, 125 Stat. 284, 339 (2011).
132. § 3, 125 Stat. at 286 (emphasis added).
133. U. S. C. § 102 (b) (2006).
134. Europe, for example, has a much more limited disclosure exception. See, e.g., European Patent Convention art. 55, Oct. 5, 1973
135. I. L. M. 268, 286.
136. The effect of the prior user defense may indeed be marginal. Both commentators and the patent and trademark office indicate that they believe that the prior user defense created by the America Invents Act is unlikely to have much effect. See Prior User Rights Defense: Hearing Before the H. Subcomm. on Intellectual Prop., Competition and the Internet of the H. Comm. on the Judiciary, 112th Cong. 65-74 (2012) (statement of Dennis Crouch);
137. U. S. PATENT & TRADEMARK OFFICE, REPORT ON THE PRIOR USER RIGHTS DEFENSE (2012). Yet, if the best justification for the prior user defense is that it is unlikely to have much of an impact, it is a flimsy basis for changing the law. At least as important as an understanding of the strength of the change is an understanding of its direction.
138. § 5, 125 Stat. at 197.