My research in law and policy focuses on updating patent doctrines to improve the functioning of the patent system for firms.
Technical standards, such as interface protocols or file formats, are extremely important in network industries. Under some circumstances, the assertion of patent rights against established industry standards can seriously disrupt these network industries. We describe two particularly disruptive tactics: (1) the snake in the grass, whereby a patentee intentionally keeps a patent quiet while a standard is being designed or adopted, and then later, after the standard is entrenched, asserts the patent widely in an attempt to capitalize on its popularity; (2) the bait and switch ploy where a patentee encourages adoption by offering royalty-free use of standard-related patents, and then, after the standard has gone into widespread use, begins to enforce its patents against adopters of the standard.
We propose to counteract these tactics by allowing adopters of a standard to build up a reliance interest in the standard. Non-assertion of a patent right in the presence of widespread adoption should create immunity from patent infringement. The fundamental idea behind this doctrine is to prevent strategic assertions of patents that exploit the logic of network lock-in. Recent patent infringement actions suggest that courts are beginning to take seriously these distributed reliance interests. (High Point SARL v. Sprint Nextel, Fed. Cir. 2016).
I argue for a few modest changes to the patent application process and to judicially interpreted patent law that together could significantly increase patent quality. I begin by suggesting that the United States Patent and Trademark Office increasingly receives more prior art citations by patent applicants than its patent examiners have the capacity to process. Since patent examiners are severely time constrained, they respond by simply ignoring this applicant-submitted prior art.
The increase in prior art citations is largely a response to a change in how federal courts interpret applicants’ duty to disclose information to the patent office. One of the defenses to patent infringement is to argue that the patent holder committed inequitable conduct (essentially, fraud) during the patent application process by failing to disclose important information. In recent years federal courts have made it easier for defendants to allege and prove inequitable conduct, and the influx of prior art citations by applicants is an effort to avoid these accusations.
My proposed solution involves a procedural modification that provides incentives for the patent applicant and the patent office to work together to identify the most important references. I argue that this modification would improve patent quality, reduce risks for patent applicants, and streamline patent examination. Subsequent empirical work validates many of the underlying assumptions in this article, which has been cited in the federal district court decision American Institute of Physics v. Schwegman Lundberg & Woessner (D. Minn. 2013).
I investigate the legal doctrine of patentable subject matter, one of the foundational requirements of patentability. A patent applicant needs to demonstrate that an idea is new, useful, not obvious, well described, and falls within the bounds of patentable subject matter to be granted a patent. Although at the time patentable subject matter was considered a relatively moribund area of law, signals from the Supreme Court suggested a resurgence.
I argued in part that the Supreme Court would revitalize the doctrine and use it to constrain the number and scope of patents issued in abstract technologies. Recent decisions have borne out these predictions, with the Supreme Court issuing a series of patentable subject matter decisions culminating in the landmark case Alice Corp. v. CLS Bank International (2014).