Publication Type: Conference Paper/Unpublished Manuscript
Abstract: This paper is based on an ongoing study of patent lawyers and agents who "prosecute" patent applications in the U.S. Patent and Trademark Office (USPTO).

Publication Type: Conference Paper/Unpublished Manuscript
Abstract: Until recently, patent law interested only a small community of specialized lawyers who shared a common language, norms, and beliefs. However, international controversies, such as access to medicines in developing countries and the protection of genetic resources, have encouraged new actors, especially non-governmental organizations (NGOs) such as Oxfam, MSF and Greenpeace, to enter into the patent fray and defend previously ignored interests. The NGOs have articulated a new lexicon, shifted the negotiation boundaries, and advocated for new norms.This paper presents a case study of the influence of NGOs on patent governance. Specifically, we examined the debate surrounding the amendment of Canada’s patent laws to enable the grant of compulsory licenses for the production of patented pharmaceutical products and their export to developing countries. We also examined the debate on patents and genetic resources as a control variable to identify effective discursive strategies used in the access to medicines debate.We tracked the flows and evolution of NGO discourse over time and its impact on categories of actors: the media, brand name and generics drug industries, and policy makers. We subjected fifty-five semi-structured interviews of key informants to qualitative discourse resonance analysis. In addition, we used lexicometric software to track keywords and phrases in over a thousand letters, press releases, newspaper articles, government communications, and parliamentary transcripts.Our study reveals three main findings. First, our lexicometric analysis shows that the ego-perceptions of NGOs, as expressed during interviews, tend to underestimate NGO influence on the framing of public policy debates. Second, a comparison with the protection of genetic resources case shows that, all things being equal, NGOs’ claims translated into institutionalized discourses (those which refer to the dominant knowledge-system) have a stronger resonance in public policy. Third, even though institutionalized discourses on patent law by NGOs was effective in engaging policymakers, the message was interpreted by policy makers as less radical than it truly was. This interpretation led to only incremental policy changes, paradoxically disappointing the most influential actors in the debate, the NGOs. We conclude that NGOs should not dilute their discourse into pre-existing institutionalized language.

Publication Type: Conference Paper/Unpublished Manuscript
Review Method: Peer Reviewed
Abstract: This paper introduces the notion of the "patent bully"--an established, usually large, company that sells products and holds a sizable portfolio of patents that it uses to suppress competition, gain market share, and extract rents by threatening or instituting costly patent infringement actions. In an ideal world of high-quality patents and optimal patent litigation, the actions of patent bullies would have a cleansing, almost Darwinian effect. Yet, the defects and distortions in patent examination and litigation--the exact problems that are raised constantly in the context of so-called "patent trolls"--generally apply with equal and, often, greater force to patent bullies. Nonetheless, patent bullies have scarcely been discussed in the academic literature or popular press, especially in recent years. By performing an exhaustive empirical analysis of patent litigation over the last 10 years, I show that the abusive behavior of patent bullies is a highly problematic aspect of the patent system. This is especially so, because bullies often assert their patents against innovative start-up and early-stage companies that have opened new commercial markets that the bullies desire to enter and dominate. Also troublesome, patent bullies have formed “keiretsu”-style, cross-licensing cohorts among themselves to restrain new market entrants. I suggest potential solutions, including improvements in patent office examining procedure, apportionment of damages, compulsory licensing, fee-shifting, and stronger antitrust laws.

Publication Type: Conference Paper/Unpublished Manuscript
Review Method: Peer Reviewed
Abstract: Why do young technology start-ups use (and not use) the patent system? Researchers administering the 2008 Kauffman-Berkeley Patent Survey contacted over 10,000 young companies in the software-internet, biotechnology, and medical device sectors, asking top managers about their companies' business models, innovation characteristics, and reasons for using patents. We will report on the utility to entrepreneurs of using patents for capturing profits from innovation, securing capital funding, and improving the likelihood of a successful "liquidity event," among others. The results of our survey not only offer insights into a heretofore little-understood topic, but are also relevant to those interested in seeing this dynamic segment of the economy better represented in arguments about the appropriateness of patent-system reform.

Publication Type: Conference Paper/Unpublished Manuscript
Review Method: Peer Reviewed
Abstract: It is widely recognized that the U.S. Patent & Trademark Office (PTO) is poorly informed about the prior art and, as a result, grants overbroad patents in many high-tech arenas which also happen to be the most dynamic areas for patenting activities. In emerging fields such as business method patents, software patents and the like, many commentators note that the issuance of “bad” (i.e., partially or wholly invalid) patents has actually increased.

In this paper, I examine patent granting and patent enforcing institutions, and using a game theoretic model, I formally show how partially or completely invalid patents are not likely to be corrected by the market or the courts. There are three possible outcomes once a bad patent has been granted by the PTO – it survives as if it were a good patent; it survives as a result of a private agreement with potential challengers or alleged infringers; or it gets invalidated in whole or in part by a court. Given the very high transactions costs attendant to litigation, our patent system cannot rely on just the judicial system as the only safeguard against low quality patents. In short, judicial process or market forces do not necessarily drive out bad patents. Rather, these patents survive in the market and continue to impose significant social costs and create inefficient outcomes for society.

Second, I analyze how changes in judicial costs, quality of court performance, and private transaction costs affect the probability of survival of a bad patent. As expected, higher litigation costs induce private parties not to resort to the courts and try to solve their patent problems by themselves through private agreement or re-designing their technology. Litigation costs and the quality of court performance are crucial in determining whether a bad patent is likely to be subject to a court challenge. Better efficiency in determining and invalidating bad patents induce firms to employ the court system to a greater degree to resolve their differences. Finally, an increase in private transaction costs also increases the possibility that parties will use the courts to resolve patent disputes.

Third, I present a modified model to include a third-party opposition system within the PTO. This opposition system is intended to provide fast and low cost review of patents that are currently being reviewed or have been recently granted. The existence of such a system greatly improves the performance of the patent system by drawing the patentee’s competitors and improvers into the administrative review process by offering an alternative, low-cost, efficient mechanism to reduce the number of bad patents that persist without challenge.

I also discuss how different characteristics of the opposition system will determine how successful this reform is likely to be. The design of the opposition system should be aimed at providing a low-cost and effective procedure for patent challenges. The characteristics of the opposition system—pre-grant vs. post-grant oppositions; the scope of estoppel in subsequent oppositions; the types of evidentiary procedures employed in the opposition; and implementation of a one-way, fee-shifting procedure—are all key factors that will determine the efficiency of any opposition system. Based on my model, I show that an opposition system with an effective level of estoppel concentrated around the issues brought up in the opposition panel; a rapid proceeding that permits only written submissions; and a one-way, pro-challenger/infringer, fee-shifting system will provide the basis for an effective and low-cost opposition regime.

Finally, I will present some recent data from
Japan on dual patent invalidation processes—administrative invalidation process co-existing with a court invalidation process—and what we can learn from their experience in the last three years.