essay on patent law

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An Essay on the Legacy of Chisum on Patents

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Robert Merges originally wrote this essay, previously unpublished, on the thirtieth anniversary of Chisum on Patents: A Treatise on the Law of Patentability, Validity and Infringement (1978-present). Merges has generously provided Written Description with a copy. In the essay, Merges discusses the world of patent law scholarship in the 1970s and the significant effect Chisum’s treatise had within the patent community. Thirty years is a long time. In the field of patent law, especially. In our little corner of the legal world, hot topics and controversies – like the new technologies we study every day – come so fast and furious that even ten years seems an eon. (Remember the world before the TRIPS amendments? How about the big dustup in the 1990s over “equitable equivalents”?) That is why it seemed so remarkable when, one day a while ago, I happened to notice that Chisum on Patents turned 30 this year. Some milestones come and go, with nary a thought about them, like one’s 29th birthday, or the fifth anniversary of a root canal. But something about 30 years of Chisum on our shelves just caught my attention. Here was something truly noteworthy, something I could not in good conscience just let slip by. In this little essay, I want to make two points about the treatise. First, that it was, at its launching, an act of great bravado and daring – one we have all benefitted from enormously in the ensuing years. And second, that it has been not only a report or record of the many giant changes in the field since the late 1970s, but also an active agent in them – a participant, and not just a witness. Neither of these points is self-evident when one cracks open (or boots up) the current version of the treatise. What comes to mind when you think of 1978? In areas of great import, not much, I would be willing to bet. Personal milestones there were aplenty, as there always are. But on the great world stage, or at least the corner of it that cuts through the U.S., it was a lackluster year in what was in many ways a lackluster era. Inflation was 7.6%, on its way to the highwater mark of 13.6% a few years later. It was only three years after the end of Vietnam, four years on from Watergate, five years from the “first” oil shock, and only a year before the next one. Jimmy Carter was in the middle of his one Presidential term, well before he perfected the role of long-time ex-President. Popular bands included Hall and Oats and The Carpenters. The number one hit single was “Staying Alive” by the Bee Gees. The most popular TV show was “Three’s Company.” I could go on, but I won’t. The point is this: 1978, mostly a year to forget. One of the last things on most people’s minds in 1978 was technological innovation. The 1970s zeitgeist was decidedly anti-technology, partly a legacy of the 1960s (with its back-to-the-garden ethic), and partly, it seems in retrospect, because most people had neither the energy nor the optimism to show an interest in anything new and bold. The entire culture in fact seemed downright fatigued. Scholarly discourse, when it touched on technology at all, emphasized mostly negative themes: alienation, exploitation, environmental degradation.1 The geek or nerd culture associated with the advent of personal computers was still a few years away; slide-rule toting types were dismissed as “capitalist tools,” or at most hopelessly irrelevant to what was really going on.2 Into this miasma of despondence and ennui waded Donald Chisum of the University of Washington Law School of Seattle. He came bearing a new treatise on an obscure and, for many years, suspect area of law, Patents. He came with new energy and the promise of a young, eager, analytic mind. To say that he was swimming upstream would be a supreme understatement. From this distance, it looks more like he was spitting in the ocean, or even launching himself off a cliff. Of course, for a true contrarian, this was just the sort of inauspicious time that is, paradoxically, most auspicious of all. The field of patent treatises was, to put it mildly, wide open in 1978.3 For a sense of just how blank the slate was, consider that when Professor Chisum wrote his first substantive law review article on patent law in the 1970s, he was still citing for support the venerable Robinson treatise – written in 1890!4 True, there was the Deller’s Walker on Patents treatise, a comprehensive and original work when first published in 18835; but by 1978 it had long ceased to reflect the vision of a single author, and had fallen into the bloated and scattered form from which it was not rescued until Carl Moy created the modern edition in 2003.6 But while patent law as a discipline may have been thoroughly out of style in 1978, a string of fascinating issues was arrayed just along the horizon. A foreward- looking person would have noted these contemporary developments: The basic breakthroughs behind genetic engineering had just occurred (the Cohen-Boyer patent was filed in 1974, and Genentech was formed in 1976). Computer technology, driven in part by the space exploration program, was accelerating its serious penetration into business and society. The Digital Equipment Corporation (DEC), riding the wave of popularity from its pioneering PDP computers, was introducing the revolutionary VAX “minicomputer” in 1978, which not only ushered in a hardware revolution but also, perhaps more importantly, marked the advent of two pathbreaking software innovations: the Unix operating system and the “C” programming language. (Chisum’s time as an undergraduate and law student at Stanford would have brought him into close proximity to all these developments – Cohen at Stanford, along with the computer science department, and Boyer and “Berkeley Unix” across the Bay). It is interesting to look back at some law review articles Professor Chisum wrote in the period leading up to the first edition of the Treatise. In “The Sources of Prior Art,”7 published in 1975, we see a scholar growing in sophistication – and getting hooked on the intricacies of patent law in the bargain. Consider this classic example of a patent law conundrum, drawn from the ever-fascinating (and factually gnarly)8 case of In re Bass:9 The policy aspects of the Bass holding are also of interest. . . . [T]he combination of the fiction of separate inventorship and the use of prior invention as prior art means that Company M may obtain a patent only on A or on B even though its research effort and investment produced both. This may discourage some research or induce secrecy where that is possible.10 Right here in this passage, you can almost sense Professor Chisum warming to that unique combination that describes certain complex but important areas of law such as patents and tax: the marriage of conceptual and doctrinal complexity with significant questions of social policy. He was able to grasp the complex doctrinal issue in the Bass case, and explain it clearly: surely, the treatise writer’s first duty, and one he discharged absolutely faithfully, in this article and soon thereafter in the Treatise. But more importantly, he saw what was at stake in the fabric of the doctrine, why it mattered. Finding multiple inventive entities present in a single unified R&D group was illogical, and might lead to underinvestment in research. Professor Chisum saw and understood, even in the hazy days of the 1970s, that this was not good, and needed to be fixed. (It was, in 1984.) Doctrinal clarity and a willingness to say where he stands on certain difficult issues are hallmarks of the Chisum Treatise.11 His treatment of the Bass case is typical. In this as with so many other instances, he has carefully explained doctrines, pointed out irreconcilable conflicts in the caselaw, and, often, staked out a distinct position. Nonobviousness-type double patenting; product-by-process claims; even the murky waters of written description – Chisum patiently explains them all, the whole glorious field. And then often gives his readers a “bottom line.” That is the mark of a really helpful – and often, influential – treatise. The author shows authoritatively that he or she knows the field inside out. And then, on the important issues, he or she chooses a position. There are plenty of string-cites in Chisum, as he dutifully notes that “the cases are legion” on both sides of one dichotomous doctrine or another. (Reading claims in light of the specification, versus “reading in” limitations, as one example.) But frequently, in areas where the cases are seriously strained, he comes right out and chooses sides. That’s why the treatise is so valuable, and why it has endured. Chisum is not just a neutral observer. He often enters the fray (with dignity, of course – not to mention a lot of footnotes.) Another hallmark of the Chisum Treatise is perhaps less noticed, but equally important: its deep commitment to history. Chisum took the time, with each major doctrine, to trace its earliest origins, with special emphasis on Supreme Court treatment. This I think had two effects, one immediate and the other slower to develop. The immediate effect was to remind readers of the Treatise that there had been a time in American history when the highest court in the land routinely dealt with patent cases. This was not widely appreciated in 1978; the Supreme Court, with a few major exceptions (Brenner v. Manson, Graham v. John Deere, Gottschalk v. Benson), had largely absented itself from the field beginning in the 1950s. And, within the patent community, what memories there were of Supreme Court interest were not good: Justice Douglas’ assault on the field, and the generally low esteem with which patents were held by the highest tribunal during the 1940s and 1950s, had created the sense that patent law was at best a tolerated stepchild, and at worst an antiquated evil, of the federal system. (This was, after all, the highwater mark of the “patents = monopolies” period.) In this context, the field could only welcome Chisum’s concise but thorough mini-histories. Reminders that the giants of U.S. jurisprudence – Story, Taft, Holmes, Brandeis – had not only troubled themselves with patents, but often looked with favor upon them, came as a wonderful reminder of patent law’s historical importance. These little history lessons also pointed the way to a future when the status of the field would improve, and the past would be regained. In fact, they have proven enormously helpful to researchers over the past ten or twelve years, now that the Court (with a capital “C”) has re-entered the patent fray with great interest. Reading these passages, most of which were written for the first edition, it is clear exactly where Professor Chisum stood on the important policy questions that lie at the heart of patent law. When it came to whether research and development, or new technologies generally, were important enough to protect and encourage, or even worth studying at all, Chisum stood with the early giants of the U.S. patent system – Story, Fessenden, Daniel Webster, and the rest. He was for it. Technology, progress, economic growth – he was for all of it. His law review writing, and later the treatise, bear implicit witness to Chisum’s belief that the patent system was about something important. This more than anything else is what makes it so distinctive, what sets it apart from the general run of scholarly interest back in 1978. It was a seriously contrarian project at the outset. Only much later did the rest of the world – and much, much later, the legal academy – catch up with Chisum’s foresight and optimism. We who continue to learn from his treatise can be grateful indeed that he was so far ahead. It is in this spirit of praise, and pride in our shared endeavor, that I salute Professor Chisum and his Treatise for their contributions over these past 30 years. Bravo, Don! And here’s to many more years, and maybe even a few more volumes, of the best and most comprehensive treatise our fascinating field has even seen. 1. Interestingly, even the young Professor Chisum – himself a 1968 law school graduate – reveals a hint of this posture in a very early article criticizing corporate management for resisting demands of “activist” shareholders such as those who wanted to censure Dow Company for its role in making napalm. See Donald S. Chisum, Napalm, Proxy Proposals and the SEC, 12 Ariz. L. Rev. 463 (1970). 2. For a sense of what was “hot,” consider one of Professor Chisum’s first scholarly efforts. See Donald S. Chisum, In Defense of Modern Federal Habeas Corpus for State Prisoners, 21 DePaul L. Rev. 682 (1972). 3. In fact, treatises as a whole were in the process of receiving an intellectual requiem at the time. Consider this passage from Grant Gilmore, writing (nostalgically) of the days when scholars dared to consider law fixed and stable enough to venture a comprehensive treatise: Against this background of long-continued social, economic and political stability, American law had [by 1930] apparently achieved a sort of legal nirvana. The great treatises of Wigmore, Williston and others had organized, rationalized and purified the major fields into which we divide the Corpus Juris. The American Law Institute was about to complete its strange task of reducing the fundamental principles of the common law to black letter text in the Restatements. The idea of law — a stable law for a stable society — seems to have achieved an extraordinary degree of popular acceptance, among laymen and lawyers alike. Grant Gilmore, Friedrich Kessler, 84 Yale L. J. 672, 675 (1975). Gilmore’s own view, made famous in his little book The Death of Contract (1974), was that the “classical” structure of contract law was breaking down in the 1970s, and giving way to a policy mediated amalgam of contracts and torts some called “contorts.” 4. See Donald S. Chisum, Sources of Prior Art in Patent Law, 52 Wash. L. Rev. 1, 1 n. 4 (1976). It should be noted that a short, three volume treatise called Patent Law Fundamentals was first published in 1975 by Peter Rosenberg, an examiner at the PTO. Chisum did not cite this work in any of his early articles, and its appearance in 1975 did not seem to dissuade Don fro pursuing his own treatise project. 5. For those of us who first came upon the Walker treatise in its later, dissolute state, it is instructive to look at the original edition of 1883. In the Preface, the author Albert Henry Walker first notes that his new treatise covers 1256 judicial opinions, a big improvement over the prior art, the best of which covered a mere 280 opinions (plus 160 or so from Britain). Walker then writes: I began writing on the first day of May of [1881], and soon became so much interested in the work, that I largely suspended my active practice of the law, in order to give the book the freshest of my efforts, and thus the greatest degree of merit consistent with my abilities. The resulting treatise covers the entire field of the patent laws of the United States . . . down to the first day of September, 1883. Albert Henry Walker, Text-Book of the Patent Laws of the United States of America (1883), at iii-iv. These two years of concentrated effort produced a solid treatise that endured in highly serviceable form until well into the 20th century. 6. Carl Moy, Moy’s Walker on Patents, 4th Ed. (2003) and supplements. 7. Chisum, Sources of Prior Art in Patent Law, supra note 4. 8. What other case do you know of that introduces the hapless reader to both the intricacies of pre-1984 inventive entity law and such wonders of textile machinery technology as the “doffer plenum” and the “lickerin plenum”? Truly, a case only a patent wonk could love. 9. In re Bass, 474 F.2d 1276, 177 U.S.P.Q. (BNA) 178 (C.C.P.A. 1973). 10. Chisum, Sources of Prior Art in Patent Law, supra note 4, at 18. 11.  And of all the great treatises, in fact: If one judges by the great treatises of the past – Coke, Blackstone, Kent and the more modern Williston and Wigmore treatises – the sound objective of a treatise is to inject a guiding principle into the subject or to attempt to analyze the existing thinking and to classify the case material in terms of guiding principles or objectives of the law. Once such a principle is asserted or deduced it can then be applied to any fact situation by the authors or lawyers for solution of as yet undecided matters. The author, accordingly, uses the particular as illustrations of application of the general and he rejects as unsound that which he cannot explain within his theory or principle. Allison Dunham, Book Review: Nichols’ The Law Of Eminent Domain, Third Edition, 60 Yale L.J. 749, 751 (1951).

The Concept of Patent Law Essay

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• As a source of information (ensure proper referencing)
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How the Patent Law Advances Society

Effectiveness of the patent law, improving the patent law.

Patent law advances society since it prevents duplication of other people’s ideas thus stimulating innovation and invention. This leads to the creation of more advanced solutions to the problems faced in society. Furthermore, the availability of patent law protects the ideas and inventions of smaller businesses from being stolen and implemented by large and already established enterprises. This is important since it encourages economic growth and creates job opportunities in society.

The law has gained a lot of prominence during the latter years since many people have been applying for patents lately. For instance, in the United States alone, there are more than ten thousand pending patents that are still awaiting approval. This significant figure shows that many individuals in society have discovered the importance of patents as a means to secure their original ideas.

The law is effective since it enables us to enjoy the different, unique brands, such as Coca-Cola, Apple’s iPhone, and the Beats by Dr. Dre headphones. Thus, this law has brought sanity to the business and intellect world which is always full of counterfeits and plagiarism respectively.

The law can be improved by limiting the amount of government red tape involved in acquiring a patent. This will ensure that low-income earners are able to acquire patents for their ideas and innovations without being bought out by the big companies that have surplus finances at their disposal. Another improvement that can be suggested is the availing of all patents on a digital platform, thus making it easier to access and compare ideas. The availability of such information will reduce the number of cases that are fought in the corridors of justice involving violated patents.

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Op-Ed Contributor

This Essay Breaks the Law

By MICHAEL CRICHTON

• March 19, 2006

• The Earth revolves around the Sun.

• The speed of light is a constant.

• Apples fall to earth because of gravity.

• Elevated blood sugar is linked to diabetes.

• Elevated uric acid is linked to gout.

• Elevated homocysteine is linked to heart disease.

• Elevated homocysteine is linked to B-12 deficiency, so doctors should test homocysteine levels to see whether the patient needs vitamins.

ACTUALLY, I can't make that last statement. A corporation has patented that fact, and demands a royalty for its use. Anyone who makes the fact public and encourages doctors to test for the condition and treat it can be sued for royalty fees. Any doctor who reads a patient's test results and even thinks of vitamin deficiency infringes the patent. A federal circuit court held that mere thinking violates the patent.

All this may sound absurd, but it is the heart of a case that will be argued before the Supreme Court on Tuesday. In 1986 researchers filed a patent application for a method of testing the levels of homocysteine, an amino acid, in the blood. They went one step further and asked for a patent on the basic biological relationship between homocysteine and vitamin deficiency. A patent was granted that covered both the test and the scientific fact. Eventually, a company called Metabolite took over the license for the patent.

Although Metabolite does not have a monopoly on test methods — other companies make homocysteine tests, too — they assert licensing rights on the correlation of elevated homocysteine with vitamin deficiency. A company called LabCorp used a different test but published an article mentioning the patented fact. Metabolite sued on a number of grounds, and has won in court so far.

But what the Supreme Court will focus on is the nature of the claimed correlation. On the one hand, courts have repeatedly held that basic bodily processes and "products of nature" are not patentable. That's why no one owns gravity, or the speed of light. But at the same time, courts have granted so-called correlation patents for many years. Powerful forces are arrayed on both sides of the issue.

In addition, there is the rather bizarre question of whether simply thinking about a patented fact infringes the patent. The idea smacks of thought control, to say nothing of unenforceability. It seems like something out of a novel by Philip K. Dick — or Kafka. But it highlights the uncomfortable truth that the Patent Office and the courts have in recent decades ruled themselves into a corner from which they must somehow extricate themselves.

For example, the human genome exists in every one of us, and is therefore our shared heritage and an undoubted fact of nature. Nevertheless 20 percent of the genome is now privately owned. The gene for diabetes is owned, and its owner has something to say about any research you do, and what it will cost you. The entire genome of the hepatitis C virus is owned by a biotech company. Royalty costs now influence the direction of research in basic diseases, and often even the testing for diseases. Such barriers to medical testing and research are not in the public interest. Do you want to be told by your doctor, "Oh, nobody studies your disease any more because the owner of the gene/enzyme/correlation has made it too expensive to do research?"

The question of whether basic truths of nature can be owned ought not to be confused with concerns about how we pay for biotech development, whether we will have drugs in the future, and so on. If you invent a new test, you may patent it and sell it for as much as you can, if that's your goal. Companies can certainly own a test they have invented. But they should not own the disease itself, or the gene that causes the disease, or essential underlying facts about the disease. The distinction is not difficult, even though patent lawyers attempt to blur it. And even if correlation patents have been granted, the overwhelming majority of medical correlations, including those listed above, are not owned. And shouldn't be.

Unfortunately for the public, the Metabolite case is only one example of a much broader patent problem in this country. We grant patents at a level of abstraction that is unwise, and it's gotten us into trouble in the past. Some years back, doctors were allowed to patent surgical procedures and sue other doctors who used their methods without paying a fee. A blizzard of lawsuits followed. This unhealthy circumstance was halted in 1996 by the American Medical Association and Congress, which decided that doctors couldn't sue other doctors for using patented surgical procedures. But the beat goes on.

Companies have patented their method of hiring, and real estate agents have patented the way they sell houses. Lawyers now advise athletes to patent their sports moves, and screenwriters to patent their movie plots. (My screenplay for "Jurassic Park" was cited as a good candidate.)

Where does all this lead? It means that if a real estate agent lists a house for sale, he can be sued because an existing patent for selling houses includes item No. 7, "List the house." It means that Kobe Bryant may serve as an inspiration but not a model, because nobody can imitate him without fines. It means nobody can write a dinosaur story because my patent includes 257 items covering all aspects of behavior, like item No. 13, "Dinosaurs attack humans and other dinosaurs."

Such a situation is idiotic, of course. Yet elements of it already exist. And unless we begin to turn this around, there will be worse to come.

I wanted to end this essay by telling a story about how current rulings hurt us, but the patent for "ending an essay with an anecdote" is owned. So I thought to end with a quotation from a famous person, but that strategy is patented, too. I then decided to end abruptly, but "abrupt ending for dramatic effect" is also patented. Finally, I decided to pay the "end with summary" patent fee, since it was the least expensive.

The Supreme Court should rule against Metabolite, and the Patent Office should begin to reverse its strategy of patenting strategies. Basic truths of nature can't be owned.

Oh, and by the way: I own the patent for "essay or letter criticizing a previous publication." So anyone who criticizes what I have said here had better pay a royalty first, or I'll see you in court.

Essay: Studying Patent Law in 2016

3 Pages Posted: 22 Jul 2016

Janice M. Mueller

Chisum Patent Academy

Date Written: July 21, 2016

This is an exciting time to study patent law. One of its wonderful, if sometimes maddening, features is an almost constant and rapid rate of change. Patent law is never stagnant. Its evolution is driven by many factors: scientific and technological progress, public policy debate over the proper role of patents in our free market economy, the burgeoning marketplace for patents as a new class of capital asset, the rise of patent enforcement by non-practicing entities (sometimes pejoratively called “patent trolls”), recent implementation of the most significant changes to the U.S. Patent Act since its 1952 codification, a steady stream of precedential decisions from the U.S. Court of Appeals for the Federal Circuit (having nationwide jurisdiction over patent-related appeals), and increasingly frequent course corrections imposed by the U.S. Supreme Court. This brief essay highlights the challenges and opportunities awaiting students of patent law in 2016.

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Janice M. Mueller (Contact Author)

Chisum patent academy ( email ).

951 Delong Road Lexington, KY 40515 United States 8553244786 x2 (Phone)

HOME PAGE: http://www.muelleronpatentlaw.com

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