For more than a generation, learned monographs have poured forth from constitutional theorists who bring insights from such diverse realms as literary criticism, philosophy, linguistics, and political economy to bear on the problem of finding consistent principles for deciding constitutional disputes.  In Rethinking Patent Law, Professor Robin Feldman of the University of California’s Hastings College of Law applies similar analytic tools to patent law.  Like the constitutional theorists, Professor Feldman succeeds in illuminating aspects of the subject area that are seldom noticed by judges, legislators, and practitioners, and offers  ideas that could be useful in deciding some of the hardest cases. But also like the constitutional theorists, she fails to offer a theory having general applicability over a broad swath of her subject area.

Professor Feldman’s central insight is her emphasis on what she calls the “bargain aspect” of patent law.  This is distinct from the traditional model of the “patent bargain,” in which an inventor is given a period of exclusivity in exchange for full and prompt disclosure of the invention.  “Rather than delineating a patent holder’s rights,” Feldman posits, “a patent creates no more than an opportunity to bargain.  It is an invitation to enter into the process of negotiating a definition of rights.”  Thus, the negotiation that takes place between the inventor and the Patent Office during the application process continues for the life of the patent, with all sorts of additional parties participating in the process—”future innovators, whose creations will form the questions that help define the boundaries of the rights,” potential licensees, public-interest patent busters, non-practicing entities, and of course judges and litigants.  It is only retrospectively, after this process had reached its conclusion upon expiration of the patent, that the patent holder’s rights are fully determinable.

Feldman’s description of the back and forth over the life of a patent will ring true to practitioners.  Indeed, the parts of her book that are descriptive of present-day patent gamesmanship, especially in Chapters 2 and 5, are remarkably clear-eyed and sophisticated.  But what many see as a troublesome bug in the system, Feldman assures us, is a actually a necessary feature.  The bargain aspect of patents, she argues in a much less persuasive theoretical discussion, is an inherent result of three factors: First is the lack of shared conceptions for new creations, the novelty required of a patent “deprives us of an opportunity to have developed a shared conception to which we as a society are committed.”  Second, there are limitations of language, “the patent system is relying on language to serve as the basis for understanding something that did not exist when the language developed.”  Finally, there is what Feldman calls “the weakness of fixation in time,” i.e., “the inability to describe the boundaries of something without the knowledge of things that have yet to be developed.”

Although Feldman allows that some patents cover inventions that are merely incremental variations on the familiar as to which these constraints are not so significant, she seems to think most patents “fall closer to the Higgs boson end of the spectrum.”  I dare say most practitioners would agree with me that Higgs bosons are as rare in the patent world as they are elusive in the natural world.  The example Feldman uses to illustrate the bargain aspect of patents in action, the long-running litigation over patents on magnetically-attached flip-down sunglass lenses, serves to diminish the importance of her theoretical arguments.

Whether one sees the bargain aspect of patents as inherent in the nature of time, space, and language, or more mundanely as a manifestation of the inability of legislative and common law processes to keep pace with innovations in technology and business (the “Whack-a-Mole” aspect of patent law), the second half of Rethinking Patent Law makes a compelling case for its utility as a theoretical model.  Feldman addresses some of the knottiest present-day issues in patent law—patentable subject matter, patent misuse, and genomic-realted patents—and generally argues for outcomes that will be the least destructive to a healthy, even-handed bargaining process.  (Here, Feldman brings to mind the constitutional theorist John Hart Ely’s Democracy and Distrust (1980), which rejected “clause-bound interpretivism” and conceived the Constitution as a process-related document, designed to keep the channels of political change clear and protect the powerless.) Notably, these are all issues delineating the outer boundaries of patent law; Feldman has relatively little to say on core substantive issues like claim construction, written description, enablement, obviousness, and the like.

There will, of course, be ample room for disagreement as to which legal rules will lead to the healthiest patent marketplace, but Feldman has started a very worthwhile discussion.

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