texte original http://eupat.ffii.org/10/03/bessen/
Jim Bessen: Do Patents Work as Property?
Review of a Lecture at Duke Law School
Jim Bessen and colleagues found by statistical analysis that innovators are nowadays, unlike 20 years ago, losing more money by patent litigation than they are gaining from patent royalties. Bessen correlates these findings to changes in patent law which made the boundaries of patents more fuzzy.
1 Replace “Fuzziness of Boundaries” with Breadth and “Boundary Ascertaining Costs”!
In his lecture at Duke Law School, Jim Bessen presents the findings of a recent work which we discussed on our mailing list a while ago. We found this that this work unprecedentedly high quality evidence to the debate about patent reform, but had doubts about the message regarding some of the conclusions drawn therefrom. In particular in the lecture Jim Bessen seems to overestimate the importance of the question of clarity vs fuzziness of the boundaries of invention-based property claims.
As an example of fuzzy boundaries, Bessen cites the Freeny patent which its owner E-Data Inc used after it had been dormant for 15 years to squeeze money out of thousands of e-commerce developpers. The patent claims contained an abstract notion “point of sale” which some courts construed as referring to dedicated music vending machines whereas others said that it covered any computer to which digital content might be downloaded. Other spectacular cases of this kind include the patent that British Telecom asserted against hyperlinks and the “Rembrandts in the Attic” that were asserted against the JPEG standard.
In the discussion after the lecture, some members of the audience express doubts about the correlation of the findings from the statistical analysis with the appearance of fuzziness due to abstract claims. It is suggested that
These proposals take account of the fact that patent offices are unable to provide the service of determining clear and stable boundaries for invention-based property titles at a reasonable price. Rather than burden every patent applicant or even the public with these unreasonable costs, it is better to place the burden only on those applicants who want to assert dangerously broad claims, to provide cheap and efficient enforcement to those right holders who are satisfied with narrow claims, and to reward those members of the general public who are able to sweep away patent mines or to provide validity insurance services at a competitive price.
5 Resources
Jim Bessen: Do Patents Work as Property?
Review of a Lecture at Duke Law School
Jim Bessen and colleagues found by statistical analysis that innovators are nowadays, unlike 20 years ago, losing more money by patent litigation than they are gaining from patent royalties. Bessen correlates these findings to changes in patent law which made the boundaries of patents more fuzzy.
1 Replace “Fuzziness of Boundaries” with Breadth and “Boundary Ascertaining Costs”!
In his lecture at Duke Law School, Jim Bessen presents the findings of a recent work which we discussed on our mailing list a while ago. We found this that this work unprecedentedly high quality evidence to the debate about patent reform, but had doubts about the message regarding some of the conclusions drawn therefrom. In particular in the lecture Jim Bessen seems to overestimate the importance of the question of clarity vs fuzziness of the boundaries of invention-based property claims.
As an example of fuzzy boundaries, Bessen cites the Freeny patent which its owner E-Data Inc used after it had been dormant for 15 years to squeeze money out of thousands of e-commerce developpers. The patent claims contained an abstract notion “point of sale” which some courts construed as referring to dedicated music vending machines whereas others said that it covered any computer to which digital content might be downloaded. Other spectacular cases of this kind include the patent that British Telecom asserted against hyperlinks and the “Rembrandts in the Attic” that were asserted against the JPEG standard.
In the discussion after the lecture, some members of the audience express doubts about the correlation of the findings from the statistical analysis with the appearance of fuzziness due to abstract claims. It is suggested that
- The patent system is a system that works well as long as it is not being put to serious use; when many people obtain patent rights and get serious about litigating, the system breaks down.
- Post-grant opposition is not significantly different from invalidity litigation; just the fact that the patent office offers this service does not make it less costly in terms of manhours; more importantly, the resulting patents may be somewhat narrower and clearer, but they are also more dangerous weapons than the untested broad patents.
- Private parties who have found a patent claim set to be invalid can, by a pre-trial cease-and-desist admonition procedure (‘Abmahnung’ in Germany) request the patent owner to remove or correct his claims and to reimburse the costs of examination and admonition incurred by the sender.
- Patent descriptions are immediately published upon registry; an initial set of claims is added 1 year later; these can subsequently be narrowed, but not broadened.
These proposals take account of the fact that patent offices are unable to provide the service of determining clear and stable boundaries for invention-based property titles at a reasonable price. Rather than burden every patent applicant or even the public with these unreasonable costs, it is better to place the burden only on those applicants who want to assert dangerously broad claims, to provide cheap and efficient enforcement to those right holders who are satisfied with narrow claims, and to reward those members of the general public who are able to sweep away patent mines or to provide validity insurance services at a competitive price.
5 Resources
- EUPAT mailing list for followup discussions
- * Influential papers of Jim Bessen in this area that we previously discussed
- o Bessen & Meurer 2008: Patent Failure – How Judges, Bureaucrats and Lawyers put Innovators at Risk
- o Bessen & Hunt 2003
- o Bessen & Maskin 2000