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Volume 92.6
Disclosure Puzzles in Patent Law
Jonathan S. Masur
John P. Wilson Professor of Law, The University of Chicago Law School.

For helpful comments, thanks to Sarah Burstein, Bernard Chao, Kevin Collins, Laura Dolbow, Tabrez Ebrahim, Jeanne Fromer, Jordi Goodman, Paul Gugliuzza, Tim Holbrook, Mark Lemley, Oskar Liivak, Mike Meurer, Andrew Michaels, Lidiya Mishchenko, Nicholson Price, Arti Rai, Jason Rantanen, Jason Reinecke, Michael Risch, Andres Sawicki, Jake Sherkow, and participants at the Intellectual Property Scholars Conference and the Works-in-Progress Intellectual Property Colloquium. We thank Victoria Fang, Josh Leopold, Joseph Robinson, and Marissa Uri for excellent research assistance. Masur thanks the David and Celia Hilliard Fund and the Wachtell, Lipton, Rosen & Katz Program in Behavioral Law, Finance and Economics for support.

Lisa Larrimore Ouellette
Deane F. Johnson Professor of Law, Stanford Law School.

For helpful comments, thanks to Sarah Burstein, Bernard Chao, Kevin Collins, Laura Dolbow, Tabrez Ebrahim, Jeanne Fromer, Jordi Goodman, Paul Gugliuzza, Tim Holbrook, Mark Lemley, Oskar Liivak, Mike Meurer, Andrew Michaels, Lidiya Mishchenko, Nicholson Price, Arti Rai, Jason Rantanen, Jason Reinecke, Michael Risch, Andres Sawicki, Jake Sherkow, and participants at the Intellectual Property Scholars Conference and the Works-in-Progress Intellectual Property Colloquium. We thank Victoria Fang, Josh Leopold, Joseph Robinson, and Marissa Uri for excellent research assistance.

Since its inception, patent law has required that inventors publicly disclose information about their inventions in exchange for receiving patent rights. This foundational requirement is policed through multiple doctrines: patents fail “enablement” if “undue experimentation” is needed to practice the invention, and they lack adequate “written description” when they fail to establish the inventor’s “possession” of the invention. Despite disclosure doctrines’ centrality, fundamental puzzles about their application remain unresolved. In Amgen v. Sanofi , the Supreme Court recently took up one such puzzle: Must a patent enable the full scope of the claim or merely some number of working examples? But the Court failed to address long-standing puzzles surrounding this issue. In this Article, Jonathan S. Masur and Lisa Larrimore Ouellette tackle these questions and more. The Article attempts to bring conceptual order to the disclosure doctrines, reconciling them with one another and with the broader animating principles of patent law. These puzzles must be solved if patent law is to fulfill its promises; if they are not, the resulting doctrinal gaps will expose the patent system to strategic behavior by nefarious noninventors—including those aided by new generative artificial intelligence tools—who learn how to acquire the patent quo without paying their quid.

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76.2
Claiming Intellectual Property
Jeanne C. Fromer
Associate Professor, Fordham Law School

For insightful discussions and comments, I claim appreciation to Arnaud Ajdler, Ian Ayres, Michael Birnhack, Miriam Bitton, Robert Brauneis, Dan Burk, Kevin Collins, Christopher Cotropia, Kevin Davis, Rochelle Dreyfuss, John Duffy, Brett Frischmann, John Golden, Wendy Gordon, Hugh Hansen, Scott Hemphill, Timothy Holbrook, Bert Huang, Sonia Katyal, Amir Khoury, Roberta Kwall, Jeffrey Lefstin, Mark Lemley, Douglas Lichtman, Clarisa Long, Michael Madison, Peter Menell, Joseph Scott Miller, Mark Patterson, Anthony Reese, Pamela Samuelson, Susan Scafidi, Katherine Strandburg, Polk Wagner, Tim Wu, Shlomit Yaniski-Ravid, Benjamin Zipursky, and participants at the Seventh Annual Intellectual Property Scholars Conference, 2009 Stanford/Yale Junior Faculty Forum, and in workshops at Bar-Ilan, Brooklyn, Columbia, Fordham, and George Washington law schools.

Copyright Intellectual Property Patent
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78.1
Patent Liability Rules as Search Rules
Jonathan S. Masur
Assistant Professor, The University of Chicago Law School

I thank Richard Epstein, Mark Lemley, Saul Levmore, Doug Lichtman, and participants at the Licensing of Intellectual Property Symposium at The University of Chicago Law School for helpful comments. I also thank Joe Bingham for excellent research assistance.

Intellectual Property Law and Economics Patent
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78.1
Questioning the Frequency and Wisdom of Compulsory Licensing for Pharmaceutical Patents
Richard A. Epstein
Laurence A. Tisch Professor of Law, New York University Law School; Peter and Kirstin Bedford Senior Fellow, The Hoover Institution; James Parker Hall Distinguished Service Professor Emeritus of Law and Senior Lecturer, The University of Chicago Law School
F. Scott Kieff
Professor of Law, The George Washington University Law School; Ray & Louise Knowles Senior Fellow, The Hoover Institution

A draft version of this paper was presented at the Licensing of Intellectual Property Symposium held at The University of Chicago Law School on June 18 and 19, 2010. This work is part of the ongoing Hoover Institution Project on Commercializing Innovation, which studies the law, economics, and politics of innovation and which is available online at http://www.innovation.hoover.org. We thank Kevin Outterson, Associate Professor at Boston University School of Law, for pointing out our errors in reading the emergency conditions in TRIPS Article 31 in an earlier version of this paper and Brett Davenport, New York University Law School, Class of 2012 for his prompt and expert research assistance.

Food and Drug Law Intellectual Property Licensing Patent
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81.3
Intellectual Property versus Prizes: Reframing the Debate
Benjamin N. Roin
Hieken Assistant Professor of Patent Law, Harvard Law School

Thanks to Lucian Bebchuk, Glenn Cohen, Einer Elhauge, Terry Fisher, John Goldberg, Allison Hoffman, Louis Kaplow, Scott Kieff, Martha Minow, Kevin Outterson, Steven Shavell, and the attendees at the Harvard Law and Economics Workshop, Harvard Health Policy Workshop, Harvard Faculty Workshop, University of Toronto Health Law, Ethics and Policy Seminar, George Washington Law School Conference on Government Innovation, and Michigan Law School Conference on FDA Law & Pharmaceutical Innovation. All errors are my own.

Behavioral Economics Intellectual Property Patent
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84.4
Patent Law's Authorship Screen
Kevin Emerson Collins
Professor of Law, Washington University School of Law.

I thank Scott Baker, Chris Buccafusco, T.J. Chiang, Mark Lemley, Mark McKenna, Sean Pager, Pam Samuelson, Chris Sprigman, Felix Wu, and attendees of the 2017 WIPIP Conference at Boston University for their helpful comments.

Intellectual property is not a homogeneous body of law.

Copyright Intellectual Property Patent
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84.3
The Value of Accuracy in the Patent System
Stephen Yelderman
Associate Professor, Notre Dame Law School

For very helpful comments on prior drafts, I thank Michael Abramowicz, Robert Brauneis, Margaret Brinig, Kevin Collins, John Duffy, Jeanne Fromer, Timothy Holbrook, Bruce Huber, Dmitry Karshtedt, Daniel Kelly, Bruce Kobayashi, Mark Lemley, Alexandra Levy, Jonathan Masur, Mark McKenna, Robert Merges, Lisa Ouellette, Jason Rantanen, Michael Risch, and Neel Sukhatme. I also thank Joseph Nugent for his excellent research assistance.

Today, it is an almost universally accepted proposition that the patent system makes too many mistakes.

Intellectual Property Law and Economics Patent

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