by Dan L. Burk and Mark A. Lemley, Chicago, University of Chicago Press, 2009, 220 pp., US$45.00 (hardback), ISBN 978-0-226-08061-1
Despite its title, this book is a study of the so-called patent crisis in just one country, albeit the world’s most important patent-issuing country, the US. The book has been written by two extremely well-known commentators on the US patent scene. Burk is Professor of Law at the University of California, while Lemley is Professor of Law at Stanford Law School. Their fundamental premise – and one that I agree with – is that the US is issuing far too many patents of dubious validity. The authors identify the symptoms of what is wrong with the US patent system in some detail, with examples from a wide range of specific industries. They suggest that, depending on the particular technology, patent examiners are applying the law in different, sometimes very inconsistent, ways. The book, which is supported by copious notes and references and a good index, appears to be aimed at a wide readership – patent lawyers, companies that patent, the US Patent and Trademark Office, and interested laymen. It assumes some prior knowledge of the nature of patents and of the US patent system, though the authors do explain in detail some of the economic and philosophical theories behind the patent system.
As noted at the start of this review, this book is parochial in scope, despite the fact that the US patent system is part of an international network of treaties and agreements, to which the US is bound. Another disappointing feature is the failure to explore the implications of the fact that a patent is a bargain between the inventor and the state. The state grants a monopoly for a limited period of time, but in return, the inventor must disclose all that he knows about the invention in the patent specification. Even during the patent’s lifetime, and certainly after it has expired, the patent offers detailed state-of-the-art information on the invention. Patents are supposed to be a major source, not just of technical information, but also of competitive intelligence about the technology, and about the individuals and organisations active in that technology. There is a strong argument that the vast numbers of poorly drafted, or too widely drafted, patents being published in the US are polluting that invaluable source of information. The authors mention nothing about this deleterious side effect of a poorly enforced patent system. But perhaps most surprising of all, they fail to address the most obvious solution to the large number of poor patents emanating from the US – that US patent examiners spend more time checking the prior art and rejecting or amending dubious patents. Yes, this will cost money as more patent examiners would be needed, but in my view, that would still be a genuine saving over the economic costs of uncertainty and confusion, as well as the deterrent effects on further research, caused by a profusion of dubious patents.
The book has a few minor errors. For example, it states that chemical patents typically protect a single chemical, or a new use for a single chemical, when most cover thousands or sometimes millions of closely related chemicals. The book also states that a patent issued in 1890 was Edwardian when, of course, it was Victorian. There is also occasional repetition of paragraphs between chapters.
Overall, then, this book provides useful and interesting background to the rationale for having a patent system, and provides a lot of evidence of poor patenting practice in the US. However, it fails to consider one key side effect (that of pollution of information) or an obvious solution (better patent examining). As will be clear from the book’s title, the authors argue that the best way to address some of the flagrant abuses of the US patent system is not through changing the law (and in any case, the scope for change is somewhat restricted because of the country’s international commitments), but by means of the US courts. The US courts should be a back up for addressing the US patent crisis, not the first port of call.
© 2011 Charles Oppenheim