Smart Patents

Intellectual property (“IP”) rights differ from traditional property rights in a crucial respect: the ascertainability of their boundaries. While it is usually a simple task to figure out where a traditional property right (e.g., an ownership right in a piece of land) begins and ends, delineating the metes and bounds of an IP right (e.g., a right to exclude others from practicing an invention as described in a patent claim) can be much more difficult to do.

The indeterminate scope of patent rights in particular leads to many layers of inefficiency. Downstream inventors may find it necessary to engage in costly defensive litigation to determine whether their activities infringe preexisting rights or may be chilled by the prospect of offensive litigation from engaging in these activities altogether. Uncertain patent scope also facilitates trolling behaviors: legitimate practicing entities pay rents to patent trolls because they do not know—and are unwilling to engage in expensive litigation to find out—whether their activities are infringing. As patent scholars have pointed out, these problems of indeterminacy are exacerbated both by ambiguities in the patent claiming process itself and by gaming behaviors among patent owners.

In this Article, I propose a simple set of interventions to help combat problems of ambiguous patent claiming, overreaching, and strategic behavior by patent owners. My solution calls for targeted changes to the patent application process. The suggestions for change draw from similar recommendations, grounded in the social psychology literature, that have called for the creation of so-called “smart” tax returns in the tax filing context.

The changes proposed here have several advantages over other recommendations designed to enhance patent clarity. First, they are relatively low-cost. Second, they are self-sustaining, requiring no ongoing policing or oversight. Finally, the changes proposed here need not be mutually exclusive from the implementation of any other suggestion for improving patent clarity and fighting strategic behavior previously made in the literature. Indeed, the hope is that the recommendations I put forth here can work in concert with other policy interventions to reduce undesirable patent claiming behaviors and attendant inefficiencies, while enhancing the clarity of patent boundaries.

a. Associate Professor, BYU Law School. Many thanks to Clark Asay, Dan Burk, Cathy Hwang, Dmitry Karshtedt, Mark Lemley, Jason Rantanen, Sean Tu, participants in the 2021 Intellectual Property Scholars Conference at Cardozo Law School, participants in the 2017 Rocky Mountain Junior Scholars Conference at BYU Law School, and participants in the 2017 Intellectual Property Scholars Confer-ence at Stanford Law School for helpful comments on earlier drafts.

The full text of this Article is available to download as a PDF.