NONEXCLUDABLE SURGICAL METHOD PATENTS.

• Author: Anderson, Jonas

ABSTRACT

A patent consists of only one right: the right to exclude others from practicing the patented invention. However, one class of patents statutorily lacks the right to exclude direct infringers: surgical method patents are not enforceable against medical practitioners or health care facilities, which are the only realistic potential direct infringers of such patents. Despite this, inventors regularly file for (and receive) surgical method patents. Why would anyone incur the expense (more than $20,000 on average) of acquiring a patent on a surgical method if that patent cannot be used to keep people from using the patent?

The traditional answer is that although the patent statute forecloses enforcement of surgical method patents against doctors, it does allow for contributory liability of such patents by medical device manufacturers. However, this Article provides evidence of completely nonexcludable surgical method patents--patents in which direct infringers are statutorily protected from liability and contributory infringers do not exist. These nonexcludable patents challenge the widely held view that the only reason an inventor would incur the cost of patenting is to acquire the right to exclude.

To explain the existence and appeal of nonexcludable patents, this Article looks to patent-signaling theory and personhood theory of real property. Essentially, some inventors patent because they want to signal others about some aspect of the invention or the inventor. While other inventors acquire these nonexcludable patents because the invention forms part of the inventor's "public persona."

There are doctrinal payoffs to this theoretical insight as well. For instance, inventors who approach the patent system from a personhood angle bring with them a completely different set of costs and benefits than those traditionally assumed. To these inventors, the primary benefit of the patent system is the public disclosure that patenting provides. This contradicts almost all extant patent theories, which consider disclosure to be the primary cost that inventors seek to avoid. As such, this Article provides a novel understanding about the motivation to patent, an understanding that is much more concerned with knowledge dissemination and recognition for creation of that knowledge than with exclusive rights.

TABLE OF CONTENTS INTRODUCTION I. THE RIGHT TO EXCLUDE OF A PATENT A. 35 U.S.C. [section] 287(c) 1. Enactment 2. Litigation Surrounding [section] 287(c) B. The Existence of Nonexcludable Patents II. WHY DO INVENTORS PURSUE NONEXCLUDABLE PATENTS? A. Exclusive Rights Explanations 1. Ignorance of the Law 2. Better Safe than Sorry 3. Targeting Contributory Infringers B. Nonexclusive Rights Explanations 1. Signaling 2. Personhood III. THE IMPLICATIONS OF NONEXCLUDABLE PATENTS A. Theoretical B. Doctrinal 1. Operability Doctrine 2. Radical Changes to the Patent System CONCLUSION INTRODUCTION

In a well-known article, Patent Signals, Clarisa Long attacked the belief that patents are valuable to inventors only as a means of monopolizing an inventive idea. (1) She argued that patents offer more than simply the exclusive right to make and use a patented idea. (2) Patents, she argued, can serve as a signal of the patent holder's innovative nature, investment-worthiness, or some other difficult to ascertain characteristic. (3)

Long's conception of a patent's private value has provided depth to our collective understanding of the patent system. (4) Even so, Long's attack does not go far enough. Long's work challenges the idea that the right to exclude is "the alpha and the omega" of a patent's private value, (5) but it does not suggest that the right to exclude is irrelevant to patentees. (6) Far from it, Long, and those who have followed her, assume that inventors primarily desire a patent's right to exclude. Any signaling benefits that a patent possesses are merely extra reasons to patent. (7) Because of this focus on exclusive rights, scholars have generally not considered that some inventors seek nonexcludable patents. Why would anyone go to the expense of acquiring a patent that cannot exclude others from practicing the invention?

This Article suggests that a number of patentees seek out and obtain patents that lack the right to exclude. In order to make this argument, this Article relies on a unique quirk of the United States patent system. (8) Unlike every other country in the world, the United States grants patents on surgical methods, yet protects direct infringers from liability. (9) Thus, U.S. surgical method patents are unenforceable against direct infringers. Of course, surgical method patents may be enforceable against contributory infringers. Contributory infringement occurs when one supplies a substantial component of the patented invention, where the component has no substantial, noninfringing use. (10) However, some surgical method patents do not have a realistic contributory infringer. (11) These surgical method patents, which are unable to snare a contributory infringer, are nonexcludable: that is, they are unable to restrict others from practicing the invention.

Why would an inventor obtain a nonexcludable patent? After all, patents are relatively expensive to obtain. (12) Patent scholars have not considered the possibility of an inventor knowingly seeking out a nonexcludable patent. In fact, much of patent theory explicitly rejects the idea that an inventor would seek out nonexcludable patents as a mistake. Most commentary on the private value of obtaining patents assumes that the right to exclude is the patentee's objective. (13) It is thought that without the prospect of obtaining the right to exclude others from the invention (in reality, the rents promised by those exclusive rights), an inventor would be better off keeping his invention a secret or not bothering to invent in the first place. (14) It is odd, therefore, that inventors would seek to obtain these nonexcludable patents on surgical techniques.

This Article examines potential explanations for why patentees obtain nonexcludable surgical method patents, some of which comport with the exclusive rights paradigm and some of which do not. There are some reasons for obtaining these patents which follow the exclusive rights paradigm. For instance, inventors may desire the patent's right to exclude, but are misinformed about the enforceability of surgical method patents against likely infringers. Or, alternatively, the patentee might be fully aware that her patent is unenforceable, but she acquires it anyway in hopes that a potential infringer will still be dissuaded from infringing. Yet, these explanations fail to give a realistic picture of the typical patentee or the ethical obligations of patent attorneys. (15)

A further potential exclusive-rights-based explanation for why parties obtain nonexcludable patents posits that inventors know the law, but patent anyway because they are protecting themselves in the event that the law changes to allow patent suits against physicians. (16) Yet, this too is an unsatisfactory explanation for why inventors obtain surgical method patents, because the cost of obtaining a patent is likely too high to serve merely as a hedge against the unlikely event of congressional modification to the patent statute. (17)

More likely explanations exist for the continued interest in obtaining nonexcludable patents, but those explanations exist outside of the exclusive rights paradigm. These explanations are found in patent-signaling theory as well as personhood theory of property. (18)

Signaling theory holds that a patent's private value is measured not only by the rents that can be acquired from the right to exclude, but also by the value that a patent has in conveying hard-tomeasure attributes about its owner. (19) This signaling can be valuable in securing investment from outside firms because these firms may have difficulty reliably distinguishing innovative companies from noninnovative ones. (20) To the extent that patents serve as a rough proxy for innovativeness, they can be worthwhile to acquire for the ability that they have to attract investors who are seeking innovative investment opportunities. (21)

For surgeons, this signaling benefit of patenting can exist in many forms. For example, surgeons are often "user innovators"--consumers of products or techniques who subsequently reinvent or redesign the techniques used in surgery. (22) Because surgeons have firsthand knowledge regarding how to improve the surgical environment, surgeons are oftentimes better sources of surgical improvements than product manufacturers. (23) For surgeons who develop patentable surgical methods, patents may serve as a vehicle for diffusing the knowledge of the new method and identifying the patentee as the source of that knowledge. (24) Furthermore, the patent can signal the surgeon's status as an innovator to companies interested in collaborating with an innovative surgeon, either to develop and market new products or to design courses to convey knowledge about the patented method to colleagues. (25)

The widespread adoption of a new surgical technique can have pecuniary benefits, as well as psychic ones, for the inventor. (26) Often, surgeons who develop a new way of performing surgery offer classes that demonstrate the new technique for other surgeons in the field. (27) These courses can be very profitable. (28) A patent can serve as a signal to course participants that the instructor is the inventor of the technique and therefore the best source for information about the intricacies of the surgery. (29)

The personhood theory of real property law provides another explanation for the appeal of nonexcludable patents. First proposed by Freidrich Hegel (30) and later expanded upon by Margaret Jane Radin, (31) personhood theory has been used by scholars to explain other areas of intellectual property (particularly copyright)...