Associate Professor, Fordham Law School. A portion of this work was completed during fellowships with the Yale Law School Information Society Project and the New York University School of Law. For instructive discussions and comments, many thanks to Arnaud Ajdler, Jack Balkin, Lily Batchelder, Joshua Blank, Joshua Civin, Susan Crawford, Kevin Davis, Erin Delaney, Rochelle Dreyfuss, Noah Feldman, Robin Feldman, Lauren Fletcher, Mark Geistfeld, Heather Gerken, Scott Hemphill, Bert Huang, Adam Jaffe, Marcel Kahan, Sonia Katyal, Mark Lemley, Saul Levmore, Douglas Lichtman, Deborah Malamud, Florencia Marotta-Wurgler, Kathy McKeown, Jon Michaels, Arthur Miller, Garrett Moritz, Allison orr, J.J. Prescott, Michael Rader, Arti Rai, Henry Smith, Scott Stern, Jeannie Suk, Tim Wu, and Alexander Volokh; as well as to participants in faculty presentations at Boston College, Cardozo, The University of Chicago, Cornell, Duke, Fordham, New York University, Northwestern, and The University of Pennsylvania law schools and in the Patents and Progress Conference at the DePaul Center for Intellectual Property Law and Information Technology. Page 541
Patent law is premised on the onward march of science and technology. The Wright Brothers, for example, observed birds in flight, which they then sought to replicate by building gliders with wings that warped in flight to turn and maneuver.1 standing on the shoulders of the Wright Brothers,2inventors innovated further by creating the jet plane, the seaplane, and surveillance aircraft. Patent law encourages this cumulative innovation, both by dangling the patent right before the inventor as an incentive to invent in the first instance and by requiring him to disclose his invention to the public so that science can progress by building on the divulged knowledge. This stimulation lies at the heart of the patent laws that Congress enacted based on its constitutional power "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."3
Patent disclosure is essential. Imagine a world without it, in which the Wright Brothers invented the airplane, successfully tested it in remote Kitty Hawk, North Carolina, without being observed, and secured a patent on their undisclosed invention. They then hired scientists and developers to the newly formed Wright Brothers Airlines to commercialize their invention. Under the rubric of their patent, they do not allow anyone else to make, use, or sell aircrafts; they, and only they, operate airline flights. No one outside of Wright Brothers Airlines has an opportunity to understand the workings of the airplane, which are hidden by its casing, and develop it any further. In this world of undisclosed knowledge, science stalls, or at the very best, marches on slowly. By contrast, patent disclosure indirectly stimulates future innovation by revealing the invention's design so that others can use it fruitfully when the patent term expires and design around, improve upon, or be inspired by the invention, even during the patent term.
The danger of undisclosed scientific and technological knowledge slowing scientific progress is substantial. Judicial decisions and nearly all legal scholarship on patent law have therefore, not surprisingly, consistently cited disclosure's critical role in the patent system, but they do so without much theoretical or institutional analysis.4 The literature that does address Page 542 patent disclosure tends to focus on the doctrinal rules.5 Though some scholarship occasionally contains mention of patent disclosure's purpose of promoting innovation6 and that the promotion may not be adequate,7 there has been very little theorizing on the place of disclosure in the patent system. Nor has there been substantial analysis of the structure and content of invention disclosure. This means there has been surprisingly little investigation into whether the patent system serves its purported purpose of disclosing new inventions adequately to the public, and in particular, to the experts who can build on this information for further innovation. similarly, while there is debate in the economic literature about how to strike the right balance in the patent system between stimulating innovation and minimizing deadweight loss, both sides of the debate tend to assume the gold standard of disclosure is effectuated.8
The rare scholarship addressing the issue of patent disclosure suggests that disclosure is, and ought to be, of almost no importance in designing the patent system.9 In this Article, I disagree with this scholarship and devote Part II to explaining patent disclosure and arguing in favor of its centrality in the patent system. Given this deserved centrality, I maintain that patent disclosures should be, well, patent, so that inventors can use them to culminate scientific and technological progress more effectively, thereby fulfilling the underlying premise of the patent system-stimulating innovation. I agree with the conclusion of previous works that disclosure is Page 543 underperforming in this regard.10 However, those works have not focused on a number of critical, systemic factors that contribute to disclosure's current inadequacy in the patent system. Nor, given their conclusions on the minor significance of patent disclosure, have those works addressed how to invigorate patent disclosure.
I contend in Part III that there are four systemic reasons why the disclosure function has underperformed, and I suggest improvements to strengthen patent disclosure. First, there is what I call an inadequacy of "the writer," in that interested readers of the patent document are not able to glean truly useful information from it. Though the patent document is often the only source of information about an invention, it is not currently structured to serve disclosure by forcing writers to include useful information. Fundamentally, the patent system intends the disclosure to have two types of audiences-legal and technical. The legal audience is looking to understand the scope of the right to exclude, while the technical audience is looking to understand the invention for purposes of further innovation. Despite the dual audiences, technical and legal information are confusingly intertwined in the document and must be teased apart for each layer to speak most fruitfully to its audience. I suggest making the technical layer separate from the legal layer and then constructing the technical layer to contain useful technical information. I suggest doing this by injecting useful redundancies into the technical layer and by more conscientiously, and specifically, mandating the structure of the technical layer.
Even if the technical layer is well constructed by the writer, there is a second point of inadequacy in disclosure called the inadequacy of "the index"-the difficulty of finding relevant patent documents in the repository of patent documents. one simple way to ameliorate this problem is to immerse the patent documents for a particular technological field in that field's principal databases or libraries. This inclusion would lead researchers to browse or search through the relevant patent literature. Such incorporation of the patent literature is already done in the field of chemistry, which logically explains why chemical research relies on information in patent documents significantly more than in any other technical field.11 Moreover, the process of searching patents might be vastly improved by rethinking the classification scheme for patents to group similar patents together for easier retrieval.
Supposing the first two inadequacies were repaired, there nonetheless remains a third systemic problem-the inadequacy of "the reader." As legal scholars have already observed, the patent system offers a strong legal disincentive to read others' patents in the first instance. The disincentive comes from the rule of willful infringement, which when found, can lead to Page 544 treble damages in patent infringement cases.12 Therefore, to avoid the possibility of increased damages, researchers are routinely advised not to read others' patents. This disincentive needs to be removed and perhaps even replaced with incentives to read patents in the first instance to stimulate innovation.
Finally, a fourth systemic inadequacy is enforcement. Due to limited resources, skewed incentives, and too-abstract guidelines, the Patent and Trademark Office ("PTO") regularly grants patents that do not meet current standards of disclosure. The only way to challenge inadequate disclosure post-patent issuance is during litigation by asserting a defense to patent infringement based on invalidity of the patent.13 Because disclosure of a patented invention has value to innovators independent of their desire to use-that is, infringe the patent of-the invention, because so few patents are litigated for infringement, and because many non-litigated patents might be informationally valuable, litigation is an inadequate and disjointed place to enforce adequate disclosure systemically. To enforce the adequacy of disclosure, it should be possible-through the PTO during and after the application process or through the courts post-patent issuance-to challenge and enforce the adequacy of disclosure...