The null patent.

• Author: Seymore, Sean B.

ABSTRACT

Failure is the basis of much of scientific progress because it plays a key role in building knowledge. In fact, negative results compose the bulk of knowledge produced in scientific research. This is not a bad thing because failures always produce valuable technical information--whether it be a serendipitous finding, an abundance of unexpected technical data, or simply knowledge that an initial hypothesis was totally wrong. Though some have recognized that the dissemination of negative results has many upsides for science, transforming scientific norms toward disclosure is no easy task. As for patent law, the potentially important role that negative results can play in determining patentability has heretofore been overlooked. This Article addresses these issues by proposing a new medium of disclosure called the null patent. Whereas null patents would lack claims and therefore not confer a right to exclude, they would strongly resemble other patent documents in substantive technical content and bibliographic information--thus making them amenable to technology-based classification, indexing, and open-access searching. This new medium of disclosure has potentially transformative implications for both patent law and science. Providing the Patent Office with ready access to a vast body of technical information would lead to a more thorough examination and, as a consequence, improve patent quality. Providing inventors with access to this information would allow them to gauge patentability ex ante with greater certainty. And because the null patent repository would be freely accessible, it would serve the public good by enriching the public storehouse of knowledge. Finally, null patents would promote broader policy goals shared by both science and patent law--namely, to promote technological progress through the dissemination of knowledge, to coordinate the future development of technology, and to spur innovation.

TABLE OF CONTENTS INTRODUCTION I. UNDERSTANDING EXPERIMENTAL FAILURE A. The Ubiquity of Failure in Science B. The File Drawer Problem 1. Why It Exists 2. Consequences a. For Science b. For Patent Law II. HARVESTING SQUANDERED KNOWLEDGE A. Why a Patent-Like Document? 1. Risky Alternatives 2. The Well-Established Framework of Patent Information 3. The Need to Mitigate the PTO's Information Deficit B. Incentivizing Disclosure 1. The Challenge 2. A Straightforward Scheme for Knowledge Capture 3. Quid Pro Quo Incentives 4. The Special Case of Federally Funded Research 5. An Exceptional Tool for Defensive Publication III. USING THE LIBERATED KNOWLEDGE A. The (Often Overlooked) Role of Failure in Patent Law 1. Novelty: A Patent-Obtaining Role a. The Basic Test b. Experimental Failure and Indirect Enrichment of the Public Domain 2. Nonobviousness: A (Predominantly) Patent-Defeating Role a. The Nonobviousness Standard b. Experimental Failure: Indirect Protection of the Public Domain 3. Enablement: A Patent-Obtaining or Patent-Defeating Role a. Statutory Enablement b. Failed Experiments and the Public Storehouse of Knowledge B. Benefits of the Proposal 1. It Will Improve Patent Quality 2. It Will Promote Broader Policy Goals of Science and Patent Law C. Potential Objections and Implementation Concerns 1. Technical Junk and Nuisance Prior Art 2. Administrative Burden CONCLUSION INTRODUCTION

A fundamental goal of the patent system is to encourage the dissemination of technical knowledge. (1) As soon as a patent document publishes, (2) there is hope that the public will use the technical details disclosed therein to improve upon the invention, to design around it, or to engage in other innovative activities. (3) Although the patentee maintains the right to "exclude others from practicing the invention until the patent term expires, the technical information disclosed in the patent document has potential immediate value to the public, which can use the information for any purpose that does not infringe upon the claims." (4) This supports the patent system's broader mission to promote scientific progress and extend the frontiers of knowledge. (5)

But another important goal of the patent system is to protect knowledge already in the public domain. (6) Two statutory patentability requirements, novelty and nonobviousness, accomplish this task. (7) Each requires a comparison of the invention that the applicant seeks to patent with the "prior art," which refers to preexisting knowledge and technology already available to the public. (8) Novelty ensures that an invention is truly new, (9) meaning that a patent will not issue for an invention that "is identically disclosed ... in the prior art." (10) In contrast, nonobviousness ensures that an invention is "new enough," (11) denying patentability for trivial extensions of what is already in the public domain. (12)

Given that novelty and nonobviousness both involve prior art, a patent examiner reviewing an application needs a complete picture of extant knowledge in the public domain. When this is not the case, the patent system cannot fulfill its constitutional and statutory mandate to extend patent protection to inventions that actually enrich the public domain. (13) In recent times, the U.S. Patent and Trademark Office (PTO) has come under fire for issuing a large number of "bad" or low-quality patents that fail to do so. (14) Several commentators contend that one cause is the patent examiner's failure to obtain or consider the most relevant prior art. (15) This is a persistent topic in debates over patent reform. (16)

The importance of extant knowledge in the patentability analysis makes one wonder how many patents would issue if an examiner had complete knowledge of the state of the relevant art. Although omniscience is impossible, it is certainly possible to expand the quantity of technical knowledge available to the examiner. One way to do this is to tap into the vast body of negative results that constitute most of the information generated in scientific research. (17) Perhaps counterintuitively, this information can play an important role in determining patentability. (18)

At present, there are several obstacles that make it hard to collect this information and put it into the examiner's hands. First, for a variety of reasons, the prevailing norm in science is not to publish details about failed experiments. (19) Second, even if this information were to make its way into the mainstream technical literature, examiners are much more likely to gauge patentability in light of prior patents or published patent applications. (20) This makes sense because examiners are familiar with patent documents and have easy access to them. (21)

Thus, the challenge is to figure out how to both liberate information about experimental failure and to package it in a format amenable to patent searching, as well as for broader dissemination to society. This Article explains how to do just that. Recognizing that the legal system lacks a structured mechanism for capturing and disseminating negative information, (22) it proposes the creation of a new medium of disclosure called the null patent. (23) Although it would lack claims and therefore not confer a right to exclude, (24) the null patent would strongly resemble other patent documents in its substantive technical content, bibliographic information, and conformity to formatting conventions. (25) And although they would not be examined, null patents would be indexed by technology, making them amenable to open-access searching akin to, and perhaps concurrent with, the PTO's own patent databases. (26)

This proposal has potentially transformative implications for both patent law and science. Providing the examiner with ready access to a vast body of technical information would lead to a more thorough examination and, as a consequence, improve patent quality. (27) Providing inventors with access to this information would allow them to gauge patentability ex ante with greater certainty. (28) And given that the liberated knowledge would be freely accessible to all, it would promote the public good (29) and further the patent system's broader policy objectives: to reduce R&D waste, spur creativity, and ultimately extend the frontiers of science and technology. (30) As for science, there is hope that by raising the profile of negative results, this proposal will induce a change in scientific norms toward heightened disclosure and broader dissemination of technical knowledge.

This Article proceeds as follows. Part I explores the roots of the norm of nondisclosure of negative results in science and the adverse consequences for both science and patent law. Part II begins by discussing why the null patent is the best mechanism not only for harvesting negative results from the sea of squandered knowledge, but for ensuring that the captured information is both easily accessible to the PTO and readily disseminated to the scientific community and the interested public. This Part then describes how to incentivize researchers to disclose negative results by offering a straightforward scheme for knowledge capture and identifying specific inducements that would motivate individual researchers to participate. Finally, Part III explores the fruits and broader impact of the liberated knowledge. It begins by describing the important and often underappreciated role of negative results in patent law and how implementing the proposed regime could improve patent quality and promote broader policy goals of patent law and science. This Part concludes by responding to possible criticisms and concerns.

1. UNDERSTANDING EXPERIMENTAL FAILURE

   1. The Ubiquity of Failure in Science

      An experiment fails when it does not produce the expected outcome. (31) This can happen because of poor experimental design, sloppy research technique, a flawed hypothesis, or for reasons unknown:

      No matter how well understood the theories leading up to the experiments are or how...