Economic Perils of U.S. Patent Reform: Flexibility's Achilles Heel

Intellectual Property and Patents

Article Snapshot


F. Scott Kieff


in Patents and Technological Progress in a Globalized World, Joseph Straus, ed., Springer Berlin Heidelberg, 2009


This article reviews proposals for patent reform.

Policy Relevance

Generally, inventors’ rights need to be certain, so the inventor can plan for the future. Patent reform that gives examiners or courts too much discretion will undermine the system. Patent reforms that support certainty are best.

Main Points


  • More discretion adds uncertainty to the patent system, making it less effective.
    • Expanding pre- or post-grant patent oppositions adds uncertainty.

  • In KSR v. Teleflex, The Supreme Court said reviewers could reject a patent for obviousness without written evidence. This gives patent examiners too much discretion.

  • Patent reform that singles out industry sectors for different treatment (like abolishing software patents) also adds uncertainty as sectors overlap. 

  • Historically, weak, uncertain patent rights were not good for innovation.

  • When patent rights resemble clear property rights, small firms are able to compete with larger firms, and competition tends to grow, especially in the software and biotech sectors.
    • Clear patent rights do not contribute to a real-world problem of “thickets” because patent owners have incentives to reach agreements with others that allow the patented technology to be deployed.

  • Desirable patent reforms would include steps to discourage litigation of weak patents:
    • Allowing fee shifting (a “loser pays” rule).
    • Courts should weaken the assumption that patents are valid.

  • Patent reforms supported by large firms might reflect their interests, not the interests of innovation.

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