Peripheral Disclosure

By Jason Rantanen

This week I will be attending the Intellectual Property Scholars Conference, where I will be enjoying many other IP scholars' work, some of which I will discuss in subsequent posts, and presenting my own work in progress entitled Peripheral Disclosure.  In this Essay, I argue that that the disclosure function of patents has been greatly undervalued, not because patents succeed at forcing inventors to disclose useful information about their inventions in the patent document, but because patents free inventors to voluntarily share information about their inventions in forms other than the patent itself while retaining the ability to monetize their inventions.  

The abstract is below.  For those who are interested, a copy of the paper is available on SSRN here (it's currently a relatively short piece).  As this project is very much a work in progress, all comments are appreciated.

Peripheral Disclosure

The requirement that inventors disclose their inventions in return for a patent is one of the primary justifications for the patent system. Yet that justification has been subject to substantial criticism, and with good reason. Conventional disclosure scholarship focuses on inventor’s disclosure within the patent itself, a document that often fails to provide meaningful information to others. As a result, conventional disclosure theory has largely been relegated to the category of a straw man that scholars address perfunctorily when criticizing the patent system.

This Essay rejects the idea that patents serve little to no disclosure function, not by demonstrating that patents themselves convey useful information, but by pointing to other information exchanges that would not occur but for the existence of a patent system, a concept I call "peripheral disclosure." This information plays a critical role in encouraging prospective technological invention. In essence, I argue that the greatest benefit of patents is not in the information they contain, but rather in the numerous peripheral disclosures they permit, from scientific papers about new inventions to marketing materials containing technical content to the informational benefits of self-disclosing inventions. Without patents, none of these disclosures – all of which may provide crucial information to future inventors – would be possible.

Update: DePaul law student Daniel Rogna will be live-blogging IPSC at http://ebookisms.com/category/ipsc/. This is a terrific conference to follow, as it is frequently a forum where  significant new scholarship is revealed, such as last year's Lemley, Cotropia, Sampat piece on applicant submitted prior art.

31 thoughts on “Peripheral Disclosure

  1. Nicely done. Here’s a real world example of “peripheral disclosure”:

    A “self-disclosing” invention which, thanks to patent protections, is disclosed and described in a worldwide media campaign just after application filing in 1998.

    The invention is a utility patent that will make the internet faster, more secure, and increase bandwidth capacity by transferring data across the internet more efficiently. In addition, it will enable unprecedented precision and security in military applications and communications by providing “real-time” data transmission.

    The general consensus of experts in the tech industry (determined by informal polling over the next several years), is that the invention is “before its time”. In other words, there is enough capacity, speed and security on the internet for now, and companies are not interested in re-tooling the core infrastructure of the internet… yet.

    Nevertheless, thanks to patent protections (patent was finally issued in 2001), continuing disclosure efforts were financed over the next decade, and top level IP attorneys and engineers at major tech companies are on the record as having reviewed the patent as well as marketing disclosures about the invention.

    Fast-forward:

    2005-2008 – IEEE codifies the described invention into newly revised internet protocols as the internet begins to experience severe speed, capacity and security issues. (IEEE members include top level IP attorneys and engineers at major tech companies.)

    2008-2011 – DARPA rebuilds its entire communications network from the ground up, incorporating the “real-time” data transmission capabilities described in the patent. (Remember the “real-time” viewing of the Bin Laden raid from the White House Situation Room?)

    I’m sure there are countless more real world examples out there.

    Thanks for all your work on this terrific paper.

  2. let me revise my comments about the role of patenting in product marketing because there is some IP related information that is commonly given out. when you are doing pre-product release marketing, you tend to do a lot of discussions by nda. but after the product is released (especially if it is a product that is intended to sell in any volume), it would be prohibitively expensive (and impractical) to do all business by nda.

    in the semiconductor industry, after product release, you you have to provide enough information in the marketing materials to allow a potential customer to design-in your product. here you really do run into IP related information. for example, when the product is a processor IC, the data sheets have to provide (among other things) the instruction set for the processor. in general, you have to provide enough information in the data sheets to allow a potential customer to do design and debug in their systems (this includes architectural block diagrams, timing charts and a host of information). while patent protection isn’t necessarily essential here (because there is still a bunch of detail information that you don’t give out) it is certainly prudent to take advantage of patent protection if it is available. furthermore, patent protection will make vendors more willing to divulge more information. this not only benefits the customer, who can make better and more informed decisions, but it helps vendors by reducing the amount of interaction that is necessary with potential customers. so here, patent protection enables greater economic efficiency.

  3. i agree with the basic premise of peripheral disclosure, but i don’t fully agree with the presentation in this paper.

    let me make a quick aside, referring to the criticism of patent applications as presented in pages 9-10; i think that the biggest problem with patent applications as a source of meaningful disclosure is that they tend to not be written by actual inventors, but are often instead written by attorneys who are actually writing for a litigation audience.

    so, i agree that patents do assist in the dissemination of information because companies feel more free to make advantageous disclosure of information if they feel that they have some assurance that the disclosure does not cause them to lose that advantage. however, historically much published scientific research was concerned with basic research topics. patents don’t help there because basic research is often not patentable. that said, my guess is that corporations do a lot less basic research than they once did (to the detriment of society and technological advance in my opinion but those are the breaks i suppose).

    starting on page 17, you make assertions that patents are useful for dissemination of information in the context of product marketing. the stuff that you are describing doesn’t square with my experience in product marketing. product marketing literature tends to be substantially different from the stuff that you see in technical journals. product marketing literature is often p.r. and collateral materials whose purpose is to promote product features and benefits. it’s teaser information whose purpose it is to prompt prospective customers to inquire for more information. the prospective customer is typically screen based on various qualification criteria and pre-screened customers who seek additional (i.e. more technical detail) information will typically get that information under a non-disclosure agreement.

    i noted your example about the beer dispenser gizmo, but i doubt that the existence of patents was truly critical to the marketing strategy. in the absence of patents, the marketing people would have crafted a message that focused on the benefits (economic and otherwise) of the gizmo to customers. economic benefits tend to be the very kind of thing which is NOT patentable. on the other hand, if you have novelty (and non-obviousness) in a ridiculously (economically) impractical invention, you can still get a patent, even if no one would ever want to buy such a thing.

    i also noted your comments about technical papers published by dow chemical. i haven’t seen the papers, so i can’t comment, but i would encourage you to not assume that there would not be any technical papers in the absence of patents. technical papers have long been the practice when dealing in products sold to a technical customer base. these papers include application notes whose purpose it is to show you how to use a company’s product in customer usages and systems. again, if further detailed discussion is requested by a prospective customer, in the absence of patents, these discussions can be conducted under nda. i noted your comments about the limitations of nda’s but if you are under an nda and “spill the beans” to a third party, you can still get hammered.

    your article makes mention that patents give owners of inventions an incentive to get others to adopt their inventions at the top of page 16 and middle of page 21. i think that you are on to a bit more than you have disclose (or may think). here i think you are dancing around a very important area which has benefited from patent protection – industry standardization activity. but unlike the perspective that you take in your paper, much of the motive for industry standardization came not from inventors but from customers. but industry standardization requires that competing vendors share information. what incentive would they have to share information if they could not protect some right in the information that they are sharing. so in an industry standardization scheme, the parties agree to disclose when their contributions are subject to patent protection and they are required to provide free access to the use of their information by others in exchange for reasonable royalty. while industry standardization has not eliminated proprietary features in products, it has had significant impact in the marketplace. i doubt that this would have been possible without the availability of patent protection. i might suggest that in a future revision of this paper you might want to study this area more closely.

    this isn’t my blog and this post is getting long, so i will end it here to see whether there are any comments.

  4. I totally agree with the article. In fact, in my experience many inventors/companies rush to file patent applications (especially provisional patent applications) so that they are in a position to discuss the details of their respective inventions in order to obtain investment, potential sales, evaluate marketability, etc.

  5. At least in the pharmaceutical arena, it is quite common to have much useful information disclosed only in “peripheral disclosures.” A patent application is typically directed to a composition of matter, often with scant information on biological parameters (binding, pharmacokinetics, and the like) and no efficacy data in either animals or humans. Part of this is strategic — having too much data is rarely useful — and part is simply a matter of timing. The application is filed before a full data package is developed. Indeed, the decision on the final candidate drug (from among the numerous compounds disclosed in the patent) is often not made when the patent application is filed. However, as the product moves forward there is significant pressure to make “peripheral disclosures” that fully detail efficacy, clinical trial results, pharmacology, pharmacokinetics, and the like. During the clinical trial phase of drug development, pharma companies have to “market” the drug to key opinion leaders, many of whom are pivotal in clinical trials, drug evaluation panels, etc. Once approval is obtained (or on path), scientific disclosure is necessary to market to physicians and others in the marketing pathways.

    I’d say that the thesis is pretty obviously correct in the pharmaceutical fields.

  6. “I love when the prosecutor throws in that the computer has a processor, memory and even a hard drive. WOW, that is helpful”.

    We only do that because we have to. Everyone knows what a computer typically includes, but if we don’t put that boilerplate in, then we get zapped for lack of written description.

    Also, the clients would love to include the actual source code, but know that if they did it would probably get pirated. Mind you, I did once submit source code on a disc, but it was for something that ran on a server, so perhaps slightly less likely to get ripped off.

  7. Wouldn’t it be easier to save everyone grief (even those who suffer in silence) by your not posting to begin with?

  8. When I was a programmer, I remember doing stuff with pseudocode, etc. According to prosecutors, all you need are a bunch of boxes.

    That’s because “anybody can write the software”.

    But that doesn’t make it more obvious. No sir. People might have described collecting data on television shows that people watched, but they didn’t collect data on stuff that people did NOT watch! And they may have collected data on the age of people, but they didn’t use a computer to sort by age AND race! <— typical genius argument in 2100 art unit

  9. I love when the prosecutor throws in that the computer has a processor, memory and even a hard drive.

    Good thing the patent system encourages the disclosure of those peripherals.

  10. “I haven’t read the article, but I do not fully understand…”

    that was about where I stopped reading the comment.

  11. You mean where the patent tells you the results and then says that it is done on a computer, which is illustrated with no more than few boxes? What more could you want?

    When I was a programmer, I remember doing stuff with pseudocode, etc. According to prosecutors, all you need are a bunch of boxes.

    I love when the prosecutor throws in that the computer has a processor, memory and even a hard drive. WOW, that is helpful.

  12. even if that were legally required.

    Actually, this statement is a greater driver than being appreciated.

    A patent application is meant to be a legal document and is necessarily driven by the requirements and purpose of that document.

    It is simply a mistake to even think that a patent application is meant to be an exhaustive blueprint.

  13. Re: “many technology companies from the smallest to IBM take the attitude that even though the peripherally disclosed subject matter is protected by the patent, they don’t want to make it easy for competitors to understand their invention.”
    I think this is a good example of the current American tendency, including academia, to explain everything on the basis of unfounded conspiracy theories. Yes, claims are often written ambigously broadly, but why would any competent patent attorney want to deliberately write patent specifications with fatal defects in meeting all the 112 requirements including enablement, best mode and a description of the invention? Why would any rational company risk having such a deliberately devious patent drafting policy exposed in litigation to prejudice a judge and jury against their patents?
    Furthermore, if all the inventor provides to the patent attorney is a half-baked bare conception, as often happens, one is not going to get detailed blueprints on how to make it in a patent specification, even if that were legally required.

  14. I wish I could agree. But many technology companies from the smallest to IBM take the attitude that even though the peripherally disclosed subject matter is protected by the patent, they don’t want to make it easy for competitors to understand their invention.

    Moreover, the difficulties inherent in knowing exactly what is protected by a patent (or might be protected if an application issues) keeps inventors reluctant to publish beyond what is exactly in the claims. Often, their attorneys tend to support this attitude.

  15. I agree. Scholars may have overlooked so-called “peripheral disclosure” due to the difficulties involved in defining and measuring the concept.

    Most applicants are only confident fully disclosing their products at trade shows, launches, on the net etc, once they have a patent pending. The peripheral disclosure is often more informative for those in the same industry as there is no need for the additional legal layers.

    With advances in automated document processing, I wonder if you could link patent disclosure with related online material?

  16. I think it does depend on the field, but my survey of 211 nanotech researchers (mostly academics) found that many more of them were reading patents and finding useful technical (rather than legal) information in them than I expected:
    link to ssrn.com

    This is probably less true for software patents, but I think a follow-up study would be interesting. (Feel free to email me with comments/suggestions regarding my study.)

  17. This is a specific comment on the statement in this paper that: “..but through the willful infringement doctrine actively discourages companies from reading the patents of their competitors!12″
    First, even to the rare extent that it was ever a real world policy of companies to prohibit engineers and product development personel from reading patents [but not other publications] of competitors [as opposed to this been an arguement against prior extreme Fed. Cir. willful infringement cases] it is no longer even good law since In re Seagate Technology, 497 F.3d 1360 (Fed. Cir. 2007).
    Secondly, it was certianly not ever true for many major Japanese and other companies, who’s personnel regularly and systematically review published applications and patents of others, for useful new product features and technologies, for “designing around” claimed features in their own future products, and for filing “suround” or “improvement” patents of their own, as I observed and experienced for many years. [Sadly few U.S. engineers and scientists have had any actual training in conducting patent or published application technology searches.]
    As for useful new technology disclosure quality, content and comprehension, compare patents wrtten by competent patent attorneys with the service manuals written on the same products.

  18. Yeah, I was right. The way people write disclosures is intended to make them incomprehensible. As I discussed in other thread, and with Max’s and Paul support, such disclosure fail to identify an advance over the art and are objectionable for this reason at least under 112, p. 1. See Evans v. Eaton.

    But that is another topic. The note also identifies the lack of a experimental use exception to infringement. I recall the controversy over this about 20 years ago. It had a lot to do with generic drugs and resulted in legislation to partially overturn the Federal Circuit. But, in principle, the idea of preventing experimental use borders on the unconstitutional, in my view, as it retards the advancement in the useful arts without causing any demonstrable harm to the patentee.

    I would hope that someone would take a good case up to the Supreme Court on this. But, given that Seagate reversed longstanding case law regarding “duty to disclose” that was really killing a fundamental purpose for patents (we couldn’t even look at them without putting ourselves on notice), I think the time is ripe for the Federal Circuit to reverse its case law on this topic as well.

  19. I strongly agree with “..the disclosure function of patents has been greatly undervalued..” for other reasons as well. E.g.:
    1. A study several years ago found that a surprisingly high percentage of new technology is not disclosed in any other manner. [Especially, valuable new product and engineering details, as opposed to pure science of no known economic value.]
    2. Scientific papers often lack sufficient details needed for someone else to easily or practically use the commercially usaable concepts, that need to be added to their correspnding patent specifications. Scientific and other publications have no specific “enablement,” “best mode” or specific invention description requirements, as do patent applications.
    3. Detailed patent application specification disclosures of a new product development are often the best possible defense against someone else obtaining a latter-filed patent claiming some aspect or feature of that product, whether that aspect or feature was originally claimed or not. It is effective as of its filing date and unlike any other disclosure it can keep that new product development a secret for 18 months to maintain a competitive product lead time. Other new product information disclosures are normally surpressed until after the formal commercial launch date of the product, and rarely as complete or detailed as to new features.

  20. the statement, that a patent is “a document that often fails to provide meaningful information to others” is a ridiculous, unsupported statement at least with regard to the vast majority of the thousands of patents that I have read.

    I suppose it depends on the field of endeavor to some extent but, unless something has changed dramatically, people doing research in chemistry and biochemistry and who occasionally review the literature spend approximately 0% of their time with the patent literature (the exception would be the rare occasion when they are interested in a legal issue relating to patents).

    There are reasons for this bias and I believe that those reasons support Jason’s thesis.

  21. I think the problem might relate to the “flat” disclosures that are being written today. The disclosure just prattles on “in one embodiment this” and “in one embodiment that” without ever discussing what is new or old or identifying anything approaching a best mode. These applications are all but incomprehensible, and intentionally so. Perhaps that is what the author had in mind.

    I’ll scan his piece to find out.

  22. PLease read the article prior to posting any comments.

    Your reputation is already poor enough – advertising your ignorance will not make it better.

  23. “I haven’t read the article, but I do not fully understand what peripheral disclosure has that a patent does not have? I know it could have non essential details. But what value is that?

    Lulz Ned, “peripheral disclosures” are all too often the very valueable technical disclosures people provide in NPL. As to whether or not what they disclose there are “non-essential details” will vary case to case.

    “Now, if the patent were to remain secret for a time, the peripheral disclosure may disclose the same information as contained in a patent much earlier. Now that is valuable to society.”

    And yes that happens on occasion too.

  24. In other words their disclosure value is greatly underestimated because the inventors are free to tell others all about their invention BUT NOT BECAUSE THE PATENT ITSELF TELLS US JACK.

    Yeah, I agree, their disclosure value is totally undervalued in that way.

    Although, I will also say that we could simply do more to force them to give up the goods in a readable fashion.

  25. I haven’t read the article, but I do not fully understand what peripheral disclosure has that a patent does not have? I know it could have non essential details. But what value is that?

    Now, if the patent were to remain secret for a time, the peripheral disclosure may disclose the same information as contained in a patent much earlier. Now that is valuable to society.

  26. Sorry, but the statement, that a patent is “a document that often fails to provide meaningful information to others” is a ridiculous, unsupported statement at least with regard to the vast majority of the thousands of patents that I have read.

    The remainder of the premise regarding peripherial disclosure may be correct. However, a meaningful disclosure and peripheral disclosure are not mutually exclusive.

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