By Jason Rantanen
Folks who write about patents commonly explain the concept by drawing an analogy to real property rights, with the metes and bounds of a patent set out in the claims rather than a deed description. Drawing upon this analogy, a common critique of by scholars such as Jim Bessan and Mike Meurer is that patent boundaries are much less clear than those of deeds. Related to this uncertainty in scope is the fact that the very existence of the rights themselves is hardly certain. While issued patents come with a presumption of validity, it is only that: a presumption. Patent claims can be and are invalidated by courts. Commentators have used various terms to describe these attributes, terms that when unpacked mean somewhat different things. Indeterminacy and probabilistic rights are two of the most common. Regardless of the terminology, the core idea is that that patent rights are characterized by a degree of uncertainty.
In my most recent long-form work, I describe another important characteristic of patent rights: their malleability. By malleable, I mean that the scope and strength of the right can be changed after the patent is issued through an array of mechanisms, thus allowing actors operating within the patent system the ability to change the very contours of the right. In other words, not only can patent rights involve something akin to a roll of the dice or an inability to definitively pin down their scope, but the outcome of that roll or the contours of the uncertainty can be changed by the actions of the parties involved. An obvious example is the role that skilled counsel play in litigation, but that’s not the only way that patent rights can be altered after issuance.
Over the past few months, we’ve seen quite a few manifestations of this malleable nature of rights; most recently in the Federal Circuit’s decision this morning in Content Extraction v. Wells Fargo Bank invalidating an issued patent on section 101 grounds. The rise in importance of Section 101 is in large part the result of individual actions pushing and pulling on patent rights using those tools at their disposal, as attorneys develop creative new ways to deploy the legal precedent and policy arguments. The consequence in this case is that the patent rights are eliminated well after the patent issued. There are, of course, better examples of malleability than invalidation: claim construction is the one that most quickly comes to mind.
Ultimately, it’s not clear to me that malleability is a desirable characteristic. Although there are individual doctrines where malleability may be necessary, I have yet to come up with a good theoretical justification for it on a broad scale.
Read The Malleability of Patent Rights here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2540356. The article is still a draft, so well thought out comments and responses are particularly welcome.