Andrew C. Michaels (University of Houston Law Center) has posted Benefits of the Invention and Social Value in Patent Law (George Mason Law Review, Forthcoming) on SSRN. Here is the abstract:
Traditionally, patent law purports to rely on the market to assess the extent of an invention’s value. The underlying theory is that as long as the basic requirements for the patent are met, the patent is granted and the patentee is given the right to exclude; the value of that right will depend on market valuation of the invention. But in reality, courts do consider the extent to which an invention benefits society in various patent law doctrines, including utility, eligibility, nonobviousness, and damages. This is consideration is generally not openly acknowledged, but occurs in the background, the equities of the case so to speak.
This article defends and argues for a more open acknowledgement of the role of benefits of the invention in patent law. Courts do have a role to play in assessing an invention’s value, especially where there is reason to think that there may be a mismatch between the invention’s social value and market value. Patent law should embrace the notion that it is not solely concerned with increasing the rate of innovation agnostically as to the benefits of the technology; rather, patent law also plays a role in shaping the direction of innovation. More open acknowledgement of this role would provide better information to the public and allow the development of more consistent and coherent standards. This development could occur gradually through the common law method, without any drastic break from precedent. To this end, this article also explores various doctrinal possibilities, such as a revival and modification of the pioneer patent doctrine.