By Ted M. Sichelman, University of San Diego School of Law
from Volume 1, Issue 2 (Spring, 2011)
Abstract: A recurring issue in intellectual property theory is how the scope of patent rights affects invention and commercialization. Traditionally, there has been a dichotomous debate: one view stemming from Ed Kitch, promoting broad “prospect”-style patents in the hands of a single inventor, and another view from Robert Merges and Richard Nelson, advocating relatively narrow scope to encourage competition in innovation. More recently, a variety of scholars have set forth more nuanced positions. My thesis here is that the variance in these views can be traced to differing empirical attitudes about how well the market functions relative to a patent system in promoting invention, commercialization, and coordination among market actors in the R&D process. By investigating these empirical differences, scholars can more rigorously address a number of important issues not fully examined by the literature, such as the cumulative nature of technology commercialization (not just invention), the tailoring of patent scope by industry, collaborative innovation, and the decoupling of patent rights to separately address invention and commercialization incentives.