IP Injury and the Institutions of Patent Law

Abstract:     
This paper reviews Creation Without Restraint: Promoting Liberty and Rivalry in Innovation, the pathbreaking book by Christina Bohannan and Herbert Hovenkamp (Oxford Univ. Press 2012). The Review begins by summarizing the book’s descriptive insights and analyzing one of its important normative proposals: the adoption of an IP injury requirement. This requirement would demand that infringement plaintiffs prove -- before obtaining damages or an injunction -- an injury to the incentive to innovate. After explaining how this requirement is easy to justify under governing law and is largely consistent with recent Supreme Court decisions in the field of patent law, the Review considers whether the concept of IP injury is useful in resolving the most vexing problem in patent law today: the scope of patentable subject matter.

The Review also weighs how the institutional structure of the patent system might affect adoption of the authors' innovation-focused approach. Although the book's proposals are directed largely at the courts, the semi-specialized court for patent appeals, the U.S. Court of Appeals for the Federal Circuit, might resist deciding patent cases by considering innovation policy. The Review thus examines other institutions, such as the Office of the Solicitor General, that may be well-positioned to put the book's thoughtful proposals into action.

Number of Pages in PDF File: 25

Accepted Paper Series