The Fractioning of Patent Law

Intellectual Property and the Common Law, Shyamkrishna Balganesh, ed., Cambridge University Press, 2012

Stanford Public Law Working Paper No. 1895681

10 Pages Posted: 26 Jul 2011 Last revised: 3 Jan 2015

Mark A. Lemley

Stanford Law School

Date Written: 2012

Abstract

Patentees overwhelmingly lose their cases, despite a seeming host of procedural advantages. The same is not true of other IP plaintiffs. Why? In this article, I suggest that the explanation lies in the "fractioning" of patent law into smaller and smaller issues. Claim construction after Markman is the clearest example, but there are others. We no longer decide in a holistic manner what a patent claim covers. Instead, we decide what each word of a claim covers. Because there are more and more such issues, and the patentee must win each of them, patentees face a form of multiple jeopardy. It is ironic that patent claims, developed to broaden and strengthen the patent right, have instead become obstacles to the patentee's success.

Suggested Citation

Lemley, Mark A., The Fractioning of Patent Law (2012). Intellectual Property and the Common Law, Shyamkrishna Balganesh, ed., Cambridge University Press, 2012; Stanford Public Law Working Paper No. 1895681. Available at SSRN: https://ssrn.com/abstract=1895681 or http://dx.doi.org/10.2139/ssrn.1895681

Mark A. Lemley (Contact Author)

Stanford Law School ( email )

559 Nathan Abbott Way
Stanford, CA 94305-8610
United States

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