Peripheral Disclosure

Abstract

The requirement that inventors disclose their inventions in return for a patent is one of the primary justifications for the patent system. Yet that justification has been subject to substantial criticism. Conventional disclosure scholarship focuses on an inventor’s disclosure within the patent itself, a document that arguably fails to provide meaningful information to the public and future inventors. As a result, conventional disclosure theory has largely been relegated to the category of a straw man that scholars address perfunctorily when criticizing the patent system.

This article rejects the idea that patents serve little to no disclosure function, not by demonstrating that patents themselves convey useful information, but by pointing to the disclosure of information that would not occur in the absence of a patent system, a concept I call "peripheral disclosure." Examples of such disclosures are all around us: the inventor-employee who is only allowed to publish about ongoing research after patent protection has been secured; the marketing materials describing technical information that could not be shared in the absence of a patent; the mere existence of self-disclosing inventions–inventions whose technological underpinnings can be easily perceived or reverse engineered once those inventions are placed in the stream of commerce–that act as the seeds of future innovation, to name but a few.

This theory of peripheral disclosure offers a powerful justification for the patent system – one with profound implications for the perpetual discussion over whether the benefits of the patent system outweigh its costs in terms of promoting invention, and offers an important consideration when debating the potential effects of new legislation, such as the recently enacted Leahy-Smith America Invents Act.

Keywords: patent theory, disclosure theory, invention theory, innovation theory