Purging Patent Law of ‘Private Law’ Remedies

55 Pages Posted: 24 Sep 2011 Last revised: 11 Feb 2014

See all articles by Ted M. Sichelman

Ted M. Sichelman

University of San Diego School of Law

Date Written: September 23, 2011


This paper rejects the fundamental "private law" premise of patent law remedies that courts should always attempt to restore the status quo ante by making the patentee "whole" in the event of infringement. Instead, the patent system and its associated remedies should be viewed as part of a "public law" regulatory regime designed to further the societal goal of optimizing innovation incentives. Such an approach mandates significant changes in the structure of patent remedies. For example, when the patent-in-suit covers a minor component of a complex product, I argue that injunctions and make-whole damages should not just be denied to non-practicing entities (NPEs) -- as prior scholars have argued -- but to practicing entities as well. In contrast, courts should generally award more than make-whole damages in cases involving difficult-to-detect infringement. More fundamentally, the damages and injunction provisions of the Patent Act -- which derive from a private law foundation -- should be jettisoned in favor of remedies that directly promote optimal innovation incentives.

Keywords: patents, damages, remedies, injunctions, royalties, licensing, eBay, NPE

JEL Classification: K2, O3, O34

Suggested Citation

Sichelman, Ted M., Purging Patent Law of ‘Private Law’ Remedies (September 23, 2011). Texas Law Review, Vol. 92, pp. 516-571, 2014, Available at SSRN: https://ssrn.com/abstract=1932834 or http://dx.doi.org/10.2139/ssrn.1932834

Ted M. Sichelman (Contact Author)

University of San Diego School of Law ( email )

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