Purging Patent Law of ‘Private Law’ Remedies

Ted M. Sichelman

University of San Diego School of Law

September 23, 2011

Texas Law Review, Vol. 92, pp. 516-571, 2014

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.

Number of Pages in PDF File: 55

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

JEL Classification: K2, O3, O34

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Date posted: September 24, 2011 ; Last revised: February 11, 2014

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

Contact Information

Ted M. Sichelman (Contact Author)
University of San Diego School of Law ( email )
5998 Alcala Park
San Diego, CA 92110-2492
United States
(619) 260-7512 (Phone)
(619) 260-2748 (Fax)
HOME PAGE: http://https://www.sandiego.edu/law/faculty/profiles/bio.php?ID=795
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