PTLR Up Group Processed BibTeX
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@article{aggarwal2009modes,
title={Modes of Cooperative R&D Commercialization by Start-Ups},
author={Aggarwal, Vikas A. and Hsu, David H.},
journal={Strategic Management Journal},
volume={30},
number={8},
pages={pp. 835-864},
year={2009},
abstract = {This study empirically examines the determinants of heterogeneous firm-level cooperative R&D commercialization strategies. While the volume of interfirm collaboration has increased dramatically in recent decades, the determinants of firm-level choices among alternate modes of such cooperative activity remain relatively understudied. We develop a conceptual model of factors determining collaborative mode choice at the organizational portfolio level. These factors include the firm-level appropriation environment, in which deal-level choices have portfolio-level spillover implications, as well as governance capabilities developed by the firm over time. Using a random sample of innovating biotechnology start-ups, we assemble a firm-year panel dataset that aggregates transaction-level collaboration data to the firm-year level, allowing us to characterize firms' portfolios of collaborative deals. We find broad empirical support for our model, suggesting that a firm's appropriation environment and governance capabilities strongly influence portfolio-level collaboration mode choices. In addition, we explore the implications of governance capability development, finding that experience with particular modes, as well as deviations from existing capabilities, impact firm valuation.},
discipline={Econ},
research_type={Empirical},
industry={Biotech},
thicket_stance={Weak Anti},
thicket_stance_extract={A firm’s patent portfolio can enable the firm to mitigate appropriation concerns that arise across multiple deals. This occurs when patents are not specific to an individual deal, but rather apply across multiple technology commercializa- tion projects. Such an intellectual property portfolio can thus act as a ‘patent thicket’ (Shapiro, 2000), making it more difficult for collaborative partners to expropriate the innovating firm’s technology.11 The degree of protection afforded by such a portfolio will, of course, necessarily be dependent on the degree to which patents are relevant across multiple commercialization projects.},
thicket_def={#F, References Shapiro, Single Firm, Strategic Patenting (Good), Barrier To Entry},
thicket_def_extract={Such an intellectual property portfolio can thus act as a ‘patent thicket’ (Shapiro, 2000), making it more difficult for collaborative partners to expropriate the innovating firm’s technology.},
tags={#Firm Strategy, Collaboration},
filename={Aggarwal Hsu (2009) - Modes Of Cooperative R And D Commercialization By Start Ups.pdf}
}
@article{allison2003business,
title={The Business Method Patent Myth},
author={Allison, J.R. and Tiller, E.H.},
journal={Berkeley Tech. LJ},
volume={18},
pages={987},
year={2003},
abstract={Internet business method patents have been roundly criticized by most observers as being singularly inferior to most other patents. Many have even argued that business methods should not be patentable subject matter. As a result, Congress and the Patent and Trademark Office (“PTO”) singled them out for special treatment. All of these criticisms were, however, voiced without empirical support. We gathered data on most Internet business method patents issued through the end of 1999 and compared them with a large contemporaneous data set of patents in general. We also compared them with patents in fourteen individual technology areas within the general patent data set. Our comparison focused on several metrics that we believe serve as good proxies for patent quality and value. We found that Internet business method patents appear to have been no worse than the average patent, and possibly even better than most. They also appear to have been no worse, and possibly even better, than patents in most individual technology areas. These findings lead us to question the conventional wisdom that Internet business method patents were uniquely deficient. We briefly explore some possible explanations for the chasm between the accepted view and what we believe to have been the reality, including the possibility that negative opinions about these patents may have been the result of an information cascade. More importantly, we believe that efforts to single out these patents for special treatment not only lacked sound justification in the particular case but also reveal more fundamental problems associated with ex ante definitions to carve out any particular technology area for different treatment.},
discipline={Law},
research_type={Empirical},
industry={Business Methods},
thicket_stance={Assumed Pro},
thicket_stance_extract={In other words, many closely related patents may cover a single product, mak- ing it much more difficult for competitors to invent noninfringing substitutes. Patent thickets increase the probability of "hold-up" licensing, that is, exercising the ability to charge a premium for patent licenses in the case of technologies in which competitors have already invested heavily. Id. A patent thicket is just one instance of portfolio value, because a group of patents on related technologies can have a value greater than the sum of its parts even if the patents do not create overlapping rights in the same product. Regardless of the particular manifestation of portfolio value, previous research has not cap- tured this aspect of patent value, and we have not ascertained a way to estimate the effect of a patent’s contribution to a portfolio apart from whatever stand-alone value it may or may not have.},
thicket_def={References Shapiro, Quotes Shapiro, Complementary Inputs, Overlapping Patents, Hold-up, Strategic Patenting (Good), Strategic Patenting (Bad)},
thicket_def_extract={#A-S, #B, #C1, Portfolio value can manifest itself in licensing negotiations, especially cross-licensing, or merely in the greater in terrorem effects it creates for competitors... Carl Shapiro has called "a dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology."},
tags={#IPR Reform, Patent Quality, Sequential Innovation},
filename={Allison Tiller (2003) - The Business Method Patent Myth.pdf}
}
@article{andrews2002genes,
title={Genes And Patent Policy: Rethinking Intellectual Property Rights},
author={Andrews, L.B.},
journal={Nature Reviews Genetics},
volume={3},
number={10},
pages={803--808},
year={2002},
abstract={Concerns about human gene patents go beyond moral disquiet about creating a commodity from a part of the human body and also beyond legal questions about whether genes are unpatentable products of nature. New concerns are being raised about harm to public health and to research. In response to these concerns, various policy options, such as litigation, legislation, patent pools and compulsory licensing, are being explored to ensure that gene patents do not impede the practice of medicine and scientific progress.},
discipline={Policy Report},
research_type={Discussion},
industry={Biotech},
thicket_stance={Weak Pro},
thicket_stance_extract={Economist Carl Shapiro elaborates on the problems created by a ‘patent thicket’. Using traditional economic analysis, he has shown how, when several monopolists exist that each control a different raw material needed for development of a product, the price of the resulting product is higher than if a single firm controlled trade in all of the raw materials or made the product itself 18. However, the combined profits of the producers are lower in the presence of complementary monopolies. So, if there are several patent holders whose permission is needed to create a gene therapy (and any one of them could block the production of the gene therapy), inefficiencies in the market are created, potentially harming both the patent holder and the patent users.},
thicket_def={#A, References Shapiro, Diversely-Held, Complementary Inputs, Always Hinders Innovation},
thicket_def_extract={Economist Carl Shapiro elaborates on the problems created by a ‘patent thicket’. Using traditional economic analysis, he has shown how, when several monopolists exist that each control a different raw material needed for development of a product, the price of the resulting product is higher than if a single firm controlled trade in all of the raw materials or made the product itself. However, the combined profits of the producers are lower in the presence of complementary monopolies. So, if there are several patent holders whose permission is needed to create a gene therapy (and any one of them could block the production of the gene therapy), inefficiencies in the market are created, potentially harming both the patent holder and the patent users.},
tags={#IPR Reform, #Private Mechanisms, Pools, Compulsory Licensing, #Effects on Academic Research},
filename={Andrews (2002) - Genes And Patent Policy Rethinking Intellectual Property Rights.pdf}
}
@article{aoki2008promoting,
title={Promoting Access to Intellectual Property: Patent Pools, Copyright Collectives, and Clearinghouses},
author={Aoki, R. and Schiff, A.},
journal={R\&D Management},
volume={38},
number={2},
pages={189--204},
year={2008},
abstract={This paper reviews and compares patent pools, intellectual property (IP) clearinghouses, and copyright collectives as systems for promoting efficient access to licensable IP in a ‘market for technology’. These systems promote downstream use of innovations by economizing on search and transaction costs in licensing, as well as potentially mitigating the conditions that lead to the ‘tragedy of the anti-commons’ and other coordination problems in multilateral licensing. We compare and classify different systems in terms of their features, review some existing systems, and discuss their economic characteristics.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={n the other hand, a situation such as a patent thicket is likely to impose additional costs and inefficiency on down- stream product development and cumulative innovation... Some similar issues are discussed by Shapiro (2001), who considers the strategies that firms may use to reduce the effects of a patent thicket on their ability to innovate. Shapiro considers the strategies of cross licensing, patent pools, and cooperative standard setting. Our paper is complementary to Shapiro’s in that our analysis is at the level of the market for technology, rather than an individual firm.},
thicket_def={#A, References Shapiro, Complementary Inputs, Diversely-Held, Transaction Costs},
thicket_def_extract={In the context of patents, a proliferation of IP rights may result in a ‘patent thicket’ (Shapiro, 2001) that can increase costs for downstream activities such as cumulative innovation and the development of new products that combine multiple existing innovations.... The more the existing IP rights that cover a given downstream activity, the higher will be the transaction costs associated with licensing. In addition, if the upstream IP rights are complementary, potential coordination failures among IP owners can lead to excessively high licensing fees.},
tags={#Private Mechanisms, Pools, Collectives, Clearinghouses},
filename={Aoki Schiff (2008) - Promoting Access To Intellectual Property.pdf}
}
@inproceedings{arundel2003strategic,
title={Strategic Patenting},
author={Arundel, A. and Patel, P.},
booktitle={Background Report for the Trend Chart Policy Benchmarking Workshop" New Trends in IPR Policy},
year={2003},
abstract={},
discipline={Policy Report},
research_type={Discussion},
industry={General, Academia},
thicket_stance={Neutral},
thicket_stance_extract={The main problem for policy, however, is how to put a brake on the worst effects of strategic patenting without damaging the incentive effects of the patent system, nor the competitiveness of European firms. The latter is a serious problem. All firms might be better off with less patenting, but as long as their competitors are active in strategic patenting, they will be forced to continue to patent excessively in order not to be left defenseless. This could be a particularly thorny problem for European firms that are active in the United States. Nor is strategic patenting without its possible benefits to innovation. Cohen et al (2002b) note that non-cooperative interactions such as patent blocking and portfolio races ‘raise the possibility of socially wasteful expenditures of effort on applying for marginal patents and associated litigation’.},
thicket_def={#A, #A-T, #B, References Shapiro, Quotes Shapiro, References Heller/Eisenberg, Complementary Inputs, Diversely-Held, Always Hinders Innovation, Strategic Patenting (Bad)},
thicket_def_extract={However, there is no clear distinction between the use of patents to prevent copying and the use of patents to block competitors. The function of blocking is to create a wide space around an innovation where other firms cannot develop a competitive alternative.... One of the worst-case outcomes of the patenting strategies of private firms is the creation of an ‘anti-commons’ in which the necessary knowledge to conduct further research is covered by a large number of patents held by a large number of firms. This has been called a patent thicket, or a "dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology" (Shapiro, in press).Heller and Eisenberg (1998) raise the concern that licensing in some areas, such as biotechnology, could become so complex or expensive that it acts as a drag on the rate and direction of research, thereby slowing down the development of socially beneficial products and processes... Patent thickets that develop through both defensive and offensive patent strategies could increase the transaction costs for arranging licenses. The cost of complex licensing arrangements could raise business costs without any benefits to the firms involved, with costs passed on to consumers.},
tags={#IPR Reform, Defensive/Offensive Patenting, Value from Position/Portfolio, #IPR Reform, License to Innovate/Research Exemptions. #Effects on Academic Research}
filename={Arundel Patel (2003) - Strategic Patenting.pdf}
}
@article{attaran2004patents,
title={Patents Do Not Strangle Innovation, but Their Quality Must Be Improved},
author={Attaran, A.},
journal={Bulletin of the World Health Organization},
volume={82},
number={10},
pages={788},
year={2004},
abstract={},
discipline={Policy Report},
research_type={Discussion},
industry={Pharma},
thicket_stance={Weak Anti},
thicket_stance_extract={Possibilities and facts are not the same thing, however, and there is surprisingly little empirical data to show that the patent thicket is subtracting from the rate of innovation or society's benefit from it. Maybe that is happenning without anyone noticing, but the available evidence suggests otherwise.},
thicket_def={#A-T, #D, Dubious Patents, Transaction Costs},
thicket_def_extract={Obviously, the more patents, the more inventors must spend on patent management, licensing and litigation. At some point the mounting costs must dissuade inventors with shallow pockets... so that [R\&D] accretes in major pharmaceutical companies, ahead of small biotechnology firms... Correa is correct that the quality of patent examination is scandalous. Even in Europe or North America, many dubious patents are issued. The resulting lack of legal certainty harms everyone: competitors who must spend heavily to overturn wronly granted patents; consumers who pay a premium while those patents remain in force; and even companies and their shareholders, as happened when an invalid Prozac patent was finally overtruned, wiping US $35 billion off Feli Lilly's market capitalization.},
tags={#Industry Commentary, Sequential Innovation},
filename={Attaran (2004) - Patents Do Not Strangle Innovation But Their Quality Must Be Improved.pdf}
}
@article{ayres2007tradable,
title={Tradable Patent Rights},
author={Ayres, Ian and Parchomovsky, Gideon},
journal={Stanford Law Review},
volume={60},
number={3},
pages={863--894},
year={2007}
abstract={Patent thickets may inefficiently retardcumulative innovation. This Article explores two alternative mechanisms that may be used to weed out patent thickets. Both mechanisms are intended to reduce the number of patents in our society. The first mechanism we discuss is price-based regulation of patents through a system of increasing renewal fees. The second and more innovative mechanism is quantity-basedregulation through the establishmentofa system of Tradable Patent Rights. The formalization of tradable patent rights would essentially create a secondary market for patent permits in which patent protection will be bought and sold. The Article then discusses how price and quantity regulation can be combined to effect superiorweeding.},
discipline={Law},
research_type={Theory},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={Patent thickets are especially harmful in cumulative innovation settings. In such settings, the need to secure licenses from multiple patentees, each possessing a veto power over the production of new innovation (1) dramatically increases bargaining costs between patentees and subsequent innovators; (2) creates a potential for hold-ups; and (3) lowers the profits of the original patentees. Patent thickets also harm regular users of patented products and technology by making it more expensive for users to gain access to the relevant product or technology.},
thicket_def={#Aa-T, Complementary Inputs, Diversely-Held, Transaction Costs},
thicket_def_extract={A particularly disconcerting result of the increase in the number of patents is the emergence of patent thickets: multiple patents that cover a single product or technology.},
tags={Private Mechanisms, Licensing, Tradeable Licenses, IPR Reform, Renewal Fees},
filename={Ayres Parchomovsky (2007) - Tradable Patent Rights.pdf}
}
@article{baluch2005re,
title={In re Kumar: The First Nanotech Patent Case in the Federal Circuit},
author={Baluch, A.S. and Radomsky, L. and Maebius, S.B.},
journal={Nanotech. L. \& Bus.},
volume={2},
pages={344},
year={2005},
abstract={On August 15,2005, the Court of Appeals for the Federal Circuit decided what is arguably its first nanotech patent case, In re Kumar. Although the court adjudicated the case on procedural grounds, practitioners in the field of nanotechnology will appreciate several substantive themes in this decision. First, the court appears to treat a nanotechnology patent appeal no differently than patent appeals in cases involving other technologies. In this regard, the court did not establish any special rules Jar nanotechnologypatents. Second, the L S. Patentand Trademark Qffice ("PTO') is apparently taking the quality of nanotechnology patents seriously, with the Solicitor himself as lead counsel on the brief for the Commissioner of Patents and Trademarks. Third, the court's dicta provides nanotech inventors with guidance for overcoming§ 103 obviousness rejections based on overlapping sizes of nanoparticles. Such an argument, as nanotech commentators had predicted, may be used to rebut a prima facie case Qf obviousness where, as in this case, the claimed nanotech product is made by a different process than that of the prior art,},
discipline={Law},
research_type={Discussion},
industry={Nanotech},
thicket_stance={Anti},
thicket_stance_extract={Much has been made about the nanotech patent "land grab," where inventors rush to patent huge swaths of claim space, while the PTO - allegedly with little knowledge of nanotechnology and no dedicated examining group - grants very broad and overlapping claims. 16 Moreover, the interdisciplinary nature of nanotechnology may allow two patents that use different language to claim the same nanotech product. For example, one patent might cover silicon nanocrystals with an average diameter between 1nm and 30nm, while another could cover any nanocrystal that emits light in a spectral range no greater than 60 nm. Such patents could overlap and create mutually blocking rights.17 While there is nothing in the patent law to prohibit new and nonobvious claims from overlapping (i.e., claims in different patents which cover the same product and which are new and not obvious over the prior art),18 the commentators expressed concern that the allowed claims in some patents may be obvious over the prior art. In Kumar,however, the PTO found the prior art and rejected those claims that it considered to be obvious in light of those references.},
thicket_def={Broad Patents, Overlapping Patents, Cummulative Invention},
thicket_def_extract={#B, For example, a claim in a later patent may cover a new and nonobvious improvement on a basic invention claimed in an earlier patent. In this case, both patents would properly cover the improved product. A large number of patents containing overlapping claims which cover the same product are often referred to as a "patent thicket."},
tags={#Industry Commentary, Sequential Innovation},
filename={Baluch Radomsky Maebius (2005) - In Re Kumar The First Nanotech Patent Case In The Federal Circuit.pdf}
}
@article{baron2010strategic,
title={Strategic Inputs into Patent Pools},
author={Baron, J. and Delcamp, H.},
journal={Cerna working paper},
year={2010},
abstract={This article explores what factors determine the decision of a patent pool to accept new inputs. We propose a dynamic analysis of 1337 U.S. patent inputs into 7 important pools. This analysis highlights a trade-off between firm and patent characteristics as the determinants of inclusion of patents into pools. For instance we prove that firms already member of the pool or holding large patent portfolios are able to include lower quality patents. These findings can be explained both by bargaining power and information asymmetry. In particular, as measured by a new indicator, insiders and firms practicing the technology file patents that are better aligned with the criteria of essentiality.},
discipline={Econ},
research_type={Empirical},
industry={ICT},
thicket_stance={Pro},
thicket_stance_extract={One aspect of this patent proliferation is the « patent thicket » problem 5. The patent thicket describes a situation in which holders of different patents that are all necessary for complying with a standard mutually block each other in the implementation of the standard.},
thicket_def={#A-T, References Shapiro, Quotes Shapiro, Complementary Inputs, Diversely-Held, Transaction Costs, Unspecified Blocking Mechanism},
thicket_def_extract={The creator of this term defines the patent thicket as "a dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology." (Shapiro, 2001)... The patent thicket describes a situation in which holders of different patents that are all necessary for complying with a standard mutually block each other in the implementation of the standard. Another advantage of pools highlighted by the economic literature is to reduce the transaction costs by cutting down the number of licenses needed by firms without patents who wish to produce products that comply with the standard. The last advantage of patent pools is to reduce the multiple marginalization problem6. This problem arises if different firms have market power over complementary inputs, such as different patents necessary for complying with the same standard, and fix prices independently of each other.},
tags={#Private Mechanisms, Pools, Firm Strategy, Value from Position/Portfolio},
filename={Baron Delcamp (2010) - Strategic Inputs Into Patent Pools.pdf}
}
@inproceedings{baron2011patent,
title={Patent Pools and Patent Inflation},
author={Baron, J. and Pohlmann, T.},
booktitle={Conference Proceedings: 4th ZEW Conference on the Economics of Innovation and Patenting},
year={2011},
abstract={This article provides empirical evidence that patent pools contribute to the patent inflation around technological standards. Building upon theoretical propositions drawn from Dequiedt and Versaevel (2007) and a database of 64.619 declarations of essential patents to major international Standard Developing Organizations (SDO), we investigate how patent pools influence the number of patents on a standard over time. While the high number of patents in ICT technologies is increasingly recognized as hampering the implementation of standards, this is the first thorough empirical analysis of the driving factors of this patent inflation. We control for a wide array of factors relating to standardization and the technological field to isolate the incremental effect of patent pools. We find that patent pools increase the number of essential patents especially through patent races in view of patent pool creation. To a lower extent, we also find evidence for opportunistic patent introductions into existing patent pools.},
discipline={Econ},
research_type={Theory, Empirical},
industry={ICT},
thicket_stance={Pro},
thicket_stance_extract={Policy makers and industry participants have come to take a positive stance on patent pools, as pools play an important role in leveling the playing field for competition on the downstream production market, reducing transaction costs and encouraging the spread of innovative technology throughout the industry. In view of these benefits, patent pools are seen as indispensable instruments in cutting through the patent thickets in ICT. Indeed, by clearing blocking positions and facilitating access to the technology, patent pools help attenuating the negative downstream effects of patent thickets. On the other hand, as our analysis has pointed out, there is a risk that these positive downstream effects are offset by the fact that patent pools create incentives to exacerbate some of the worrying upstream effects of patent thickets. Indeed, one of the harmful effects of patent thickets is to induce socially wasteful excess investment in patent races and opportunistic patent files, deviating resources away from innovation to rent seeking strategies... },
thicket_def={#A-T,#C1, References Shapiro, Strategic Patenting (Bad), Transaction Costs, Complementary Inputs, Diversely-Held},
thicket_def_extract={Patent pools are seen as a potential solution to inefficiencies resulting from dense "thickets" of overlapping patents (Shapiro, 2001). From an optimistic point of view, the positive effect of patent pools on the number of patent declarations would indicate that patent pools are efficient in mitigating the adverse effects of patent thickets on innovation and induce supplementary innovation efforts... Indeed, by clearing blocking positions and facilitating access to the technology, patent pools help attenuating the negative downstream effects of patent thickets....},
tags={#Private Mechanisms, Pools, Standards, Firm Strategy, Value from Position/Portfolio},
filename={Baron Pohlmann (2011) - Patent Pools And Patent Inflation.pdf}
}
@article{barpujari2010patent,
title={The Patent Regime and Nanotechnology: Issues and Challenges},
author={Barpujari, I.},
journal={Journal of Intellectual Property Rights},
volume={15},
number={3},
pages={206--213},
year={2010},
abstract={The emergent field of nanotechnology (NT) is currently very active worldwide with respect to intellectual property rights (IPR), especially patents, with both developed and developing countries joining in the nano-patents race. With the emergence of any new technology, nanotechnology creates opportunities as well as challenges in adapting the patent regime to its particular context. There is some consensus that patenting NT innovations poses more porblems than other technologies, owing to their multi-disciplinary character, cross-sectoral applications, broad claims as well as difficulties in fulfilling the patentability criteria of novelty, non-obviousness and industrial application. This is aggravated by a lack of standardized terminology which impedes easy identification of nano-patents and also the fact that patent offices may not be well-equipped to handle nanotechnology. These problems are likely to be compounded for developing and least developed countries, which irrespective of their state of technological advancement, and capacity of the domestic regime, are obliged to confed IPR in the new technology. This paper seeks to examine the challenges which patenting of NT entails for the patent regimes of nations and how these could be addressed. it relies on a study of the patent regimes and case laws of other countries, namely, the United States to draw lessons for India. The low volume of NT patent applications and grants at the Indian Patent office and lack of Indian case laws on teh subject make the discussion anticipatory and suggestive in nature. The paper finally arrives at certain recommendations, to help reconcile the need to incentivize innovation in the new technology, with the imperative of ensuring that the public interest is served and access to the patented knowledge is not hindered.},
discipline={Mgmt},
research_type={Discussion},
industry={Nanotech},
thicket_stance={Weak Pro},
thicket_stance_extract={A fall out of such broad claims has been patenting of inventions bordering closely on discoveries (unpatentable subject matter), and patents on basic inventions or building block patents. When holders of such broad patents refuse to license their patents or license these on exclusive basis or at prohibitive prices or with restrictive conditions, it leads to the growth of patent thickets impeding downstream research in nanotechnology. The existence of a high number of such patents with broad and sometimes, overlapping claims adds to the problem of thickets and leads to the fragementation of the patent landscape.},
thicket_def={Broad Patents, Overlapping Patents, Diversely-Held, Single Firm, Cummulative Invention},
thicket_def_extract={#B1, When holders of such broad patents refuse to license their patents or license these on exclusive basis or at prohibitive prices or with restrictive conditions, it leads to the growth of patent thickets impeding downstream research in nanotechnology. The existence of a high number of such patents with broad and sometimes, overlapping claims adds to the problem of thickets and leads to the fragmentation of the patent landscape. Such a scenario has been reported by Harris in the case of nanotubes where a large number of building blocks, broad patents are held by several different entities.},
tags={#Private Mechanisms, Compulsory Licensing, Standards, #IPR Reform, Research Exemptions},
filename={Barpujari (2010) - The Patent Regime And Nanotechnology Issues And Challenges.pdf}
}
@article{barton2002antitrust,
title = {Antitrust Treatment Of Oligopolies With Mutually Blocking Patent Portfolios},
author = {Barton, John H.},
journal = {Antitrust Law Journal},
volume = {69},
number = {3},
pages = {pp. 851-882},
abstract = {},
language = {English},
year = {2002},
publisher = {American Bar Association},
copyright = {Copyright © 2002 American Bar Association},
abstract={},
discipline={Law},
research_type={Theory},
industry={General, ICT},
thicket_stance={Weak Pro},
thicket_stance_extract={Oligopolists holding cross-infringing patents may actually reduce innovation by restricting entry into the oligopoly},
thicket_def={References Shapiro, Complementary Inputs, Diversely-Held, Barrier To Entry, Strategic Patenting (Bad), Strategic Patenting (Good)},
thicket_def_extract={#A, Some of the most important new issues are raised by the "defensive" use of intellectual property rights among oligopolists.... In semiconductors, and probably many other industries, there is a small number of oligopolists, probably small enough to provide the basis for a significant oligopoly rent due to parallel pricing above the competitive level. (Unless there is some form of quasi-rent or return greater than marginal cost, there will be no incentive for invest- ment in research.4) Each of the oligopolists holds a substantial patent portfolio, significant components of which are infringed by each of its competitors. Although litigation is possible, it is rare, because of the fear that any suit will be met by a counter suit. This fear may lead to a tacit cross-license of the patent portfolios; in some cases the cross-license may be explicit. Although this situation raises other antitrust issues to be discussed in this article, the most serious one arises from the possibility that the oligopolists will exercise their intellectual property rights to prevent entry into the oligopoly},
tags={#IPR Reform, Balance with Antitrust, Firm Strategy, Oligopoly, Value from Position/Portfolio, #Private Mechanisms, Cross-Licensing},
filename={Barton (2002) - Antitrust Treatment Of Oligopolies With Mutually Blocking Patent Portfolios.pdf}
}
@article{baumol2004entrepreneurial,
title = {Entrepreneurial Enterprises, Large Established Firms and Other Components of the Free-Market Growth Machine},
author = {Baumol, William J.},
journal = {Small Business Economics},
volume = {23},
number = {1},
pages = {pp. 9-21},
abstract = {The paper studies the principal influences accounting for the unprecedented growth and innovation performance of the free-market economies. It indicates that vigorous oligopolistic competition, particularly in high-tech industries, forces firms to keep innovating in order to survive. This leads them to internalize innovative activities rather than leaving them to independent inventors, and turns invention into an assembly-line process. The bulk of private R&D spending is shown to come from a tiny number of very large firms. Yet the revolutionary breakthroughs continue to come predominantly from small entrepreneurial enterprises, with large industry providing streams of incremental improvements that also add up to major contributions. Moreover, these firms voluntarily disseminate much of their innovative technology widely and rapidly, both as a major revenue source and in exchange for complementary technological property of other firms, including direct competitors. This helps to internalize the externalities of innovation and speeds elimination of obsolete technology. Some policy implications for industrialized and developing countries are also discussed.},
year = {2004},
publisher = {Springer},
copyright = {Copyright © 2004 Springer},
discipline={Econ},
research_type={Discussion},
industry={General, ICT},
thicket_stance={Assumed Pro},
thicket_stance_extract={A complex piece of equipment, such as a computer, charactersitically is made up of components each of which is covered by a surprisingly large number of patents and the patents pertinent for such an item are often owned by a considerable number of different firms, many of them direct competitors in the final-product market...This puts many of these firms in a legal position that can enable each to bring the manu- facturing process of the others to a halt. The most effective way to prevent the catastrophic conse- quences this threatens for each of them is the for- mation of a patent pool in which each makes use of its patents available to the other members of the pool, and even to outsiders (as a step to avoid intervention by the anti-monopoly authorities},
thicket_def={#A, Complementary Inputs, Diversely-Held},
thicket_def_extract={Similar perils for the public interest arise in the last of the reasons for voluntary technology sharing - the problem of "patent thickets" and the widespread patent pools that have been formed to deal with the thicket problem. A complex piece of equipment, such as a computer, characteristically is made up of components each of which is covered by a surprisingly large number of patents, and the patents pertinent for such an item are often owned by a considerable number of different firms, many of them direct competitors in the final-product market. For example, Peter N. Detkin, vice president and assistant general counsel at Intel Corporation, estimates that there were more than 90,000 patents generally related to microprocessors held by more than 10,000 parties in 2002 (Federal Trade Commission, 2002, p. 667). This puts many of these firms in a legal position that can enable each to bring the manufacturing process of the others to a halt. The most effective way to prevent the catastrophic consequences this threatens for each of them is the formation of a patent pool in which each makes use of its patents available to the other members of the pool, and even to outsiders (as a step to avoid intervention by the anti-monopoly authorities...},
tags={#Firm Strategy, Oligopoly, Private Mecnahsims, Pools, Regime Selection},
filename={Baumol (2004) - Entrepreneurial Enterprises Large Established Firms And Other Components.pdf}
}
@article{bawa2005nanotechnology,
title={The Nanotechnology Patent ‘Gold Rush’},
author={Bawa, R. and Bawa, SR and Maebius, S.B.},
journal={Journal of Intellectual Property Rights},
volume={10},
number={5},
pages={426--433},
year={2005},
abstract={During the past decade, a swarm of patent applications pertaining to nanotechnology has been arriving at all the major patent offices of the world, including the US Patent and Trademark office (USPTO). As companies develop products and processes and begin to seek commercial applications for their inventions, securing valid and defensible patent protection will be vital to their long-term survival. In the decades to come, with nanotechnology further maturing and the promised breakthroughs accruing, patents will generate licensing revenue, provide leverage in deals and mergers, and reduce the likelihood of infringement. Because development of nanotech-related products is extremely research intensive, without the market exclusivity offered by a US patent, development of these products and their commercial viability in the marketplace will be significantly hampered. In this paper, effects of 'nanopatent gold rush' that is underway by 'patent prospectors' as start-ups are highlighted whereby corporations compete to lock up broad patents in these critical early days. In fact, the entire US patent system is under greater scrutiny and strain, with the USPTO continuing to struggle with evaluating nanotech-related patent applications. It is unclear whether the nanotech industry will thrive like the information technology (IT) industry or get bogged down like the radio patent deadlock.},
discipline={Law},
research_type={Theory},
industry={Nanotech},
thicket_stance={Pro},
thicket_stance_extract={Such patent proliferation of broad patents could ultimately result in 'patent thickets' that will require patent litigation to sort out, especially if areas of nanotechnology become financially lucrative. Given such a patent ladnscape for nanotechnology, expensive patent litigation is inevitable, with patent owners commanding some leverage with which to avoid a self-destructive patent war. The end result of all this is too familiar to the business and patent communities: (1) higher costs to consumers if and when products are commercialized; and (2) a drag on the innovation process itself.},
thicket_def={References Shapiro, Quotes Shapiro, Always Hinders Innovation, Unspecified Blocking Mechanism (Not DHCI), Broad Patents, Dubious Patents, Overlapping Patents, Single Firm, Cummulative Invention},
thicket_def_extract={#B, Patent thickets are broadly defined in academic discourse as "a ‘dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology.’" Richard Raysman & Peter Brown, Patent Cross-Licensing in the Computer and Software Industry, 233 N.Y. L. J., Jan. 11, 2005, at 3, 6 (quoting Carl Shapiro, Navigating the Patent Thicket: Cross-Licenses, Patent Pools, and Standard Settings, in 1 INNOVATION POLICY AND THE ECONOMY 119, 120 (Adam Jaffe et al. eds., 2001)). Such patent thickets, a result of multiple blocking patents, naturally discourage and stifle innovation and "[c]laims in such patent thickets have been characterized as ‘often broad, overlapping and conflicting . . . ’"). },
tags={#IPR Reform, Creation of New Classification, Balance Beteween Anti-Trust, Firm Strategy, Defensive/Offensive Patenting, Sequential Innovation},
filename={Bawa Bawa Maebius (2005) - The Nanotechnology Patent Gold Rush.pdf}
}
@article{bawa2005will,
title={Will the Nanomedicine Patent Land Grab Thwart Commercialization?},
author={Bawa, Raj},
journal={Nanomedicine: nanotechnology, biology, and medicine},
volume={1},
pages={346--350},
year={2005},
abstract={},
discipline={General Science},
research_type={Discussion},
industry={Nanotech, Biotech},
thicket_stance={Assumed Pro},
thicket_stance_extract={Given such a patent landscape, expensive litigation is as inevitable as it was with the biotechnology industry, where extensive patent litigation resulted once the products became commercially successful. In most of the patent battles the larger entity with the deeper pocket s will rule the day even if the brightest stars and innovators are on the other side. ... Ultimately, this situation is all too familiar to the business and patent communities, in that it leads to higher costs to consumers, if and when products are commercialized [5], as well as deter ring the innovation process itself},
thicket_def={#B, Quotes Shapiro, Always Hinders Innovation, Unspecified Blocking Mechanism (Not DHCI), Broad Patents, Overlapping Patents, Single Firm, Diversely-Held, Cummulative Invention},
thicket_def_extract={Patent thickets are broadly defined in academic discourse as "a dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology". Such patent thickets, as a result of multiple blocking patents, are considered to discourage and stifle innovation. Claims in such patent thickets have been characterized as often broad, overlapping and conflicting - a scenario ripe for massive patent litigation battles in the future...},
tags={#Industry Commentary, #Private Mechanisms, Pools, Cross-licensing},
filename={Bawa (2005) - Will The Nanomedicine Patent Land Grab Thwart Commercialization.pdf}
}
@article{bawa2007nanotechnology,
title={Nanotechnology Patent Proliferation and the Crisis at the US Patent Office},
author={Bawa, R.},
journal={Alb. LJ Sci. \& Tech.},
volume={17},
pages={699},
year={2007},
abstract={There is enormous excitement and expectation regarding nanotechnology's potential impact. However, securing valid and defensible patent protection will be critical here. Although early forecasts for nanotechnology commercialization are encouraging, there are bottlenecks as well. One of the major hurdles is an emerging thicket of patent claims, resulting primarily from patent proliferation, but also because of issuance of surprisingly broad patents by the U.S. Patent and Trademark Office (PTO). Adding to this confusion is the fact taht the U.S. National Nanotechnology Initiative's widely-cited definition of nanotechnology is inaccurate and irrelevant. This has also resulted in the PTO's flawed nanotechnology patent classification system. All of this is creating a chaotic, tangled patent landscape in vairous sectors of nanotechnology (e.g., nanoelectronics and nanomedicine) in which competing players are unsure as to the validity and enforceability of numerous issued patents. If this trend continues, it could stifle competition, limit access to some inventions and simply grind commercialization efforts to a halt. Therefore, reforms are urgently needed at the PTO to address problems ranging from poor patent quality and questionable examiniation practices to iinadequate search capabilities, rising attrition, poor employee morale, and a skyrocketing patent application backlog. Only a robust patent system will stimulate the development of commercially viable nanotechnology products.},
discipline={Law},
research_type={Discussion},
industry={Nanotech},
thicket_stance={Pro},
thicket_stance_extract={Therefore, if the current dense patent landscape becomes more entangled and the patent thicket problem worsens, it may prove to be the major bottleneck to viable commercialization, negatively impacting the entire nanotechnology revolution. For investors, competing in this high-stakes patent game may prove too costly.},
thicket_def={#B, #C1, References Shapiro, Quotes Shapiro, Always Hinders Innovation, Unspecified Blocking Mechanism (Not DHCI), Broad Patents, Dubious Patents, Overlapping Patents, Cummulative Invention},
thicket_def_extract={Patent thickets are broadly defined in academic discourse as "a 'dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology.'"... Such patent thickets, a result of multiple blocking patents, naturally discourage and stifle innovation...},
tags={#IPR Reform, Stricter Patenting Requirements, #Private Mechanisms, Cross-Licensing, Industry Commentary},
filename={Bawa (2007) - Nanotechnology Patent Proliferation And The Crisis At The Us Patent Office.pdf}
}
@article{beard2002patent,
title={Patent Thickets, Cross-licensing, and Antitrust},
author={Beard, T.R. and Kaserman, D.L.},
journal={Antitrust Bull.},
volume={47},
pages={345},
year={2002},
abstract={},
discipline={Law},
research_type={Theory},
industry={General, Semiconductor},
thicket_stance={Pro},
thicket_stance_extract={The patent thicket problem can be severe in certain technologically dynamic industries. Consider, for example, the semiconductor industry. In that industry, there reportedly are already over 250,000 patents in existence that, in principle, a new innovation potentially could infringe. In addition, there are several thousand additional patent applications typically in the process of review.' 4 As a result of these extant and forthcoming patents, it is virtually impossible for a firm to know, ex ante, whether a given microprocessor innovation will infringe a patent held by another firm. The patent thicket associated with this industry, then, is quite formidable, and it creates considerable uncertainty regarding the future legal status of any intellectual property created by R&D activities.},
thicket_def={#A-S, #B-S, Unspecified Blocking Mechanism, Hold-up, Diversely-Held},
thicket_def_extract={Where a highly complex product or process is covered by numerous interrelated patents, any holder of a patent that applies to that product or process potentially may block production and/or impede further technological developments, thereby jeopardizing the returns on other parties' prior investments. In such situations (i.e., where a given product is potentially affected by numerous patents owned by a number of different parties), the resulting uncertainty regarding unforeseen patent claims can dampen firms' incentives to invest in R&D activities. This potential for numerous interrelated patents to deter R&D investment has been called the patent thicket (or minefield) problem.},
tags={#Private Mechanisms, Cross-licensing, #IPR Reform, Balance with Anti-trust, Sequential Innovation},
filename={Beard Kaserman (2002) - Patent Thickets Cross Licensing And Antitrust.pdf}
}
@article{bergman2007global,
title={The Global Stem Cell Patent Landscape: Implications for Efficient Technology Transfer and Commercial Development},
author={Bergman, K. and Graff, G.D.},
journal={Nature biotechnology},
volume={25},
number={4},
pages={419--424},
year={2007},
abstract={Characteristics of the complex and growing stem cell patent landscape indicate strategies by which public sector research institutions could improve the efficiency of intellectual property agreements and technology transfers in stem cells.},
discipline={General Science},
research_type={Discussion},
industry={Biotech},
thicket_stance={Weak Pro},
thicket_stance_extract={By blocking pathways to market and dampening investor interest in commercialization, a patent thicket has the potential to slow and skew the overall development of new technical applications.},
thicket_def={#B-T, References Heller/Eisenberg, Transaction Costs, Broad Patents, Overlapping Patents, Unspecified Blocking Mechanism (Not DHCI), Diversely-Held},
thicket_def_extract={Given the particular characteristics of stem cells as a broadly enabling technology, many expect the field to be particularly susceptible to the emergence of a patent thicket8–13, also known in property rights theory as an ‘anti- commons’14. In a patent thicket, the existence of many overlapping patent claims can cause uncertainty about freedom to operate, impose multiple layers of transaction costs and stack royalty payments beyond levels that can be supported by the value of single innovations.},
tags={#Industry Commentary, #Private Mechanisms, Clearinghouse},
filename={Bergman Graff (2007) - The Global Stem Cell Patent Landscape.pdf}
}
@article{braun2007barriers,
title={Barriers to User Innovation: Moving Towards a Paradigm of 'Licence to Innovate'?},
author={Braun, V. and Herstatt, C.},
journal={International Journal of Technology, Policy and Management},
volume={7},
number={3},
pages={292--303},
year={2007},
abstract={Research into the phenomenon of user innovation has been sprouting in recent years like seeds after a rainy spring. Users have been found to be an important source of innovation in many different industries. An investigation of the barriers that users face when attempting to innovate is nevertheless lacking completely. In this paper, we attempt to fill this gap by discussing various factors that can prevent users from innovating. The evolution of the seed-breeding industry will be used for illustration purposes. We will argue that the barriers to user innovation seem to be progressing, potentially indicating that a paradigm change may be imminent.},
discipline={Econ},
research_type={Theory},
industry={Genetics},
thicket_stance={Pro},
thicket_stance_extract={While the situation is somewhat different in developing countries, where farmers have traditionally created thousands of different varieties, the lack of the technological know-how and instruments to improve increasingly sophisticated seed varieties is also marginalising their role as seed innovators. The continued corporate and governmental pressure on such countries to strengthen their seed-marketing, IPR protection and enforcement systems (Sell, 2003) will further adversely affect such farmers’ potentially innovative activities.},
thicket_def={#B, References Shapiro, Overlapping Patents, Unspecified Blocking Mechanism, Strategic Patenting (Bad), Barrier To Entry},
thicket_def_extract={These developments certainly do not encourage user-innovation, as users wanting to amend existing products or to create new ones must navigate the IPR thicket. This refers to an overlapping set of IPRs, which requires those seeking to commercialise new technologies to obtain licences (Shapiro, 2001). It exists in many industries, such as in semiconductors and biotechnology (Hall and Ziedonis, 2001; Heller and Eisenberg, 1998).},
tags={#Private Mechanisms, Firm Strategy, Licensing, Defensive/Offensive Patenting, Value from Position/Portfolio},
filename={Braun Herstatt (2007) - Barriers To User Innovation.pdf}
}
@article{burk2003policy,
title={Policy Levers in Patent Law},
author={Burk, D.L. and Lemley, M.A.},
journal={Va. L. Rev.},
volume={89},
pages={1575--1696},
year={2003},
abstract={},
discipline={Law},
research_type={Theory},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={Particularly in areas like the semiconductor industry, com- panies need some means for "clearing" the patent thicket, such as cross-licensing all the rights needed for their complex product},
thicket_def={#B2, #C1, References Shapiro, Broad Patents, Overlapping Patents, Dubious Patents},
thicket_def_extract={Closely related to the problem of complementarity is the problem of horizontal overlaps between patents.122 Patents are frequently broader than the products the inventors actually make. Multiple patents often cover the same ground, sometimes as an intentional result of the patent system"' and sometimes because patents regularly issue that are too broad or tread on the prior art.'24 Various parties may be able to lay claim to the same technologies or to aspects of the same technology. Carl Shapiro has termed this overlap of patent claims the "patent thicket"},
tags={#IPR Reform, Creation of New Classification, Industry Commentary, Cumulative Innovation},
filename={Burk Lemley (2003) - Policy Levers In Patent Law.pdf}
}
@article{calderini2006standardisation,
title={Standardisation in the ICT Sector: The (Complex) Interface between Antitrust and Intellectual Property},
author={Calderini, M. and Giannaccari, A.},
journal={Econ. Innov. New Techn.},
volume={15},
number={6},
pages={543--567},
year={2006},
publisher={Taylor \& Francis},
abstract={This article investigates the issue of standardisation in the ICT sector, analysing the most relevant aspects concerning intellectual property rights and anticompetitive strategies that can arise in standard setting organisations. The strategic dimension of this activity is also scrutinised, highlighting the different approaches followed by the United States and by the European Union. In this respect, after underlining the benefits of processes not lead by public structures, the article describes the fundamental role of internal regulations, which are necessary both for the purpose of having a sound process, and also reducing the risk of collusion and other anticompetitive conducts among members.},
discipline={Econ},
research_type={Discussion},
industry={ICT},
thicket_stance={Pro},
thicket_stance_extract={A patent thicket consists of a number of adjacent and overlapping property rights, which impose on whoever wishes to use certain intermediate goods to ask for licenses from several patent holders. Obviously, this frequently results in high monetary and transaction costs. The entity of such costs is often so great as to discourage innovative activity in the downstream phases of the innovation process... Contrarily, in the presence of cumulative and systemic innovative activities, there are reasons to believe that too strict intellectual property rights would lead to perverse effects on innovative activity within the industry.},
thicket_def={References Shapiro, Complementary Inputs, Diversely-Held, Transaction Costs, Hold-up, Strategic Patenting (Bad)},
thicket_def_extract={#A-T, This network is defined a patent thicket (Shapiro, 2001). A patent thicket consists of a number of adjacent and overlapping property rights, which impose on whoever wishes to use certain intermediate goods to ask for licenses from several patent holders... Obviously, this frequently results in high monetary and transaction costs... The nature of transaction costs previously mentioned can be traced back to two fundamental determinants: the problem of complementary input and the problem of hold-up.... There is a second aspect which deserves attention, regarding the already cited hold-up problem. This problem is strictly linked to the level of difficulty with which during the downstream stages from the innovative chain, it is possible to put into action inventing around strategies...},
tags={#Private Mechanisms, Standards, SSOs, FRAND, Licensing, Compulsory Licensing, IP Reform, Balance with Anti-trust},
filename={Calderini Giannaccari (2006) - Standardisation In The Ict Sector.pdf}
}
@article{callaway2008patent,
title={Patent Incentives in the Semiconductor Industry},
author={Callaway, D.},
journal={Hastings Bus. LJ},
volume={4},
pages={135},
year={2008},
abstract={The semiconductor industry comprises organizations of all sizes, from single engineers contracting their work to companies as large and powerful as have ever existed. The rapid advancement of technology in the semiconductor field makes it a crucible for theories about the patent system as a whole. It is arguably desirable that as new technologies come to market, patents should be issued with appropriate scope so that other inventors retain incentive to innovate.' But it is not only the Patent Office which can offer or hinder incentives for inventors. The semiconductor industry is subjected to various incentives, both negative and positive, from Congress, the courts, and from within. Part A of this paper will survey the semiconductor industry and the incentives for patenting integrated circuits. Part B will look at disincentives, and problems that have arisen in the industry. Part C focuses particularly on patent issues relating to "interface circuits"--those circuits that directly connect a chip to the outside world},
discipline={Law},
research_type={Theory},
industry={Semiconductor},
thicket_stance={Weak Pro},
thicket_stance_extract={The semiconductor market faces skewed incentives in the decision to patent integrated circuit technologies. First, patenting a circuit that is deeply embedded in a chip holds little promise for either a small or a large manufacturer. Small manufacturers face increased attention and aggressive licensing negotiations from larger players if they reveal parts of their chips' inner workings through patent disclosure. When large companies patent deeply embedded circuits, they must put forth expensive and time- consuming efforts to find evidence that other companies are actually infringing their patents, because of the needle-in-a-haystack nature of individual circuits in complex chips. For both large and small companies, there is the threat that a patent disclosure will simply be co-opted by another manufacturer, who will exploit the patentee's technology in a chip too obscure to ever be detected.},
thicket_def={#A-S, References Shapiro, Complementary Inputs, Diversely-Held},
thicket_def_extract={As discussed in the preceding section, the process of designing a chip is a complex and creative endeavor, and can incorporate hundreds or thousands of "potentially patentable" technologies for which adverse patents may be held.6" A chip designer cannot know that his work is blocked by an existing patent, any more than a musician can know that a tune popping into his head has already been copyrighted. Worse, there is the possibility that after a chip is designed and produced, an adverse patent will issue from an application that has lingered in the Patent Office, creating a wellspring of liability},
tags={#IPR Reform, #Firm Strategy, Willful Infringement, Balance with Anti-trust},
filename={Callaway (2008) - Patent Incentives In The Semiconductor Industry.pdf}
}
@article{carrier2003resolving,
title={Resolving the Patent-Antitrust Paradox Through Tripartite Innovation},
author={Carrier, M.A.},
journal={Vand. L. Rev.},
volume={56},
pages={1047},
year={2003},
abstract={},
discipline={Law},
research_type={Theory},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={A prominent example of a patent thicket is the semiconductor industry, in which hundreds, if not thousands, of patents can read onto a single product. 208 The patents typically cover "aspects of the circuitry design, materials used to achieve a certain outcome, and the broad array of methods used to manufacture the device."20 9 Consequently, companies such as IBM, Intel, and Motorola "find it all too easy to unintentionally infringe on a patent in designing a microprocessor, potentially exposing themselves to billions of dollars of liability and/or an injunction forcing them to cease production of key products."210 This concern is especially relevant for firms that have made "costly and rapidly-depreciating investments in wafer fabrication facilities, which inherently utilize a 'thicket' of innovations developed by many parties."},
thicket_def={#A-S, Quotes Shapiro, References Shapiro, Diversely-Held, Unspecified Blocking Mechanism, Hold-up, Transaction Costs},
thicket_def_extract={Carl Shapiro has defined a patent thicket as "an overlapping set of patent rights requiring that those seeking to commercialize new technology obtain licenses from multiple patentees."20 3 Patent thickets have been associated most frequently with the semiconductor industry, but they also have been observed in the biotechnology, computer software, and Internet industries... The existence of a patent thicket increases the power of each patentholder with a patented part in the product, because each can block the use of the product by all others. The power is magnified by the patent system, with its use of injunctions and costly and lengthy infringement litigation. 20 5 The dangers of the patent thicket are exacerbated when patents are issued for products that already are on the market.},
tags={#Private Mechanisms, Pools, #IPR Reform, Balance with Anti-trust, Cumulative Innovation},
filename={Carrier (2003) - Resolving The Patent Antitrust Paradox Through Tripartite Innovation.pdf}
}
@article{carrier2004cabining,
title = {Cabining Intellectual Property through a Property Paradigm},
author = {Carrier, Michael A.},
journal = {Duke Law Journal},
volume = {54},
number = {1},
pages = {pp. 1-145},
abstract = {One of the most revolutionary legal changes in the past generation has been the "propertization" of intellectual property (IP). The duration and scope of rights expand without limit, and courts and companies treat IP as absolute property, bereft of any restraints. But astonishingly, scholars have not yet recognized that propertization also can lead to the narrowing of IP. In contrast to much of the literature, which criticizes the propertization of IP, this Article takes it as a given. For the transformation is irreversible, sinking its tentacles further into public and corporate consciousness (as well as the IP laws) with each passing day and precluding the likelihood that IP will return to the prepropertization era. This Article therefore ventures onto a new path, one that follows property into unexpected briar patches of limits. The secret here is that property is not as absolute as it is often claimed to be. After surveying fifty doctrines in property law, Professor Carrier synthesizes limits based on development, necessity, and equity. He then utilizes these limits to construct a new paradigm for IP. The paradigm facilitates the reorganization of defenses that courts currently recognize as well as a more robust set of defenses, which include (1) a new tripartite fair use doctrine in copyright law, (2) a new defense for public health emergencies and a recovered experimental use defense and reverse doctrine of equivalents in patent law, (3) a development-based limit to trademark dilution, and (4) a functional use defense for the right of publicity. By adopting the paradigm of property, IP has reopened the door to limits. Rediscovering these limits offers significant promise for the future of innovation and democracy.},
year = {2004},
publisher = {Duke University School of Law},
copyright = {Copyright © 2004 Duke University School of Law},
discipline={Law},
research_type={Theory},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={In such industries, there frequently arises a "patent thicket," in which overlapping patent rights enable each patent holder with a patented input in the product to block the use of the product by all others. The power to hold other patent holders hostage is fostered and magnified by the injuctions and costly and lengthy infringement litigation that characterize the patent system. The danger inherent in these mechanisms is exacerbated when patents issue for products already on the market, because the owner of a newly issued patent holds a commanding position over manufacturers already in large-scale production, who cannot easily redesign their products and thus are forced to comply with the new patentee's demands},
thicket_def={#B, #C, References Shapiro, Overlapping Patents, Unspecified Blocking Mechanism},
thicket_def_extract={Intragenerational bottlenecks occur most frequently in the semiconductor industry and have also appeared in the biotechnology, computer software, and Internet industries.188 In such industries,there frequently arises a "patent thicket,"189 in which overlapping patent rights enable each patent holder with a patented input in the product to block the use of the product by all others},
tags={#IPR Reform, Changes to Nature of IPR, #Private Mechanisms, Compulsory Licensing, Cumulative Innovation},
filename={Carrier (2004) - Cabining Intellectual Property Through A Property Paradigm.pdf}
}
@article{carrier2002antitrust,
title={Why Antitrust Should Defer to the Intellectual Property Rules of Standard-Setting Organizations: A Commentary on Teece \& (and) Sherry},
author={Carrier, M.A.},
journal={Minn. L. Rev.},
volume={87},
pages={2017-2034},
year={2002},
abstract={},
discipline={Law},
research_type={Discussion},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={The clearing of patent thickets and fostering of cumulative innovation and new markets through SSOs offers perhaps the most powerful benefits for competition and innovation.},
thicket_def={#B1, Unspecified Blocking Mechanism, Hold-up},
thicket_def_extract={Mark Lemley has shown that SSOs have concentrated “in precisely those industries where the unconstrained enforcement of patents could be most damaging to innovation,” namely, computer software, Internet, telecommunications, and semiconductors.89 In these industries, the presence of multiple patented inputs in products increases the risk of holdup. Just as ominous, the industries are marked by “cumulative innovation,” with one generation’s patented invention based on those of previous generations.90... In these industries, the presence of multiple patented inputs in products increases the risk of holdup. Just as ominous, the industries are marked by “cumulative innovation,” with one generation’s patented invention based on those of previous generations.},
tags={#Private Mechanisms, Standards, SSOs, #IPR Reform, Balance with Anti-trust, Cumulative Innovation},
filename={Carrier (2002) - Why Antitrust Should Defer To The Intellectual Property Rules Of SSOs.pdf}
}
@article{choi2005live,
title={Live and Let Live: A Tale of Weak Patents},
author={Choi, J.P.},
journal={Journal of the European Economic Association},
volume={3},
number={2-3},
pages={724--733},
year={2005},
abstract={Patent protection has gradually expanded over time, and many patents of suspect value are routinely granted owing to the lack of rigorous scrutiny in the examination process. This has resulted in the recent explosion of patents granted and potentially creates a "patent thicket" that hinders future innovation. I investigate the question of whether the litigation process can be relied on to restore competition when an imperfect market outcome is sustained through patents of suspect value. The analysis undertaken in the paper points out the serious lack of private incentives to eliminate patents of suspect value through litigation. I also discuss potential measures to restore the soundness of the patent system.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Weak Pro},
thicket_stance_extract={Patent protection has gradually expanded over time, and many patents of suspect value are routinely granted owing to the lack of rigorous scrutiny in the examination process. This has resulted in the recent explosion of patents granted and potentially creates a "patent thicket" that hinders future innovation.},
thicket_def={#C1, References Shapiro, Dubious Patents},
thicket_def_extract={The lack of rigorous scrutiny in the examination process- in conjunction with the recent explosion of patents granted- has led to a serious concern that the current patent system may impede, rather than promote, innovation by creating a "patent thicket"(Shapiro 2001; Gallini 2002; Bessen 2003). With the ex parte relationships between patent applicants and examiners and with no adversary to aid examiners either in identifying the relevant prior art or in evaluating the applicants' claims, the task of weeding out patents of questionable quality or even trivial significance is (in the current U.S. system) left to litigation in the courts.},
tags={#IPR Reform, Stricter Patenting Requirements, Private Mechanisms, Litigation, Probablistic Patents, Invalidation, Review of Patent Validity},
filename={Choi (2005) - Live And Let Live A Tale Of Weak Patents.pdf}
}
@incollection{cohen2008real,
title={Real Impediments to Academic Biomedical Research},
author={Cohen, W.M. and Walsh, J.P.},
booktitle={Innovation Policy and the Economy, Volume 8},
pages={1--30},
year={2008},
publisher={University of Chicago Press},
abstract={Numerous scholars have expressed concern over the growing "privatization of scientific commons" represented by the growth in academic patenting. Even before the Bayh-Dole Act and the pervasive patenting of academic science, however, there was an earlier concern over the extent towhich the drive for recognition among scientists and competition for priority and associated rewards also limited contributions to the scientific commons. This suggests the utility of a more open-ended consideration of the different factors-not just patenting-that might affect knowledge flows across scientists. In this paper, we use a simple economic perspective that emphasizes the benefits and costs of excluding others from research results and analyze the empirical evidence on exclusion in biomedical research. We suggest, first, that one might distinguish between legal and practical (i.e., lower cost) excludability?and that practical excludabil ity, at least in theworld of academic research, may have little to do with patents. At the same time, however, we suggest that excludability may indeed be a real concern for academic and, particularly, biom?dical research, but to understand where and how it occurs, we need to look beyond patents to consider additional ways inwhich flows of knowledge and other inputs into research may be re stricted (including secrecy and control over materials). We do find restrictions on the flow of information and materials across biomedical researchers. While patents play some role, they are not determinative. What appears to matter are both academic and commercial incentives and effective excludability. Exclusion is rarely associated with the existence of a patent in academic settings, but is more readily achieved through secrecy or not sharing research materials.},
discipline={Econ},
research_type={Empirical},
industry={Academia},
thicket_stance={Weak Anti},
thicket_stance_extract={We do find restrictions imposedon the flow of information and materials across biomedical researchers. While patents play some role, they are not determinative. What appears to matter are both academic and commercial incentives and effective excludability. Exclusion is rarely associated with the existence of a patent in academic settings, but is more readily achieved through secrecy or not sharing research materials.},
thicket_def={#A-T, References Heller/Eisenberg, References Shapiro, Complementary Inputs, Diversely-Held, Transaction Costs},
thicket_def_extract={...innovation is cumulative, the assertion of patents on key upstream discoveries may significantly restrict follow-on research.14 The patenting of numerous, individually less significant discoveries may also impede academic research. Although their focus is largely on commercial projects, Heller and Eisenberg (1998) and Shapiro (2000) suggest that the patenting of a broad range of research tools that researchers need to do their work has spawned "patent thickets" that may make the acquisition of licenses and other rights too burdensome to permit the pursuit of what should otherwise be scientifically and socially worthwhile research,(engendering a tragedy of the "anticommons" [Heller and Eisenberg 1998]).},
tags={#Industry Commentary, #Private Mechanisms, Regime Selection, #IPR Reform, Research Exemptions, #Effects on Academic Research},
filename={Cohen Walsh (2008) - Real Impediments To Academic Biomedical Research.pdf}
}
@misc{competition2008pharmaceutical,
title={Pharmaceutical Sector Inquiry-Preliminary Report},
author={Competition, DG},
year={2008},
abstract={},
discipline={Policy Report},
research_type={Empirical},
industry={Pharma},
thicket_stance={Pro},
thicket_stance_extract={One commonly applied strategy is filing numerous patents for the same medicine (forming so called "patent clusters" or "patent thickets"). Documents gathered in the course of the inquiry confirm that an important objective of this strategy is to delay or block the market entry of generic medicines. In this respect the inquiry finds that individual blockbuster medicines are protected by up to 1,300 patents and/or pending patent applications EU-wide and that, as mentioned above, certain patent filings occur very late in the life cycle of a medicine... In their submissions, both generic and originator companies support the creation of a single Community patent to amend the current costly and burdensome system consisting of a bundle of national patents.},
thicket_def={#B, #C1, #D, Broad Patents, Single Firm, Unspecified Blocking Mechanism (Not DHCI), Dubious Patents, Barrier To Entry, Strategic Patenting (Bad)},
thicket_def_extract={In particular, originator companies confirm that they aim to develop strategies to extend the breadth and duration of their patent protection. One commonly applied strategy is filing numerous patents for the same medicine (forming so called "patent clusters" or "patent thickets"). Documents gathered in the course of the inquiry confirm that an important objective of this strategy is to delay or block the market entry of generic medicines.},
tags={#Industry Commentary, Firm Strategy, Defensive/Offensive Patents, Blocking Patents},
filename={Competition (2008) - Pharmaceutical Sector Inquiry Preliminary Report.pdf}
}
@article{cowin2007policy,
title={Policy Options for the Improvement of the European Patent System},
author={Cowin, R. and Van der Eijck, W. and Lissoni, F. and Lotz, P. and Van Overwalle, G. and Schovsbo, J.},
journal={Scientific Technology Options Assessment (STOA) of the European Parliament},
year={2007},
abstract={},
discipline={Policy Report},
research_type={Discussion},
industry={General},
thicket_stance={Weak Pro},
thicket_stance_extract={To meet the challenges that the governance of the European patent system is facing because of the emergence of patent thickets the increasing number of patent applications and patenting for defensive and strategic reasons, three options were recommended. These were: (i) enhancing the patent awareness within the European Parliament; (ii) establishing a European Parliament Standing Committee on Patents, which should be linked with an External Advisory Body composed by experts, practitioners and stakeholders; and (iii) enhancing patent awareness within the Commission.},
thicket_def={#B1, #D-S, Overlapping Patents, Single Firm, Hold-up, Barrier To Entry, Cummulative Invention},
thicket_def_extract={Here, the recent boom in patenting observed by many researchers is largely explained not by a firms’ drive to innovate more than before, but by a need to accumulate large enough “patent thickets”. These patent thickets work as a sort of insurance against possible legal actions from other companies. They are in effect therefore, a kind of defensive manoeuvre.For instance, take the situation where company A fears that its products will infringe one or more patents owned by company B. So, by developing and holding a large enough patent thicket company A makes sure that company B will inevitably infringe one of these thicketed patents. As a result, negotiations will follow in order to avoid court action between them, and likely end up with mutual cross-licensing between companies A and B... Defensive and strategic patenting has for instance, in some sectors resulted in patent thickets, the consequences of which are generally undesirable in terms of creating too many, possibly overlapping patents, which can crowd a technological field and make it difficult and costly to navigate through.... making it difficult for new and small inventors to enter the market.},
tags={#IPR Reform, Stricter Patenting Requirements, Low Patent Quality, Balance with Anti-trust, #Private Mechanisms, Pools, Clearinghouses, Firm Strategy, Defensive/Offensive Patenting},
filename={Cowin (2007) - Policy Options For The Improvement Of The European Patent System.pdf}
}
@article{d2009pools,
title={Pools, Thickets and Open Source Nanotechnology},
author={D'Silva, J.},
journal={European Intellectual Property Review},
volume={31},
number={6},
pages={300--306},
year={2009},
abstract={Discusses how to promote the development of nanotechnology by overcoming problems with the patent system. Considers how patent thickets and patent trolls may discourage innovative work. Describes the advantages of licensing patents by means of a patent pool. Examines to what extent inventors can benefit from the experience of the open-source software movement.},
discipline={Law},
research_type={Discussion},
industry={Nanotech},
thicket_stance={Weak Pro},
thicket_stance_extract={In most cases this will deter many smaller startups and research centres from attempting to traverse the patent thicket. Also broad, overlapping and conflicting thickets are likely to lead to lengthy and costly patent battles.},
thicket_def={#B2-T, Broad Patents, Overlapping Patents, Diversely-Held},
thicket_def_extract={When multiple organisations each own individual patents that are collectively necessary for a particular technology, their competing intellectual property rights form a "patent thicket"... However, if this does not happen, nanotechnology research is bound to get stifled in an atmosphere of fragmented intellectual property and broad overlapping claims, [FN30] although licencing also carries with it the problem of protracted negotiations, delays, high royalties and other transaction costs. In most cases this will deter many smaller startups and research centres from attempting to traverse the patent thicket. Also broad, overlapping and conflicting thickets are likely to lead to lengthy and costly patent battles... company that finds itself enmeshed in a patent thicket has a number of options. It can either sue anyone it finds that may be potentially infringing its patent or attempt to commercialise its patent and risk being sued in return.},
tags={#Private Mechanisms, Pools, Open Source, NPEs, #IPR Reform, Balance with Anti-trust},
filename={DSilva (2009) - Pools Thickets And Open Source Nanotechnology.pdf}
}
@article{devlin2009indeterminism,
title = {Indeterminism and the Property-Patent Equation},
author = {Devlin, Alan},
journal = {Yale Law & Policy Review},
volume = {28},
number = {1},
pages = {pp. 61-106},
language = {English},
year = {2009},
publisher = {Yale Law & Policy Review, Inc.},
copyright = {Copyright © 2009 Yale Law & Policy Review, Inc.},
abstract={},
discipline={Law},
research_type={Theory},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={More fundamentally still, the innumerable overlapping patents in certain high tech fields create an impenetrable "thicket" that frustrates quixotic conceptions of Coasian bargaining and acts only as an anticommons that paradoxically fore closes innovation.},
thicket_def={#A-S, #B-S, Overlapping Patents, Hold-up},
thicket_def_extract={...Property rights advocates further note that such fears such as irrational hold-out?most often voiced in the con text of patent thickets and experimental use?are not supported by empirical evidence.3... More fundamentally still, the innumerable overlapping patents in certain high tech fields create an impenetrable "thicket" that frustrates quixotic conceptions of Coasian bargaining and acts only as an anticommons that paradoxically fore closes innovation. One's exclusion of another from his land is isolated; a single patentee's ability to enjoin production of a semiconductor chip that implicates thousands of patents creates powerful negative externalities. Given such distinctions, many view the worlds of patent law and traditional property as sufficiently distinct to be unworthy of direct analogy... Most paradigmatically, inadvertent trespass onto another's land?coupled with sunk investment and nebulous boundaries?may lead to the imposition of a liability rule and the loss of a right to injunctive relief for the property owner. Sound reasoning underlies this element of the law, and it would seem no less applicable to the world of IP. Where an infringer has conducted a meaningful search, where the omitted patent, which is neither licensed nor marketed, is lost amongst thousands in an impenetrable thicket, and where the patent's indeter minate claims?even had they been discovered?would have lead a potential infringer to conclude as a matter of probability that its planned activity is non infringing, analogy to the law of real property would similarly suggest the im plementation of a liability rule. Allowing a non-practicing patentee to enjoin the activity of an innocent infringer following massive investment by the latter creates perverse incentives, inefficiencies, and wealth transfers of questionable desirability.},
tags={#IPR Reform, Probabilistic Patents, Prevent Hold-up/Royalty Stacking, #Private Mechanisms, Pools, Changes to Nature of IPR, Low Patent Quality},
filename={Devlin (2009) - Indeterminism And The Property Patent Equation.pdf}
}
@article{dhar20071,
title={The Impact of Intellectual Property Rights in the Plant and Seed Industry},
author={Dhar, T. and Foltz, J.},
journal={Agricultural Biotechnolgy and Intellectual Property Protection: Seeds of Change},
pages={161},
year={2007},
publisher={CABI},
abstract={This work uses changes in intellectual property rights regimes for plants as a way to identify the value and cost to industries and society of the different components of property rights: exclusivity, research exemptions, and revelation of research outcomes. A simple model is described that can account for these differences in company choice of intellectual property versus keeping trade secrets. The data used include observations on multiple crop types over a span of 20+ years across 3 different intellectual property rights regimes. Differences in the replicability of crop types are shown to cause intellectual property rights to have diverse sets of incentives for research and property rights claims.},
discipline={Econ},
research_type={Theory, Empirical},
industry={Genetics},
thicket_stance={Weak Pro},
thicket_stance_extract={A number of observers of patenting, particularly in the biological sciences, have suggested that patenting rules and overlapping claims have generated a "patent thicket" that has impeded innovation and made the R&D process more costly (Rai, 2001; Rai, 1999). Rai (2001) for example, argues that broad patents especially on upstream platform technologies represent a threat to competition and the cumulative process of innovation in the biopharmaceutical industry.},
thicket_def={#B1, Broad Patents, Overlapping Patents, Single Firm, Cummulative Invention},
thicket_def_extract={A number of observers of patenting, particularly in the biological sciences, have suggested that patenting rules and overlapping claims have generated a "patent thicket" that has impeded innovation and made the R&D process more costly (Rai, 2001; Rai, 1999). Rai (2001) for example, argues that broad patents especially on upstream platform technologies represent a threat to competition and the cumulative process of innovation in the biopharmaceutical industry.},
tags={Firm Strategy, Cumulative Innovation, Industry Commentary, #Private Mechanisms, Regime Selection},
filename={Dhar Foltz (2007) - The Impact Of Intellectual Property Rights In The Plant And Seed Industry.pdf}
}
@article{eisenmann2008managing,
title = {Managing Proprietary and Shared Platforms},
author = {Eisenmann, Thomas R.},
journal = {California Management Review},
volume = {50},
number = {4},
pages = {pp. 31-53},
abstract = {In a platform-mediated network, users rely on a common platform (provided by one or more intermediaries) that encompasses infrastructure and rules required by users to transact with each other. A fundamental design decision for firms that aspire to develop platform-mediated networks is whether to preserve proprietary control or share their platform with rivals. A proprietary platform has a single provider that solely controls its technology (for example, Federal Express, Apple Macintosh, or Google). With a shared platform such as Visa, DVD, or Linux, multiple firms collaborate in developing the platform's technology and then compete in offering users different but compatible versions of the platform. This article examines factors that favor proprietary versus shared models when designing platforms and then explains how management challenges differ for proprietary and shared platform providers when mobilizing new networks.},
year = {2008},
publisher = {University of California Press},
copyright = {Copyright © 2008 University of California Press},
discipline={Mgmt},
research_type={Discussion},
industry={ICT},
thicket_stance={Pro},
thicket_stance_extract={A second type of IP-based claim can occur when shared platforms rely on many different patented technologies, each of which has no obvious substitute. Firms may find themselves in a patent "thicket," in which several parties are able to derail a shared platform by threatening to withhold necessary contributions.12 Each firm can issue an ultimatum, demanding a large share of the platform's added value.},
thicket_def={#A, References Shapiro, Complementary Inputs, Diversely-Held},
thicket_def_extract={A second type of IP-based claim can occur when shared platforms rely on many different patented technologies, each of which has no obvious substitute. Firms may find themselves in a patent "thicket," in which several parties are able to derail a shared platform by threatening to withhold necessary contributions.12 Each firm can issue an ultimatum, demanding a large share of the platform's added value},
tags={#Private Mechanisms, Shared Platforms, Licensing, Joint Ventures, Complements},
filename={Eisenmann (2008) - Managing Proprietary And Shared Platforms.pdf}
}
@article{eisenstein2010up,
title={Up for Grabs},
author={Eisenstein, M.},
journal={Nature Biotechnology},
volume={28},
number={6},
pages={544--546},
year={2010},
publisher={Nature Publishing Group},
abstract={As recently as three months ago, it still all seemed so simple. Shinya Yamanaka, whose team at the University of Kyoto in Japan is generally acknowledged by the research community as the first to successfully reprogram differentiated cells into iPS cells1, was also the sole patent holder for the technology. But as with any other patent land grab, iPS cell intellectual property (IP) is beginning to look less and less like a one-horse race. Two other recently issued patents in the United States and United Kingdom (Table 1), each awarded to a different inventor with a potentially strong claim to priority, now stand alongside Yamanaka’s patent, which was exclusively issued in Japan. With this newly tangled IP landscape, questions are arising about the possible emergence of a patent thicket. On the other hand, early signs suggest that the iPS cell marketplace may evolve to provide ample room for many different contenders. Whereas for now companies are focused primarily on iPS cell cultivation as a means for deriving clinically relevant mature cells, companies may take advantage of recent data on transdifferentiation that suggest that this pluripotent midpoint may even be dispensable in the future2.},
discipline={General Science},
research_type={Discussion},
industry={Genetics, Biotech},
thicket_stance={Assumed Pro},
thicket_stance_extract={As issued patents on induced pluripotent stem (iPS) cells stack up, the specter of a patent thicket looms.},
thicket_def={#C1a, Dubious Patents, Overlapping Patents, Single Firm},
thicket_def_extract={Two other recently issued patents in the United States and United Kingdom (Table 1), each awarded to a different inventor with a potentially strong claim to priority, now stand alongside Yamanaka’s patent, which was exclusively issued in Japan. With this newly tangled IP landscape, questions are arising about the possible emergence of a patent thicket.},
tags={#Industry Commentary, #Firm Strategy, Collaboration},
filename={Eisenstein (2010) - Up For Grabs.pdf}
}
@article{federal2003promote,
title={To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy},
author={Federal Trade Commission},
journal={Washington, DC},
year={2003},
abstract={},
discipline={Policy Report},
research_type={Discussion},
industry={General, Pharma, Biotech, ICT, Semiconductor},
thicket_stance={Pro},
thicket_stance_extract={Questionable patents contribute to the patent thicket. In the context of a patent thicket, questionable patents can introduce new kinds of licensing difficulties, such as royalties stacked one on top of another, and can increase uncertainty about the patent landscape, thus complicating business planning... For example, a questionable patent that claims a single routine in a software program may be asserted to hold up production of the entire software program. This process can deter follow-on innovation and unjustifiably raise costs to businesses and, ultimately, to consumers.},
thicket_def={#B, #C1, References Shapiro, Quotes Shapiro, Dubious Patents, Overlapping Patents, Unspecified Blocking Mechanism, Strategic Patenting (Bad)},
thicket_def_extract={This tends to create a patent thicket that is, a “dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology"... Questionable patents contribute to the patent thicket. Much of this thicket of overlapping patent rights results from the nature of the technology;... Moreover, as more and more patents issue on incremental inventions, firms seek more and more patents to have enough bargaining chips to obtain access to others’ overlapping patents.21... In the context of a patent thicket, questionable patents can introduce new kinds of licensing difficulties, such as royalties stacked one on top of another, and can increase uncertainty about the patent landscape, thus complicating business planning. Questionable patents in patent thickets can frustrate competition by current manufacturers as well as potential entrants. Because a manufacturer needs a license to all of the patents that cover its product, firms can use questionable patents to extract high royalties or to threaten litigation...},
tags={#IPR Reform, Balance with Anti-trust, Duration Limits, Review of Patent Validity, #Firm Strategy, Willful infringement, Blocking patents, Defensive/Offensive Patenting},
filename={FTC (2003) - To Promote Innovation.pdf}
}
@article{federal2011evolving,
title={The Evolving IP Marketplace: Aligning Patent Notice and Remedies with Competition.”},
author={Federal Trade Commission},
journal={March, available at http://www.ftc.gov/os/2011/03/110307patentreport.pdf},
year={2011},
abstract={},
discipline={Policy Report},
research_type={Discussion},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={Overcompensation of certain patented technologies over-incentivizes invention in that area, to the detriment of more productive innovative activity. It also over-incentivizes the pursuit of patents for their own sake, unnecessarily increasing the number of patents in a given field beyond what is necessary to encourage productive innovation.},
thicket_def={#B, #C1, References Shapiro, Quotes Shapiro, Transaction Costs, Overlapping Patents, Unspecified Blocking Mechanism},
thicket_def_extract={One commentator explains that this strategy usually involves acquiring a large quantity of often low quality patents, meaning those that are vague, likely invalid, or that provide narrow coverage of a feature having little commercial value.2 Indeed, IT products are often surrounded by “patent thickets” densely overlapping patent rights held by multiple patent owners... Large numbers of patents can create “patent thickets”35 and increase transaction costs for manufacturers that seek to clear the rights needed to produce a product.36},
tags={#IPR Reform, Balance with Anti-trust, Duration Limits, Industry Specific Policy, Prevent Hold-up/Royalty Stacking},
filename={FTC (2011) - The Evolving IP Marketplace.pdf}
}
@article{feldman2004open,
title={The Open Source Biotechnology Movement: Is It Patent Misuse?},
author={Feldman, R.},
journal={Minnesota Journal of Law, Science \& Technology},
volume={6},
year={2004},
discipline={Law},
research_type={Theory, Discussion},
industry={Biotech},
thicket_stance={Neutral},
thicket_stance_extract={Scholars have used the term “patent thicket” to describe the problem of multiple overlapping rights that can hamper innovation by creating transaction barriers. Most scholars and those reporting from the field agree that large numbers of rights hamper research and innovation, particularly in the biotech field.21 One scholar, however, has challenged the notion.22 John Walsh argues that firms simply work around the problem of multiple rights for example, by moving offshore beyond the reach of the patent rights, inventing around the rights, and using public research tools.23 In particular, Walsh argues that academic researchers routinely ignore rights structures and that patent holders passively acquiesce.},
thicket_def={#B-T, References Shapiro, Overlapping Patents, Unspecified Blocking Mechanism, Diversely-Held, Transaction Costs, Cummulative Invention},
thicket_def_extract={Finally, any anticompetitive effects of the open source behavior would be outweighed by the procompetitive effects of reducing patent thickets and promoting the creation and dissemination of ideas without a short-term restriction of supply.... Scholars have used the term “patent thicket” to describe the problem of multiple overlapping rights that can hamper innovation by creating transaction barriers. Most scholars and those reporting from the field agree that large numbers of rights hamper research and innovation, particularly in the biotech field.21 One scholar, however, has challenged the notion.22 John Walsh argues that firms simply work around the problem of multiple rights for example, by moving offshore beyond the reach of the patent rights, inventing around the rights, and using public research tools.23 In particular, Walsh argues that academic researchers routinely ignore rights structures and that patent holders passively acquiesce... In areas not plagued by patent thickets, basic research tools may be controlled by one entity or a small group of entities},
tags={#Private Mechanisms, Licensing, Open Source, #Effects on Academic Research},
filename={Feldman (2004) - The Open Source Biotechnology Movement Is It Patent Misuse.pdf}
}
@article{feldman2008open,
title={Open Source, Open Access, Open Transfer: Market Approaches to Research Bottlenecks},
author={Feldman, R. and Nelson, K.},
year={2008},
abstract={One of the most hotly contested issues in the field of intellectual property law concerns the existence, or non-existence, of patent thickets and the extent to which any such bottlenecks may be interfering with research. For decades, scholars warned that problems related to the over proliferation of patent rights would interfere with innovation. In contrast, a growing body of commentary argues that patent thickets are not a problem in modern industries. Either patent thickets do not exist, or if they do, patent thickets do not interfere with the progress of research. The rhetoric is particularly heated these days because of dramatic changes underway in patent law. Research bottlenecks, or lack thereof, are invoked either in support of or in opposition to such changes, and it is difficult to have a rational discussion when so much seems to be at stake. Stepping back from the rhetoric a bit, this Article suggests that one can sometimes indirectly observe effects, even if one cannot directly measure the extent of a phenomenon. With this in mind, the Article describes three approaches appearing in modern patent markets that are directed at mitigating the effects of patent thickets. These approaches can be described as Open Source, Open Access, and Open Transfer. From our vantage point, we may not be able to see or to measure the depth of the thicket. We can, however, observe the altered growth patterns that give us some indication of where the problems lie.},
discipline={Law},
research_type={Theory},
industry={Academia},
thicket_stance={Weak Pro},
thicket_stance_extract={If patent thickets exist, the concern is that they will substantially impair research and development because the tools of invention cannot flow freely through the research and development community.},
thicket_def={#A-T, #B-T, Overlapping Patents, Unspecified Blocking Mechanism, Diversely-Held, Transaction Costs, Always Hinders Innovation, Cummulative Invention},
thicket_def_extract={On the patent front, a key debate concerns the existence, or non-existence, of bottlenecks such as patent thickets and the extent to which any patent thickets may be interfering with research. For decades, scholars warned that problems related to the over proliferation of patent rights would interfere with innovation.1 In theory, multiple overlapping patent rights can hamper innovation by creating high transactions costs as researchers try to navigate the tangle of existing rights. These costs can discourage investment in research or distort the paths that researchers take due to the difficulty of identifying and negotiating all of the underlying rights necessary to begin researching. This leads to inefficiencies and underutilization of intellectual resources.},
tags={Private Mchanisms, Open Source, Open Transfer, Open Access},
filename={Feldman Nelson (2008) - Open Source Open Access Open Transfer.pdf}
}
@article{gallini2011private,
title={Private Agreements for Coordinating Patent Rights: The Case of Patent Pools},
author={Gallini, N.},
journal={Economia e Politica Industriale},
year={2011},
publisher={FrancoAngeli Editore},
abstract={Inventors and users of technology often enter into cooperative agreements for sharing their intellectual property in order to implement a standard or to avoid costly litigation. Over the past two decades, U.S. antitrust authorities have viewed pooling arrangements that integrate complementary, valid and essential patents as having procompetitive benefits in reducing prices, transactions costs, and the incidence of legal suits. Since patent pools are cooperative agreements, they also have the potential of suppressing competition if, for example, they harbor weak or invalid patents, dampen incentives to conduct research on innovations that compete with the pooled patents, foreclose competition from downstream product or upstream input markets, or raise prices on goods that compete with the pooled patents. In synthesizing the ideas advanced in the economic literature, this paper explores whether these antitrust concerns apply to pools with complementary patents and, if they do, the implications for competition policy to constrain them. Special attention is given to the application of the U.S. Department of Justice-Federal Trade Commission Guidelines for the Licensing of Intellectual Property (1995) and its companion Antitrust Enforcement and Intellectual Property Rights: Promoting Innovation and Competition (2007) to recent patent pool cases.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={To avoid legal suits, developers of these products entangled in a “patent thicket” 2 have had to negotiate with multiple patent owners, stacking up royalty obligations in the process, or abandon R&D on the innovation altogether.},
thicket_def={#A, #B, References Shapiro, Overlapping Patents, Royalty Stacking, Diversely-Held, Unspecified Blocking Mechanism},
thicket_def_extract={To avoid legal suits, developers of these products entangled in a “patent thicket” 2 have had to negotiate with multiple patent owners, stacking up royalty obligations in the process, or abandon R&D on the innovation altogether... A patent thicket arises when there are overlapping patent rights that must be identified and licensed in order for an innovator to bring a new product or technology to market (Shapiro, 2001)},
tags={#Private Mechanisms, Pools, Complements,},
filename={Gallini (2011) - Private Agreements For Coordinating Patent Rights.pdf}
}
@article{ganslandt2009intellectual,
title={Intellectual Property Rights and Competition Policy},
author={Ganslandt, M.},
year={2009},
publisher={Emerald Group Publishing Limited},
abstract={Intellectual property rights and competition policy are intimately related. In this paper I survey the economic literature analyzing the interaction between intellectual property law and competition law and how the boundary between these two policies is drawn in practice. Recognizing that intellectual property rights and competition law can interact in many different ways, the presentation focuses on several key issues. The economic literature on the interaction between competition law and intellectual property rights shows that these regulatory systems are consistent in terms of basic principles. Significant tensions exist, however, and it is difficult to balance IPR and competition law in practice. The significant differences in approach between the United States and the European Union simply reflect the underlying reality that efforts to achieve a sensible balance do not result in policy harmonization.},
discipline={Econ},
research_type={Discussion},
industry={ICT, Biotech},
thicket_stance={Weak Pro},
thicket_stance_extract={Patent thickets may, therefore, impede the ability of firms to conduct research effectively (Eisenberg 1989)... Shapiro (2001) argues that problems with patent thickets become especially thorny in conjunction with the risk of hold-up, which is the danger that new products will inadvertently infringe on patents issued after these products were designed. In terms of empirical evidence, the problem may be insignificant in practice, at least at the general level. Walsh et al. (2003) find that drug discovery has not been substantially impeded by the multiplicity of patented prior inventions and they find little evidence that university research has been impeded by concerns about patents on research tools.},
thicket_def={#A-T, References Shapiro, References Heller/Eisenberg, Complementary Inputs, Diversely-Held, Transaction Costs, Barrier To Entry},
thicket_def_extract={In addition, the significant increase in the multiplicity of patents, referred to as “patent thickets” and “patent floods”, are considered by many to impede the ability of firms to conduct R&D activity effectively (Eisenberg 1989; Shapiro 2001)... A second issue relevant for sequential innovations is so-called “patent thickets”. In some industries, particularly biotechnology and information technologies, it is common that a new entrant, in order to engage in research or production, must obtain a large number of licenses from existing and previous innovators and producers. This problem raises the cost of product commercialization and may create substantial entry barriers for new firms.},
tags={#IPR Reform, Balance with Anti-trust, International Harmonization, Cross-licensing, #Private Mechanisms, Pools, Litigation},
filename={Ganslandt (2009) - Intellectual Property Rights And Competition Policy.pdf}
}
@article{gaule2006towards,
title={Towards Patent Pools in Biotechnology?},
author={Gaul{\'e}, P.},
journal={Innovation Strategy Today},
volume={2},
number={2},
pages={123--143},
year={2006},
abstract={},
discipline={Mgmt},
research_type={Discussion},
industry={Biotech},
thicket_stance={Weak Pro},
thicket_stance_extract={The strength of the anti-commons thesis rests on two assumptions that are very difficult to test: (1) that developing commercial biomedical products requires access to many different IP rights and (2) that negotiating access with different patent owners is prohibitively difficult and costly. On the first point, the number of biotechnology patents has certainly increased dramatically over the last decade, although by itself that does not necessarily imply greater fragmentation. Walsh et al. (2003) report from interviews with biotechnology industry IP practitioners that preliminary freedom to operate searches can sometimes find hundreds of patents relevant to a candidate product but that on closer inspection “there may be, in a complicated case, about 6-12 that they have to seriously address, but that more typically the number was zero.” Enough anecdotal evidence exists, however, to suggest that the fragmentation of rights in biotechnology is sometimes a serious concern.},
thicket_def={#A-T, #B-T, Single Firm, Diversely-Held, Unspecified Blocking Mechanism},
thicket_def_extract={Medimmune has recently acquired exclusive licenses from the portfolios of Wisconsin, St. Jude, and Mount Sinai School of Medicine (“Technology for Faster, Safer Development of Pandemic Flu Vaccine Licensed by Mount School of Medicine” 2005; “MedImmune Expands Patent Estate for Reverse Genetics with New Rights from Mount Sinai School of Medicine” 2005). The IP rights situation described above was arguably a classical case of a patent thicket with fragmented IP rights and uncertainty about technology ownership... The option of a patent pool for this technology was raised (Fedson 04), but instead the situation was resolved by one patent owner acquiring exclusive licenses from the other ones},
tags={#Private Mechanisms, Patent Pools, Cross-Licensing, Standards, },
filename={Gaule (2006) - Towards Patent Pools In Biotechnology.pdf}
}
@article{gilbert2010ties,
title={Ties That Bind: Policies to Promote (Good) Patent Pools},
author={Gilbert, R.J.},
journal={Antitrust Law Journal},
year={2010},
abstract={},
discipline={Law},
research_type={Discussion},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={Patent thickets are common to many high-technology industries in which the manufacture, use, or sale of a device or process may require rights to hundreds of patents.7 Overlapping patent rights raise numerous potential economic problems. Transaction costs of licensing can be high because licensees must identify, search out, and negotiate with numerous separate licensors. Litigation risks can be high because an incomplete portfolio of patent licenses can expose a firm to potentially large infringement damages.},
thicket_def={#A-ST, References Shapiro, Diversely-Held, Complementary Inputs, Transaction Costs, Overlapping Patents},
thicket_def_extract={A “patent thicket,” in which many independent patent holders have rights that cover a technology, is one example of the anticommons...A “patent thicket,” in which many independent patent holders have rights that cover a technology, is one example of the anticommons.5 A patent thicket exists when rights to many patents from different patentees are necessary to lawfully make or sell a product (overlapping rights)},
tags={#Private Mechanisms, Pools, #IPR Reform, Balance with Anti-trust, #Firm Strategy, Collboration, FRAND, Compulsory Licensing},
filename={Gilbert (2010) - Ties That Bind Policies To Promote Good Patent Pools.pdf}
}
@article{glover2002patent,
title={Patent thickets and innovation markets reviewed},
author={Glover, Gregory J},
journal={National Law Journal},
volume={24},
number={56},
pages={C10},
year={2002},
abstract={The u.s federal Trade Commission (FTC), in conjunction with the Antitrust Division of the Department of Justice (DOJ), conducted public hearings in February for the purpose of re-evaluating its enforcement policies regarding the use and licensing of intellectual property. In particular, one of the issues FTC and the DOJ chose to examine was whether "patent thickets" and "innovation markets" raise significant anti-competitive concerns in the pharmaceutical and biotechnology industries.},
discipline={Law},
research_type={Discussion},
industry={Pharma, Biotech},
thicket_stance={Neutral},
thicket_stance_extract={No consensus was reached at the hearings as to the widespread existence of patent thickets or controlling patents that grant market power within the biopharmaceutical industry, partly because the problem has not yet created significant antitrust concerns that warrant censure or investigations.},
thicket_def={#B1, References Shapiro, Broad Patents, Cummulative Invention, Unspecified Blocking Mechanism},
thicket_def_extract={Patent thickets have been described as "a dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology," requiring innovators to obtain multiple licenses from multiple patentees... Furthermore, the practice of seeking patent protection for commonly used gene-based research tools, such as expressed sequence tags, DNA-chip and microarray technology and single nucleotide polymorphism (SNP) based technology, have led to concerns that the process of cumulative innovation in the biopharmaceutical industry may be stymied by protective patent thickets that could result in barriers to entry by firms that would be prevented from using the technologies protected by such patent thickets... However, many of the concerns over excessively broad patent protection for gene-based research tools have been mitigated by the requirements for patentability as required by patent law. In particular, the utility requirement (35 U.S.C. 101) as recently interpreted by the PTO serves as a check to runaway patent protection on partially sequenced genes for which the expressed product is unknown.},
tags={},
filename={Glover (2002) - Patent Thickets And Innovation Markets Reviewed.pdf}
}
@article{goozner2006innovation,
title={Innovation in Biomedicine: Can Stem Cell Research Lead the Way to Affordability?},
author={Goozner, M.},
journal={PLoS medicine},
volume={3},
number={5},
pages={e126},
year={2006},
publisher={Public Library of Science},
abstract={},
discipline={General Science},
research_type={Discussion},
industry={Biotech, Genetics},
thicket_stance={Pro},
thicket_stance_extract={This proliferation of basic science patents has raised the bar— what economists call transaction costs— for other researchers who want access to those research tools...While many researchers, especially in academia, find ways around patent restrictions, and many companies have no trouble executing license agreements, there are cases where “patent thickets” have discouraged other researchers from pursuing similar or subsequent lines of inquiry.},
thicket_def={#A-T, References Heller/Eisenberg, Complementary Inputs, Diversely-Held, Transaction Costs},
thicket_def_extract={While many researchers, especially in academia, find ways around patent restrictions, and many companies have no trouble executing license agreements, there are cases where “patent thickets” have discouraged other researchers from pursuing similar or subsequent lines of inquiry... CIRM and other stem cell funders can become catalysts for cutting through this patent thicket. They can require that all grant recipients agree to donate the exclusive license to any insights, materials, and technologies that they patent to a common patent pool supervised by a new, nonprofi t organization... },
tags={#Private Mechanisms, Industry Commentary, Licensing, Patent Pool, Open Source},
filename={Goozner (2006) - Innovation In Biomedicine.pdf}
}
@article{hall2007patents,
title={Patents and Patent Policy},
author={Hall, B.H.},
journal={Oxford Review of Economic Policy},
volume={23},
number={4},
pages={568--587},
year={2007},
abstract={A patent is the legal right of an inventor to exclude others from making or using a particular invention. This right is sometimes termed an “intellectual property right” and is viewed as an incentive for innovation. This article surveys the evidence on patent effectiveness in encouraging innovation and reviews the current controversies in patent policy.},
discipline={Econ},
research_type={Theory, Discussion},
industry={ICT, Biotech},
thicket_stance={Assumed Pro},
thicket_stance_extract={The first of the problems Barr describes is clearly a case of mutually assured destruction that leaves the firms in question no better (and no worse) off than if they were not accumulating massive numbers of patents for defensive purposes, and yet at the same time is a very costly strategy. Increasing the administrative costs of patents to firms or reforms within the industry itself to discourage this behavior would seem to be the obvious solution, since it would be in the interest of all firms involved to reduce spending on this activity.},
thicket_def={#A-S, References Shapiro},
thicket_def_extract={During the U.S. Federal Trade Commission/Department of Justice hearings on the patent system and antitrust policy in 2002, a number of industry representatives expressed concerns about the difficulty of negotiating the patent thicket in their area and the risk of being “held-up” ex post by a patent on a technology that was only a small component of their product. “My observation is that patents have not been a positive force in stimulating innovation at Cisco. …….. Everything we have done to create new products would have been done even if we could not obtain patents on the innovations and inventions contained in these products. …..The only practical response to this problem of unintentional and sometimes unavoidable patent infringement is to file hundreds of patents each year ourselves, so that we can have something to bring to the table in cross-licensing negotiations. ….},
tags={#IPR Reform, Stricter Patenting Requirements, #Firm Strategy, Defensive/Offensive Patenting},
filename={Hall (2007) - Patents And Patent Policy.pdf}
}
@article{hemphill2003preemptive,
title={Preemptive Patenting, Human Genomics, and the US Biotechnology Sector: Balancing Intellectual Property Rights with Societal Welfare},
author={Hemphill, T.A.},
journal={Technology in Society},
volume={25},
number={3},
pages={337--349},
year={2003},
abstract={Within the biotechnology sector of the US economy, aggressive patenting, i.e. preemptive patenting, of human genomic research results are practiced by private-sector firms, the academic community, and non-profit organizations. Preemptive patenting has traditionally been practiced by the private sector as a competitive strategy, being driven by economic considerations. Recently, academics and patients/consumers have instituted preemptive patenting strategies as a way of ensuring access to genomic sequences for, respectively, research study purposes and life-enhancing access to diagnostic gene testing. To reduce this non-economic motivation for preemptive patenting by these nontraditional competitors, it is recommended that the biotechnology industry initiate a strategy of its own which will: (1) relax firm patent enforcement of genomic sequences that are essential for academic researchers to use in their studies; and (2) provide for a ‘means-test’ approach that incorporates a ‘staggered’ fee-schedule for academic researchers to charge their subjects, i.e. patients, for gene tests and diagnostic results.},
discipline={Econ},
research_type={Discussion},
industry={Biotech, Genetics},
thicket_stance={Pro},
thicket_stance_extract={To forestall imitative activity and strengthen patent rights, firms often attempt to create a ‘patent thicket,’ i.e. obtaining patents not just on one central product or process, but on a host of related products or processes [11]. Firms that try to compete with the inventing firm will find their attempts to duplicate the central product or process blocked by the inventing firm’s grip on alternative technologies. Many of the firm’s patents on related products or processes may never be used or licensed; such ‘sleeping patents’ are held only to raise the costs of entry or imitation by potential rivals.},
thicket_def={#D, Unspecified Blocking Mechanism, Barrier To Entry, Single Firm},
thicket_def_extract={To forestall imitative activity and strengthen patent rights, firms often attempt to create a ‘patent thicket,’ i.e. obtaining patents not just on one central product or process, but on a host of related products or processes... The creation of a patent thicket of sleeping patents by an incumbent firm with monopoly power is a strategy referred to as ‘preemptive patenting.’ And, as noted by Shapiro [25], given cumulative innovation and multiple blocking patents, stronger patent rights can have the perverse effect of stifling, not encouraging, innovation. According to Gilbert and Newbery [26], such a firm has an incentive to maintain its monopoly power by patenting new technologies before potential competitors. The monopoly firm will preempt if the cost is less than the profits gained by preventing entry},
tags={#Firm Strategy, Value from Position/Portfolio, Defensive/Offensive Patenting, Pre-emptive Patenting},
filename={Hemphill (2003) - Preemptive Patenting Human Genomics And The Us Biotechnology Sector.pdf}
}
@article{holman2005biotechnology,
title={Biotechnology's Prescription for Patent Reform},
author={Holman, C.M.},
journal={J. Marshall Rev. Intell. Prop. L.},
volume={5},
pages={i},
year={2005},
abstract={On June 8, 2005, Congressman Lamar Smith introduced H.R. 2795, the “Patent Reform Act of 2005,” aimed at improving the quality and certainty of issued patents, simplifying the patent procurement process, harmonizing U.S. law with international practice, and reining in abusive patent enforcement practices. Congress has set the legislation aside for the time being, but will likely revisit the issue again shortly. The biotechnology industry, one of the fastest growing sectors in the United States economy, strongly opposes many of the proposed reforms. This paper considers the Congressional testimonies of the Biotechnology Industry Organization (“BIO”) and other representatives of biotechnology’s interests, and finds that the industry’s adamant opposition to many of the proposals is driven largely by a belief that biotechnology patents function primarily as tools for securing investment funding, and the fear that investment in biotechnology will be adversely impacted if investors perceive that patent reform has weakened the rights of patent owners and inventors. The paper also considers how the biotechnology sector might be impacted if the proposed reforms are enacted into law, and describes some recent biotechnology cases wherein the outcome might have been different if the reforms had already been in place.},
discipline={Law},
research_type={Discussion},
industry={Biotech},
thicket_stance={Anti},
thicket_stance_extract={If in fact a patent thicket is significantly impeding biotechnology research and development, one might expect that organizations representing the interests of biotechnology, such as BIO, WARF, and Genentech, would be advocating for reforms that would address the problem. Indeed, the biotechnology industry has never been shy about advocating for legislative action to address its concerns.112 But instead, these groups tend to be among the most adamant defenders of the status quo and strong patent rights. One might infer from this that a patent thicket is not in fact substantially impeding biotechnology.},
thicket_def={#B1, #D, References Heller/Eisenberg, Diversely-Held},
thicket_def_extract={Various commentators have proposed that a proliferation of patents poses a serious threat to biotechnology research by creating a patent thicket, sometimes referred to as a “patent anticommons.”106 The theory is especially associated with articles published by Heller and Eisenberg in 1998, and Eisenberg and Rai in 2002.107... These commentators predict that the patenting of upstream technology will result in a difficult-to-penetrate thicket of patent rights that will severely impede biomedical research and development.110 The idea has found resonance with many, and its influence is evident in a variety of critiques of the current patent system.111 If in fact a patent thicket is significantly impeding biotechnology research and development, one might expect that organizations representing the interests of biotechnology, such as BIO, WARF, and Genentech, would be advocating for reforms},
tags={#IPR Reform, Renewal, Stricter Patenting Requirements},
filename={Holman (2005) - Biotechnologys Prescription For Patent Reform.pdf}
}
@article{holman2006clearing,
title={Clearing a Path through the Patent Thicket},
author={Holman, C.},
journal={Cell},
volume={125},
number={4},
pages={629--633},
year={2006},
abstract={Patents do not always promote innovation, particularly when they restrict access to fundamental scientific discoveries and the tools of basic research. However, there are legal and policy approaches that may help to ameliorate problems associated with patenting these sorts of inventions.},
discipline={Law},
research_type={Discussion},
industry={General, Academia},
thicket_stance={Weak Anti},
thicket_stance_extract={Although upstream patents have been widely criticized, and there are a number of cases where specific patents clearly seem to have impeded innovation, there is little objective evidence to support a conclusion that patents constitute a widespread substantial obstacle to biomedical R&D, particularly in the academic sector.},
thicket_def={#B1-S, References Heller/Eisenberg, Complementary Inputs, Diversely-Held},
thicket_def_extract={Upstream patents have been criticized on a number of counts. For example, it has been proposed that the proliferation of patents covering research tools has resulted in a “patent thicket,” rendering it virtually impossible to conduct biomedical research without inadvertently infringing upon a host of conflicting patent claims (Heller and Eisenberg, 1998; Rai and Eisenberg, 2002)... Although in theory a researcher should be able to license the necessary technology inputs, in practice it is generally not feasible owing to the large number of different patent holders, each with their own licensing agenda.},
tags={#Industry Commentary, #IPR Reform, Research Exemptions, #Effects on Academic Research, Stricter Patenting Requirements},
filename={Holman (2006) - Clearing A Path Through The Patent Thicket.pdf}
}
@article{holman2008trends,
title={Trends in Human Gene Patent Litigation},
author={Holman, C.M.},
journal={Science},
volume={322},
number={5899},
pages={198--199},
year={2008},
publisher={American Association for the Advancement of Science},
abstract={},
discipline={General Science},
research_type={Discussion},
industry={Genetics},
thicket_stance={Anti},
thicket_stance_extract={However, for the most part, fears expressed concerning human gene patents have not been manifested overtly in patent litigation. Human gene patent litigation invariably has involved an alleged infringer engaged in substantial commercial activities focused specifically on the single gene that is the subject of the asserted patent, the antithesis of a patent thicket scenario (14). Some have speculated that DNA microarray technology is particularly at risk of becoming entangled in a thicket (6). However, I found no instance in which a human gene patent was asserted against the manufacturer or user of microarray technology, although microarray companies have experienced substantial patent litigation involving nongene patents since the mid-1990s.},
thicket_def={#B1, References Heller/Eisenberg, Unspecified Blocking Mechanism},
thicket_def_extract={Some have postulated that a "thicket" of patents will impede basic biomedical research and will stifle development and utilization of technologies that involve the use of multiple genetic sequences; DNA microarrays are a prime example (5, 6)},
tags={#Industry Commentary},
filename={Holman (2008) - Trends In Human Gene Patent Litigation.pdf}
}
@article{horn2003alternative,
title={Alternative Approaches to IP management: One-stop Technology Platform Licensing},
author={Horn, L.},
journal={Journal of commercial biotechnology},
volume={9},
number={2},
pages={119--127},
year={2003},
publisher={Palgrave Macmillan},
abstract={As a pioneering, one-stop technology platform licensing enterprise, MPEG LA is presented as a template for patent pooling. By providing the marketplace with fair, reasonable, non- discriminatory access to a portfolio of worldwide essential patents under a single licence, this example of a one-stop technology platform licensing programme enables widespread implementation, interoperability and use of fundamental broad-based technologies covered by many patents owned by many patent owners. This paper will: (1) present observations from MPEG LA’s unique experience and perspective including a description of the necessary elements and principles on which such efforts are based, what works and why; and (2) describe efforts to apply this innovative licensing model to the biotechnology and pharmaceutical industries within the larger context of historical patent pooling as a solution to biotechnology bottlenecks.},
discipline={Law},
research_type={Discussion},
industry={ICT, Biotech, Pharma},
thicket_stance={Pro},
thicket_stance_extract={In addition, there has been enormous growth in the number of issued patents containing progressively narrower claims. Therefore, licences under multiple patents owned by multiple patent owners are required. In the absence of a patent pool, the transaction costs required to identify the blocking patents and conclude negotiations for a licence under each of them (assuming the patent owners are even willing to enter into licence negotiations), to say nothing of paying multiple royalties, are too costly for the average user - with the result that technological advancement, adoption and use are impeded; freedom of technological movement is restricted; the potential for conflict is increased; and traditional one-on-one licensing arrangements fall short.},
thicket_def={#B, References Shapiro, Unspecified Blocking Mechanism, Transaction Costs},
thicket_def_extract={Therefore, if the ‘thicket’2 of essential IP rights underlying their use cannot be accessed under reasonable terms and conditions (eg cost) applied evenly to all similarly situated competitors, the best of standards often go unused.},
tags={#Private Mechanisms, Pools, Platforms, Licensing, Standards, Patent Intermediaries},
filename={Horn (2003) - Alternative Approaches To IP Management.pdf}
}
@article{hussinger2006silence,
title={Is Silence Golden? Patents versus Secrecy at the Firm Level},
author={Hussinger, K.},
journal={Economics of Innovation and New Technology},
volume={15},
number={8},
pages={735--752},
year={2006},
publisher={Taylor \& Francis},
abstract={In the 1990s, patenting schemes changed in many respects: upcoming new technologies accelerated the shift from price competition towards competition based on technical inventions, a worldwide surge in patenting took place, and the ‘patent thicket’ arose as a conse- quence of strategic patenting. This study analyzes the importance of patenting versus secrecy as an effective alternative to protect intellec- tual property in the inventions’ market phase. The sales figure with new products is introduced as a new measure for the importance of IP protection tools among product innovating firms. Focusing on the German manufacturing in 2000, it turns out that patents are impor- tant to protect intellectual property in the market, whereas secrecy seems to be rather important for early-stage inventions.},
discipline={Econ},
research_type={Empirical},
industry={General, Manufacturing},
thicket_stance={Neutral},
thicket_stance_extract={A further development is that patents gained in value by their ability to be linked with other patents, which encourages patenting of marginal inven- tions. The resulting complex network of single patents that bears many legal pitfalls for patent applicants was given the name ‘patent thicket’ (Shapiro, 2001). These developments put into question an increased number of patents motivated by an increased need for IP protection and hint at the strategic value of patents to have driven the patent surge. To summarize: on the one hand, recent changes in patenting schemes have caused an elevated need for patents as an IP protection tool. On the other hand, they gained in importance as strategic instruments.},
thicket_def={#D, References Shapiro, Unspecified Blocking Mechanism, Strategic Patenting (Bad)},
thicket_def_extract={A further development is that patents gained in value by their ability to be linked with other patents, which encourages patenting of marginal inventions. The resulting complex network of single patents that bears many legal pitfalls for patent applicants was given the name ‘patent thicket’ (Shapiro, 2001). These developments put into question an increased number of patents motivated by an increased need for IP protection and hint at the strategic value of patents to have driven the patent surge.},
tags={#Firm Strategy, Secrecy},
filename={Hussinger (2006) - Is Silence Golden Patents Versus Secrecy At The Firm Level.pdf}
}
@article{iyama2005uspto,
title={The USPTO's Proposal of a Biological Research Tool Patent Pool Doesn't Hold Water},
author={Iyama, S.},
journal={Stanford Law Review},
pages={1223--1241},
year={2005},
abstract={},
discipline={Law},
research_type={Discussion},
industry={Biotech, Academia},
thicket_stance={Pro},
thicket_stance_extract={But how likely is it that a patent thicket for biological research will develop? According to the NIH working group on research tools, a thicket of research tool patents has already begun to form...The cumulative result of these actions is the initial formation of a patent thicket for research tools. The negative consequence of an extensive research tool patent thicket and its accompanying licensing scheme is the potential chilling effect on innovation.},
thicket_def={References Shapiro, Overlapping Patents, Unspecified Blocking Mechanism, Cummulative Invention},
thicket_def_extract={#B, Under this metaphor, a patent thicket arises when each block is granted separate yet concurrent exclusivity rights. The so-called thicket is the resulting nexus of concurrent and overlapping IP rights that one must navigate in order to practice any evolutionary form of science.},
tags={#Private Mechanisms, IPR Reform, Pools, Balance with Anti-trust},
filename={Iyama (2005) - The Usptos Proposal Of A Biological Research Tool Patent Pool Doesnt Hold Water.pdf}
}
@article{jacob2009patents,
title={Patents and Pharmaceuticals},
author={Jacob, Robin},
year={2009},
journal={A paper given on 29th November at the Presentation of the Directorate-General of Competition’s Preliminary Report of the Pharma-sector inquiry},
abstract={},
discipline={Policy Report},
research_type={Discussion},
industry={Pharma},
thicket_stance={Neutral},
thicket_stance_extract={Every patentee of a major invention is likely to come up with improvements and alleged improvements to his invention. By the time his main patent has expired there will be a thicket of patents intended to extend his monopoly. Some will be good, others bad. It is in the nature of the patent system itself that this should happen and it has always happened. There is nothing new about “evergreening”, only the name and the implication which flows from the word, that there is something sinister going on and that it has only recently been discovered.},
thicket_def={Single Firm, Evergreening},
thicket_def_extract={#C1, #D, Every patentee of a major invention is likely to come up with improvements and alleged improvements to his invention. By the time his main patent has expired there will be a thicket of patents intended to extend his monopoly.},
tags={#Firm Strategy, Evergreening, Industry Commentary},
filename={Jacob (2009) - Patents And Pharmaceuticals.pdf}
}
@article{jensen2004achieving,
title={Achieving the Optimal Power of Patent Rights},
author={Jensen, P.H. and Webster, E.},
journal={Australian Economic Review},
volume={37},
number={4},
pages={419--426},
year={2004},
abstract={In this paper, we identify three policy instruments governments have at their disposal to affect the power of patent rights to prevent imitation: the size of the inventive step used to make the patent granting decision, the rigour of the patent examination process and the predisposition of the courts to affirm the patent office's decision. We develop a simple framework to analyse the effects of changing these policy instruments on ex ante investment in invention in the light of recent concerns about the potential effects of socially undesirable patents.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={In general, a less rigorous examination is cheap to administer but induces uncertainty regarding the patent's validity and thus diminishes the power of patents to prevent imitation. This may have been alleged to give rise to unnecessary license fees, forgone research opportunities, and projects abandoned by competitors who unjustly fear infringement litigation.},
thicket_def={#C1, Strategic Patenting (Bad), Broad Patents, Dubious Patents, Cummulative Invention},
thicket_def_extract={The patent owner may do this by creating a thicket of pantents, so other parties are swamped with so much complex technical documentation that they cannot separate the chaff from the wheat. Developing patent thickets is relatively easy to do in this regime since the patent examination process is cursory.},
tags={#IPR Reform, Stricter Patenting Requirements, Review of Patent Validity},
filename={Jensen Webster (2004) - Achieving The Optimal Power Of Patent Rights.pdf}
}
@article{kato2004patent,
title={Patent Pool Enhances Market Competition},
author={Kato, A.},
journal={International Review of Law and Economics},
volume={24},
number={2},
pages={255--268},
year={2004},
abstract={This article investigates a pool of substitute patents that enable firms to reduce marginal costs of production. Contrary to the general belief, it is shown that a pool of substitute patents may promote competition under certain conditions, thereby enhancing social welfare in the product market. The intuition is that when firms compete in licensing fees, resultant low licensing fees discourage firms from licensing to outside firms. This leads to fewer licensees than when a patent pool is formed.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={In the field of economics, patent pools are analyzed by Shapiro (2000). He considers the role of patent pools in “patent thicket,” which means that there are so many patents issued that a single new patent will likely infringe on some other patents. This situation discourages and retards research, development and commercialization.},
thicket_def={References Shapiro, Overlapping Patents, Cummulative Invention},
thicket_def_extract={#A, #C1, In the field of economics, patent pools are analyzed by Shapiro (2000). He considers the role of patent pools in “patent thicket,” which means that there are so many patents issued that a single new patent will likely infringe on some other patents. This situation discourages and retards research, development and commercialization.},
tags={#Private Mechanisms, Pools, Substitutes, Licensing},
filename={Kato (2004) - Patent Pool Enhances Market Competition.pdf}
}
@article{kesselheim2005university,
title={University-based Science and Biotechnology Products},
author={Kesselheim, A.S. and Avorn, J.},
journal={JAMA: the journal of the American Medical Association},
volume={293},
number={7},
pages={850--854},
year={2005},
publisher={Am Med Assoc},
abstract={The pharmaceutical and biotechnology industries have long relied on pat- enting as the primary means of allocating ownership and control over new discoveries. Yet, patent protection is a double-edged sword that has major implications for the future of innovation in biomedical science in the United States. Excessive “upstream” patenting of genes and molecular targets could hinder further research by creating a need for expensive and inefficient cross-licensing. However, limiting such basic science patenting could allow pri- vate entities to use the results of years of costly publicly funded research to produce and market lucrative products without compensating university- or public sector–based innovators. Academic and other nonprofit research cen- ters would, therefore, be deprived of revenue for pursuing novel therapeu- tics or other seminal research work that may not be patentable. Recent court cases illustrate the inherent conflicts in allocating ownership and control of basic biomedical discoveries. Several options exist to avoid the complex prob- lems of overlapping basic science patents while still rewarding pivotal discoveries and encouraging further innovation. These include establishing ba- sic science patent pools and mandating arbitration arrangements that would assign credit and royalties for biotechnology innovations that depend on prior research that was performed, financed, or both in the public sector.},
discipline={General Science},
research_type={Discussion},
industry={Biotech, Pharma},
thicket_stance={Weak Pro},
thicket_stance_extract={Basic investigations conducted at universities and academic medical centers, usually publicly funded, often pro- duce key insights about the mecha- nisms underlying physiological function and disease states. Private corpora- tions can then commercialize these insights by designing and marketing new therapeutics or other medical tech- nologies based on them. In this chain of development, allowing patenting of each incremental innovation could risk generating a dense thicket of overlap- ping intellectual rights and thus hinder research efforts.},
thicket_def={#B1, References Shapiro, Overlapping Patents, Cummulative Invention},
thicket_def_extract={Basic investigations conducted at universities and academic medical centers, usually publicly funded, often pro- duce key insights about the mecha- nisms underlying physiological function and disease states. Private corpora- tions can then commercialize these insights by designing and marketing new therapeutics or other medical tech- nologies based on them. In this chain of development, allowing patenting of each incremental innovation could risk generating a dense thicket of overlap- ping intellectual rights and thus hinder research efforts.},
tags={#Industry Commentary, #Effects on Academic Research, #IPR Reform, #Private Mechanisms, Pools,},
filename={Kesselheim Avorn (2005) - University Based Science And Biotechnology Products.pdf}
}
@article{kim2004vertical,
title={Vertical Structure and Patent Pools},
author={Kim, S.H.},
journal={Review of Industrial Organization},
volume={25},
number={3},
pages={231--250},
year={2004},
publisher={Springer},
abstract={It is well known that patent pools can enhance efficiency by eliminating the com- plements problem. This paper investigates how the presence of vertically integrated firms affects the economic impact of a patent pool. Without a patent pool, the presence of integrated firms may either increase or decrease the final product price as there are two countervailing effects – reduced double marginalization and raising rivals’ costs. However, when there is a patent pool, vertical integration always lowers the final product price. In conclusion, the economic efficiency arguments for patent pools are enhanced when some firms are vertically integrated.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={When distinct firms are selling inputs – all of which are required for pro- duction of the final product – they fail to internalize the effect that their royalty rates have on the demand for other inputs. This results in each patent holder setting too high a royalty rate. A "patent pool" has begun to attract widespread attention as a solution to both the transaction cost and complements problems.},
thicket_def={#A-T, References Shapiro, References Heller/Eisenberg, Overlapping Patents, Complementary Inputs, Diversely-Held, Transaction Costs},
thicket_def_extract={The proliferation of fragmented and overlapping patent rights is increasingly being recognized as a serious problem; referred to as a "patent thicket" (or "anticommons" by Heller and Eisenberg, 1998). Besides the additional transaction costs incurred in navigating a patent thicket, Shapiro (2001) has called attention to another source of inefficiency: the complements problem. When distinct firms are selling inputs - all of which are required for production of the final product - they fail to internalize the effect that their royalty rates have on the demand for other inputs. This results in each patent holder setting too high a royalty rate.},
tags={#Private Mechanisms, Pools, Raising rivals' costs, #Firm Strategy, Value from Position/Portfolio, Defensive/Offensive Patenting},
filename={Kim (2004) - Vertical Structure And Patent Pools.pdf}
}
@article{king2007clearing,
title={Clearing the Patent Thicket: The Supreme Court and Congress Undertake Patent Reform},
author={King, S.M.},
journal={Intell. Prop. \& Tech. LJ},
volume={9},
pages={13--13},
year={2007},
abstract={},
discipline={Law},
research_type={Discussion},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={All three developments have led to what is perceived as a marked increase in junk patents, as well as what Carl Shapiro has termed a "patent thicket" -overlapping sets of patent rights leading to a maze of cross-licensing agreements, as well as the rise of hold-up litigation.},
thicket_def={#B, #C1, References Shapiro, Overlapping Patents, Hold-up},
thicket_def_extract={All three developments have led to what is perceived as a marked increase in junk patents, as well as what Carl Shapiro has termed a "patent thicket" - overlapping sets of patent rights leading to a maze of cross-licensing agreements, as well as the rise of hold-up litigation.},
tags={#IPR Reform, Post-grant Review, #Firm Strategy, Willful Infringement},
filename={King (2007) - Clearing The Patent Thicket.pdf}
}
@article{kwon2012patent,
title={Patent Thicket, Secrecy, and Licensing},
author={Kwon, I.},
journal={The Korean Economic Review},
volume={28},
number={1},
pages={27--49},
year={2012},
abstract={This paper considers a patent portfolio race where firms compete for complementary patents, called a patent thicket. When firms have an option to keep their innovation secret, this paper shows that there exists an equilibrium where firms’ patent propensity is strictly between zero and one. In such an equilibrium, stronger patent protection reduces the firms’ investment in innovation. Moreover, this result does not change even when a licensing contract is feasible.},
discipline={Econ},
research_type={Theory},
industry={ICT},
thicket_stance={Weak Pro},
thicket_stance_extract={Thus, on the one hand, firms would try to build up their patent portfolio, or patent thicket, to defend their product. On the other hand, such potential patent lawsuits would eventually reduce the R&D investment, called the hold-up problem.},
thicket_def={References Shapiro, Hold-up, Complementary Inputs},
thicket_def_extract={#A, A growing number of studies have emphasized the negative effect of the hold-up problem when firms compete for a portfolio of complementary patents, called a patent thicket (e.g., Bessen 2004, Hall and Ziedonis 2001, Shapiro 2001).},
tags={#Private Mechanisms, Licensing, #Firm Strategy, Secrecy, Complements, Offensive/Defensive Patenting, Value from Position/Portfolio},
filename={Kwon (2012) - Patent Thicket Secrecy And Licensing.pdf}
}
@techreport{lampe2009patent,
title={Do Patent Pools Encourage Innovation? Evidence from the 19th-century Sewing Machine Industry},
author={Lampe, R.L. and Moser, P.},
year={2009},
institution={National Bureau of Economic Research},
abstract={Members of a patent pool agree to use a set of patents as if they were jointly owned by all members and license them as a package to other firms. Regulators favor pools as a means to encourage innovation: Pools are expected to reduce litigation risks for their members and lower license fees and transactions costs for other firms. This paper uses the example of the first patent pool in U.S. history, the Sewing Machine Combination (1856-1877) to perform the first empirical test of the effects of a patent pool on innovation. Contrary to theoretical predictions, the sewing machine pool appears to have discouraged patenting and innovation, in particular for the members of the pool. Data on stitches per minute, as an objectively quantifiable measure of innovation, confirm these findings. Innovation for both members and outside firms slowed as soon as the pool had been established and resumed only after it had dissolved.},
discipline={Econ},
research_type={Empirical},
industry={Sewing},
thicket_stance={Pro},
thicket_stance_extract={Almost one hundred years later, patent pools have re-emerged as a remedy for industries that are plagued by litigation and patent blocking, which occurs when owners of competing patents prevent the commercialization of new technologies.},
thicket_def={#B, References Shapiro, Unspecified Blocking Mechanism},
thicket_def_extract={Almost one hundred years later, patent pools have re-emerged as a remedy for industries that are plagued by litigation and patent blocking, which occurs when owners of competing patents prevent the commercialization of new technologies... Specifically, the prospect of a patent pool increases firms’ incentives to invest in R&D because lower risks of litigation and improved licensing schemes increase expected profits for participating firms...},
tags={#Private Mechanisms, Pools},
filename={Lampe Moser (2009) - Do Patent Pools Encourage Innovation.pdf}
}
@techreport{lampe2012patent,
title={Do Patent Pools Encourage Innovation? Evidence from 20 US Industries under the New Deal},
author={Lampe, R.L. and Moser, P.},
year={2012},
institution={National Bureau of Economic Research},
abstract={},
discipline={Econ},
research_type={Empirical},
industry={General},
thicket_stance={Weak Pro},
thicket_stance_extract={For example, the creation of a pool may reduce the need for member firms to create patent thickets by reducing the threat of litigation (e.g., Shapiro 2001; Gilbert 2004).},
thicket_def={#C1, #D, References Shapiro, Dubious Patents},
thicket_def_extract={We also investigate whether part of the observed decline may be driven by a reduction in lower-quality or “strategic” patents. For example, the creation of a pool may reduce the need for member firms to create patent thickets by reducing the threat of litigation (e.g., Shapiro 2001; Gilbert 2004)},
tags={#Private Mechanisms, Pools, #Firm Strategy, Value from Position/Portfolio},
filename={Lampe Moser (2012) - Do Patent Pools Encourage Innovation.pdf}
}
@article{lanjouw2004protecting,
title = {Protecting Intellectual Property Rights: Are Small Firms Handicapped?},
author = {Jean O. Lanjouw and Mark Schankerman},
journal = {Journal of Law and Economics},
volume = {47},
number = {1},
pages = {pp. 45-74},
abstract = {Abstract This paper studies the determinants of patent suits and settlements during 1978–99 by linking information from the U.S. patent office, the federal courts, and industry sources. We find that litigation risk is much higher for patents that are owned by individuals and firms with small patent portfolios. Patentees with a large portfolio of patents to trade, or other characteristics that facilitate “cooperative” resolution of disputes, are much less likely to prosecute infringement suits. However, postsuit outcomes do not depend on these characteristics. These findings show that small patentees are at a significant disadvantage in protecting their patent rights because their greater litigation risk is not offset by more rapid resolution of their suits. Our empirical estimates of the heterogeneity in litigation risk can help in developing private patent litigation insurance to mitigate the adverse affects of high enforcement costs.},
year = {2004},
publisher = {The University of Chicago Press for The Booth School of Business of the University of Chicago and The University of Chicago Law School},
copyright = {Copyright © 2004 The University of Chicago},
discipline={Econ},
research_type={Empirical},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={Carl Shapiro emphasizes that firms rely heavily on cross-licensing arrangements and patent pools as a way of mitigating these problems of the anticommons (fragmented property rights).47 But small firms are effectively blocked from using these arrangements unless cash payments are accepted for participation, and typically they are not.},
thicket_def={References Shapiro, Barrier To Entry, Unspecified Blocking Mechanism},
thicket_def_extract={#A, Our findings that patent portfolio size and technology concentration significantly affect litigation risk have important implications for R&D incentives. The threat of costly enforcement can affect R&D investment and patenting strategies.45 This is especially so for small, high-technology firms that are more likely to face capital market constraints.46 Carl Shapiro emphasizes that firms rely heavily on cross-licensing arrangements and patent pools as a way of mitigating these problems of the anticommons (fragmented property rights).47 But small firms are effectively blocked from using these arrangements unless cash payments are accepted for participation, and typically they are not.},
tags={Value from Position/Portfolio, #Firm Strategy, Litigation Insurance},
filename={Lanjouw Schankerman (2004) - Protecting Intellectual Property Rights Are Small Firms Handicapped.pdf}
}
@article{layne2011join,
title={To Join or Not to Join: Examining Patent Pool Participation and Rent Sharing Rules},
author={Layne-Farrar, Anne and Lerner, Josh},
journal={International Journal of Industrial Organization},
volume={29},
number={2},
pages={294--303},
year={2011},
publisher={Elsevier},
abstract={In recognition that participation in modern patent pools is voluntary, we present empirical evidence on participation rates and the factors that drive the decision to join a pool, including the profit sharing rules adopted by the pool's founders. In most participation contexts, the at-risk group is extremely difficult, if not impossible, to identify. For pools centered on technologies that result from a standard-setting process, in contrast, we are able to identify a relatively unambiguous population of patents eligible for inclusion but that have not been included in the pool. We find that vertically integrated firms, with patents and downstream operations, are more likely to join a patent pool and among those firms that do join, those with relatively symmetric patent contributions (in terms of value) to a standard appear more likely to accept numeric patent share rules for dividing royalty earnings.},
discipline={Econ},
research_type={Empirical},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={Until recently, the economic literature on patents pools–voluntary organizations created for the purpose of pooling a group of patents into a single licensing package–has been quite sparse. Following on the heels of the intense interest in the theories of “patent thickets” and “royalty stacking” (e.g., Shapiro, 2001, 2006), and the increased proliferation of organizations that promulgate technical standards for products and services, patent pools are emerging as an important topic for economic analysis. The newfound interest is understandable, given that patent pools are one of the more readily available tools proposed for overcoming the potentially harmful effects of overlapping or blocking patent rights (Merges, 1999; Shapiro, 2001).},
thicket_def={#A, #B, References Shapiro, Overlapping Patents, Unspecified Blocking Mechanism},
thicket_def_extract={Until recently, the economic literature on patents pools - voluntary organizations created for the purpose of pooling a group of patents into a single licensing package - has been quite sparse. Following on the heels of the intense interest in the theories of "patent thickets" and "royalty stacking" (e.g., Shapiro, 2001, 2006), and the increased proliferation of organizations that promulgate technical standards for products and services, patent pools are emerging as an important topic for economic analysis. The newfound interest is understandable, given that patent pools are one of the more readily available tools proposed for overcoming the potentially harmful effects of overlapping or blocking patent rights (Merges, 1999; Shapiro, 2001).},
tags={#Private Mechanisms, Pools, #Firm Strategy, Value from Position/Portfolio, Standards},
filename={LayneFarrar Lerner (2011) - To Join Or Not To Join.pdf}
}
@article{layne2007pricing,
title={Pricing Patents for Licensing in Standard-Setting Organizations: Making Sense of FRAND Commitments},
author={Layne-Farrar, A. and Padilla, A.J. and Schmalensee, R.},
journal={Antitrust LJ},
volume={74},
pages={671},
year={2007},
abstract={We explore potential methods for assessing whether licensing terms for intellectual property declared essential within a standard setting organization can be considered fair, reasonable, and non-discriminatory (FRAND). We first consider extending Georgia-Pacific to a standard setting context. We then evaluate numeric proportionality, which is modelled after certain patent pool arrangements and which has been proposed in a pending FRAND antitrust suit. We then turn to two economic models with potential. The first—the efficient component-pricing rule (ECPR)—is based on the economic concept of market competition. The second—-the Shapley value method—is based on cooperative game theory models and social concepts for a fair division of rents. Interestingly, these two distinct methods suggest a similar benchmark for evaluating FRAND licenses, but ones which might appeal differently to the courts and competition authorities in the US as compared to Europe. We find that under any approach, patents covering “essential” technologies with a greater contribution to the value of the standard and without close substitutes before the standard gets adopted should receive higher royalty payments after the adoption of the standard.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={In short, a poorly implemented numeric proportionality rule would not only fail to satisfy FRAND principles,23 it would also encourage a proliferation of patenting of minor innovations...It would thus exacerbate any worries over patent proliferation and patent thickets, already a hotly debated in the academic literature and popular press. For influential papers on patent thickets, see Shapiro (2001) and Heller and Eisenberg (1998)},
thicket_def={#C1, #D, References Shapiro, References Heller/Eisenberg, Dubious Patents},
thicket_def_extract={In short, a poorly implemented numeric proportionality rule would not only fail to satisfy FRAND principles,23 it would also encourage a proliferation of patenting of minor innovations...It would thus exacerbate any worries over patent proliferation and patent thickets, already a hotly debated in the academic literature and popular press. For influential papers on patent thickets, see Shapiro (2001) and Heller and Eisenberg (1998)},
tags={#Private Mechanisms, Standards, SSOs, FRAND, Licensing},
filename={LayneFarrar (2007) - Pricing Patents for Licensing in Standard-Setting Organizations.pdf}
}
@article{leaffer2009patent,
title={Patent Misuse and Innovation},
author={Leaffer, M.},
journal={J. High Tech. L.},
volume={10},
pages={142},
year={2009},
abstract={},
discipline={Law},
research_type={Theory},
industry={General},
thicket_stance={Weak Pro},
thicket_stance_extract={Single company acquisition of a dense web of overlapping patents-patent thickets15-may create a seemingly impenetrable web which a company must hack its way through in order to commercialize new technology.1 6 As the number of issued patents skyrocket, companies more frequently enter into arrangements with competitors "not only to recover their investment from creating patented products but also to avoid the patent landmines that line the path of innovation."},
thicket_def={#B, #C1, Quotes Shapiro, Single Firm, Overlapping Patents, Unspecified Blocking Mechanism, Dubious Patents},
thicket_def_extract={Single company acquisition of a dense web of overlapping patents-patent thickets 15-may create a seemingly impenetrable web which a company must hack its way through in order to commercialize new technology... As the number of issued patents skyrocket, companies more frequently enter into arrangements with competitors "not only to recover their investment from creating patented products but also to avoid the patent landmines that line the path of innovation."17 Companies strategically use patent litigation as a means to protect their competitive position. 18 Even though a company might believe that it is not infringing, it is often better to settle than fight... Proctor & Gamble, Co. v. Paragon Trade Brands, Inc., 15 F. Supp. 2d 406, 414 (D. Del. 1998). The term "patent thicket" first appeared in this case. Id at 414, n.6.... As stated above, patent thickets may encompass patents of dubious merit.143 Unfortunately, it is costly to innovate around assertions of infringement.1},
tags={#Firm Strategy, Value from Position/Portfolio, Defensive/Offensive Patenting, Blocking patents, #Private Mechanisms, SSOs, Grant-backs, Package Licenses},
filename={Leaffer (2009) - Patent Misuse And Innovation.pdf}
}
@article{lee2006examining,
title={Examining the Viability of Patent Pools for the Growing Nanotechnology Patent Thicket},
author={Lee, A.},
journal={Nanotech. L. \& Bus.},
volume={3},
pages={317},
year={2006},
abstract={A patent pool is a cooperative arrangement between several patent holders, all of them necessary and fundamental to the creation of a product or process, where all of the patents can be licensed at a single price. They are an attractive option for fragmented patent landscapes, where they are created in hopes of avoiding the high cost associated with acquiring numerous licensing agreements, avoid widespread patent disputes, and help create a standard, amongst other reasons. This issue is especially relevant to the emerging scientific field of nanotechnology, where there is widespread concern about the fragmentation of the intellectual property landscape. This paper aimed to develop a general list of criteria to aid in determining whether patent pools are a viable option for a market by examining relevant literature and conducting interviews; it was then applied to the dendritic nanotechnology’s drug delivery and pharmaceutical applications. The completed list had nine criteria and, when applied to the dendritic nanotechnology market, concludes that a patent pool will not be necessary for the continued advancement of this application. The primary reason is that a huge amount of patents are in control of one company alone, Dendritic Nanotechnologies, and seem to be the primary source for the most highly sought after dendritic patents.},
discipline={Law},
research_type={Discussion},
industry={Nanotech},
thicket_stance={Assumed Pro},
thicket_stance_extract={They are often viewed as the "simplest solution" to intellectual property rights (IPR) bottlenecks with multiple stakeholders that have overlapping sets of IP (a.k.a patent thickets) or are uncertain if there is possible infringement of patent issues (a.k.a. Patent Hold-Up).},
thicket_def={#B, Overlapping Patents, Diversely-Held},
thicket_def_extract={...to intellectual property rights (IPR) bottlenecks with multiple stakeholders that have overlapping sets of IP (a.k.a patent thickets)},
tags={#Private Mechanisms, Pools},
filename={Lee (2006) - Examining The Viability Of Patent Pools For The Growing Nanotechnology Patent Thicket.pdf}
}
@article{lei2009patents,
title={Patents versus Patenting: Implications of Intellectual Property Protection for Biological Research},
author={Lei, Z. and Juneja, R. and Wright, B.D.},
year={2009},
abstract={A new survey shows scientists consider the proliferation of intellectual property protection to have a strongly negative effect on research.},
discipline={General Science},
research_type={Survey},
industry={Biotech, Academia},
thicket_stance={Anti},
thicket_stance_extract={Our respondents do not encounter an anticommons or a patent thicket. Rather, they believe that institutionally mandated MTAs put sand in the wheels of a lively system of intradisciplinary exchanges of research tools. Seeing no countervailing effect on the supply of these tools, they conclude that patenting impedes the progress of research.},
thicket_def={References Shapiro, References Heller/Eisenberg, Unspecified Blocking Mechanism},
thicket_def_extract={#A, #B, This question has been of particular concern for the biological sciences, where production and exchange of biological ‘research tools’ are important for ongoing scientific progress. Recent studies addressing this issue in the United States1,2, Germany3, Australia4 and Japan5 find that “patent thickets”6 or an “anticommons”7 rarely affect the research of academic scientists... Our respondents do not encounter an anticommons or a patent thicket. Rather, they believe that institutionally mandated MTAs put sand in the wheels of a lively system of intradisciplinary exchanges of research tools. Seeing no countervailing effect on the supply of these tools, they conclude that patenting impedes the progress of research.},
tags={#IPR Reform, Research Exemption, Open Source, #Effects on Academic Research},
filename={Lei Juneja Wright (2009) - Patents Versus Patenting.pdf}
}
@article{lemley2006patent,
title={Patent Holdup and Royalty Stacking},
author={Lemley, M. and Shapiro, C.},
year={2006},
abstract={We study several interconnected problems that arise under the current U.S. patent system when a patent covers one component or feature of a complex product. This situation is common in the information technology sector of the economy. Our analysis applies to cases involving reasonable royalties, but not lost profits. First, we show using bargaining theory that the threat to obtain a permanent injunction greatly enhances the patent holder’s negotiating power, leading to royalty rates that exceed a natural benchmark range based on the value of the patented technology and the strength of the patent. Such royalty overcharges are especially great for weak patents covering a minor feature of a product with a sizeable price/cost margin, including products sold by firms that themselves have made substantial R&D investments. These royalty overcharges do not disappear even if the allegedly infringing firm is fully aware of the patent when it initially designs its product. However, the hold-up problems caused by the threat of injunctions are reduced if courts regularly grant stays to permanent injunctions to give defendants time to redesign their products to avoid infringement when this is possible. Second, we show how hold-up problems are magnified in the presence of royalty stacking, i.e., when multiple patents read on a single product. Third, using third-generation cellular telephones and Wi-Fi as leading examples, we illustrate that royalty stacking can become a very serious problem, especially in the standard-setting context where hundreds or even thousands of patents can read on a single product standard. Fourth, we discuss the use of “reasonable royalties” to award damages in patent infringement cases. We report empirical results regarding the measurement of “reasonable royalties” by the courts and identify various practical problems that tend to lead courts to over-estimate “reasonable royalties” in the presence of royalty stacking. Finally, we make suggestions for patent reform based on our theoretical and empirical findings.},
discipline={Econ},
research_type={Theory},
industry={ICT},
thicket_stance={Pro},
thicket_stance_extract={The fact that a great many patents can read on a single product, and that this is common in certain critical industries, creates numerous practical problems for the operation of the patent system.},
thicket_def={#A, References Shapiro, References Heller/Eisenberg, Complementary Inputs, Diversely-Held},
thicket_def_extract={The fact that a great many patents can read on a single product, and that this is common in certain critical industries, creates numerous practical problems for the operation of the patent system.},
tags={#Private Mechanisms, SSOs, Standards, #IPR Reform, Prevent Hold-up/Royalty-stacking, Reasonable Royalty},
filename={Lemley Shapiro (2006) - Patent Holdup And Royalty Stacking.pdf}
}
@article{lemley2005probabilistic,
title={Probabilistic Patents},
author={Lemley, M.A. and Shapiro, C.},
journal={The Journal of Economic Perspectives},
volume={19},
number={2},
pages={75--98},
year={2005},
abstract={},
discipline={Econ},
research_type={Theory},
industry={General, Pharma},
thicket_stance={Pro},
thicket_stance_extract={Similarly, patent thickets can have deleterious effects on both competition and innovation.},
thicket_def={#A, References Shapiro, Complementary Inputs, Diversely-Held},
thicket_def_extract={In a number of key industries, particularly semiconductors (Hall and Ziedonis, 2001) and computer software (Bessen and Hunt, 2004), companies file numerous patent applications on related components that are integrated into a single functional product.The result is a "patent thicket," in which hundreds of patents can apply to a single product (Shapiro, 2001; FTC, 2003).},
tags={#Private Mechanisms, Cross-Licensing, #IPR Reform, Creation of New Classification, Stricter Patenting Requirements, Litigation},
filename={Lemley Shapiro (2005) - Probabilistic Patents.pdf}
}
@article{lemley2005patenting,
title={Patenting Nanotechnology},
author={Lemley, M.A.},
journal={Stanford Law Review},
pages={601--630},
year={2005},
abstract={Universities and companies are rushing to the patent office in record numbers to patent nanotechnology inventions. This rush to the patent office is so signficant that many law firms have established nanotechnology practice groups and the U.S. Patent and Trademark Office has now created a new technology class designed to track nanotechnology products. Three big differences between the emerging science of nanotechnology and other inventions make the role of patents more significant in this arena than elsewhere. First, this is almost the first new field in a century in which the basic ideas are being patented at the outset. In many of the most important fields of invention over the past century - computer hardware, software, the Internet, even biotechnology- the basic building blocks of the field were either unpatented or teh patents were amde available to all users by government regulation. In others, patents were delayed by interferences for so long that the industry developed free from their influence. In nanotechnology, by contrast, companies and universities alike are patenting early and often. A second factor distinguishing nanotechnology is its unique cross-industry structure. Unlike other new industries, in which the patentees are largerly actual or at least potential participants in the market, a significant number of nanotechnology patentees will own rights not just in the industry in which they participate, but in other industries as well.This overlap may signficantly affect thier incentives to license the patents. Finally, a large number of the basic nanotechnology patents have been issued to universities, which have become far more active in patenting in the last twenty-five years. While universities have no direct incentive to restrict competition, their interests may or may not align with the optimal implementation of building-block nanotechnology inventions. The result is a nascent market in which a patent thicket is in theory a serious risk. Whether it will prove a problem in practice depends in large part on how efficient the licensing market turns out to be.},
discipline={Law},
research_type={Discussion},
industry={Nanotech},
thicket_stance={Pro},
thicket_stance_extract={The dispersion of overlapping patents across too many firms can also create an anticommons or thicket problem, making effective use of the technology difficult, if not impossible},
thicket_def={#A, #B, References Shapiro, Complementary Inputs, Diversely-Held, Overlapping Patents, Cummulative Invention},
thicket_def_extract={While universities have no direct incentive to restrict competition, their interests may or may not align with the optimal implementation of building-block nanotechnology inventions. The result is a nascent market in which a patent thicket is in theory a serious risk... In a surprising range of fields of invention over the past century in what we might think of as "enabling" technologies24 - computer hardware, software, the Internet, even biotechnology - the basic building blocks of the field were either unpatented, through mistake or because they were created by government or university scientists with no interest in patents, or the patents presented no obstacle because the government compelled licensing of the patents, or they were ultimately invalidated. In still other fields, including the laser, the integrated circuit, and polymer chemistry, basic building-block patents did issue, but they were delayed so long in interference proceedings that the industry developed in the absence of enforceable patents... These facts in combination mean that patents will cast a larger shadow over nanotech than they have over any other modern science at a comparable stage of development. Indeed, not since the birth of the airplane a hundred years ago have we seen similar efforts by a range of different inventors to patent basic concepts in advance of a developed market for end products.76 Some fear that ownership of nanotechnology patents is too fragmented, risking the development of a patent "thicket."77 Miller offers several examples of nanoscale technologies that have overlapping patents covering the same basic invention, including the carbon nanotube and semiconducting nanocrystals.},
tags={#Effects on Academic Research, #Private Mechanisms, Licensing, Compulsory Licensing, #IPR Reform, NPEs},
filename={Lemley (2005) - Patenting Nanotechnology.pdf}
}
@article{lerner2005theeconomics,
title = {The Economics of Technology Sharing: Open Source and Beyond},
author = {Lerner, Josh and Tirole, Jean},
journal = {The Journal of Economic Perspectives},
volume = {19},
number = {2},
pages = {pp. 99-120},
abstract = {This paper reviews our understanding of the growing open source movement. We highlight how many aspects of open source software appear initially puzzling to an economist. As we have acknowledge, our ability to answer confidently many of the issues raised here questions is likely to increase as the open source movement itself grows and evolves. At the same time, it is heartening to us how much of open source activities can be understood within existing economic frameworks, despite the presence of claims to the contrary. The labor and industrial organization literatures provide lenses through which the structure of open source projects, the role of contributors, and the movement's ongoing evolution can be viewed.},
year = {2005},
publisher = {American Economic Association},
copyright = {Copyright © 2005 American Economic Association},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={Firms can also address these problems in non-open-source ways, such as patent pools, standard-setting organizations, and self-imposed commitments. In a patent pool, firms blend their patents with those of other firms. These pools allow users to access a number of firms’ patents simultaneously, thereby avoiding the “patent thicket.”},
thicket_def={#A, Overlapping Patents, Diversely-Held, Unspecified Blocking Mechanism, Deliberate Royalty Stacking},
thicket_def_extract={Second, open source avoids the problem of a “patent thicket” when multiple firms have overlapping intellectual property rights, and at least one party attempts to extract a high fee for its particular contribution.},
tags={#Private Mechanisms, Open Source},
filename={Lerner Tirole (2005) - The Economics Of Technology Sharing Open Source And Beyond.pdf}
}
@article{lerner2003structure,
title={The Structure and Performance of Patent Pools: Empirical Evidence},
author={Lerner, J. and Strojwas, M. and Tirole, J.},
journal={Working paper},
year={2003},
abstract={},
discipline={Econ},
research_type={Empirical},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={Numerous commentators have suggested that the proliferation of these awards has had socially detrimental consequences: overlapping intellectual property rights may make it difficult for inventors to commercialize new innovations. (Gallini [2002] reviews this literature.)},
thicket_def={#A, #B, Diversely-Held, Overlapping Patents},
thicket_def_extract={Second, open source avoids the problem of a 30 “patent thicket” when multiple firms have overlapping intellectual property rights, and at least one party attempts to extract a high fee for its particular contribution... A more benign alternative is that firms enter into patent pools to solve the “patent thicket” problem: the presence of overlapping intellectual property holdings that make it difficult for third parties to license patent holdings and develop new technologies.},
tags={#Private Mechanisms, Pools},
filename={Lerner Strojwas Tirole (2003) - The Structure And Performance Of Patent Pools Empirical Evidence.pdf}
}
@techreport{lerner2002efficient,
title={Efficient Patent Pools},
author={Lerner, J. and Tirole, J.},
year={2002},
institution={National Bureau of Economic Research},
abstract={The paper builds a tractable model of a patent pool, an agreement among patent owners to license a set of their patents to one another or to third parties. It Þrst provides a necessary and sufficient condition for a patent pool to enhance welfare. It shows that requiring pool members to be able to independently license patents matters if and only if the pool is otherwise welfare reducing, a property that allows the antitrust authorities to use this requirement to screen out unattractive pools. The paper then undertakes a number of extensions: cases where patents differ in importance, where asymmetric blocking patterns exist, and where licensors are also licencees. We also undertake some initial explorations of the impact of pools on innovation. We conclude by showing that the analysis has broader applicability than pools, as it is also relevant to a number of co-marketing arrangements.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Weak Pro},
thicket_stance_extract={Innovations in computer hardware, software, and biotechnology often build on a number of other innovations owned by a diverse set of owners and as a result ?patent thicket" problems - overlapping patent claims that preclude the adoption of new technologies - can be severe.},
thicket_def={#A, #B, Diversely-Held, Overlapping Patents},
thicket_def_extract={Innovations in computer hardware, software, and biotechnology often build on a number of other innovations owned by a diverse set of owners and as a result ?patent thicket" problems - overlapping patent claims that preclude the adoption of new technologies - can be severe.},
tags={#Private Mechanisms, Pools, Licensing},
filename={Lerner Tirole (2002) - Efficient Patent Pools.pdf}
}
@incollection{lerner2008public,
title={Public Policy Toward Patent Pools},
author={Lerner, J. and Tirole, J.},
booktitle={Innovation Policy and the Economy, Volume 8},
pages={157--186},
year={2008},
publisher={University of Chicago Press},
abstract={The past two decades have seen an explosion of patent awards and litigation across a wide variety of technologies, which numerous commentators have suggested has socially detrimental conseuqences. Patent pools, in which owners of intellectual property share patent rights with each other and third parties, have been proposed as a way in which firms can address this patent-thicket problem. The paper discusses the current regulatory treatment of patent pools and highlights why a more nuanced view than focusing on the extreme cases of perfect complements and perfect substitutes is needed. It also highlights the importance of regulators' stance towward independent licensing, grantback policies, and royalty control. We also present case-study and large-sample empirical evidence.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={Many observers have suggested that patent-thicket problems where key patents are widely held affect many emerging industries. Patent thickets may lead to three problems. First, royalty stacking may result: each individual patent holder may charge a royalty that seems reasonable when viewed in isolation, but together they represent an unreasonable burden. Second, even if other firms agree to license their patents at a modest rate, a hold-out problem may result if a single firm then sets a high license fee for its technology Finally, the very process of arranging the needed licenses may prove to be time consuming. Patent pools thus offer a one-stop shop through which these problems can be avoided.},
thicket_def={#Aa-T, Diversely-Held, Royalty Stacking, Transaction Costs},
thicket_def_extract={Many observers have suggested that patent-thicket problems - where key patents are widely held affect many emerging industries... Patent thickets may lead to three problems. First, royalty stacking may result: each individual patent holder may charge a royalty that seems reasonable when viewed in isolation, but together they represent an unreasonable burden. Second, even if other firms agree to license their patents at a modest rate, a hold-out problem may result if a single firm then sets a high license fee for its technology... Finally, the very process of arranging the needed licenses may prove to be time consuming. Patent pools thus offer a one-stop shop through which these problems can be avoided. B},
tags={#Private Mechanisms, Pools, Licensing, Grant-back},
filename={Lerner Tirole (2008) - Public Policy Toward Patent Pools.pdf}
}
@article{lerner2007impact,
title={What is the Impact of Software Patent Shifts? Evidence from Lotus v. Borland},
author={Lerner, J. and Zhu, F.},
journal={International Journal of Industrial Organization},
volume={25},
number={3},
pages={511--529},
year={2007},
abstract={Economists have debated the extent to which strengthening patent protection spurs or detracts from technological innovation. This paper examines the reduction of software copyright protection in the Lotus v. Borland decision. If patent and copyright protections are substitutes, weakening of one form should be associated with an increased reliance on the other. We find that the firms affected by the diminution of copyright protection disproportionately accelerated their patenting in subsequent years. But little evidence can be found for any harmful effects on firms' performance and incentive to innovate: in fact, the increased reliance on patents is correlated with growth in measures such as sales and R&D expenditures.},
discipline={Econ},
research_type={Empirical},
industry={Software},
thicket_stance={Weak Pro},
thicket_stance_extract={The environment is a complex one: many other changes, such as the widespread dissemination of the Internet, may have differentially affected firms during this period. While our result contradicts the claim by Bessen and Hunt (2004) that software patents substitute for R&D at the firm level, increased reliance on patenting could at the same time contribute to patent thickets that slow down overall innovation in the industry. Therefore, the patent thicket problem – an overlapping set of patent rights requiring those seeking to commercialize new technology obtain licenses from multiple patentees (Shapiro, 2001) – could still exist},
thicket_def={#A, #B, References Shapiro, Diversely-Held, Overlapping Patents},
thicket_def_extract={Therefore, the patent thicket problem – an overlapping set of patent rights requiring those seeking to commercialize new technology obtain licenses from multiple patentees (Shapiro, 2001) – could still exist},
tags={#IPR Reform},
filename={Lerner Zhu (2007) - What Is The Impact Of Software Patent Shifts.pdf}
}
@article{lerner2007design,
title={The Design of Patent Pools: The Determinants of Licensing Rules},
author={Lerner, J. and Tirole, J. and Strojwas, M.},
journal={The RAND Journal of Economics},
volume={38},
number={3},
pages={610--625},
year={2007},
publisher={Wiley Online Library},
abstract={},
discipline={Econ},
research_type={Theory, Empirical},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={Numerous commentators have suggested that the proliferation of awards has had socially detrimental consequences: overlapping intellectual property rights may make it difficult for inventors to commercialize new innovations (Gallini, 2002 reviews this literature). Patent pools have been proposed by Merges (1999), Priest (1977), Shapiro (2000), and the U.S. Patent and Trademark Office (Clark, Piccolo, Stanton, and Tyson, 2001) as away in which firms can address "patent thicket" problems. Indeed, patent pools have become economically significant. Clarkson (2003) estimates that sales in 2001 of devices based inwhole or in part on pooled patents were at least $100 billion. Were suggestions to facilitate the formation of patent pools to be adopted, their role might approach that seen in the early days of the twentieth century, when many (if not most) important manufacturing industries had a patent-pooling arrangement.},
thicket_def={#A, #B, References Shapiro, Overlapping Patents},
thicket_def_extract={Numerous commentators have suggested that the proliferation of awards has had socially detrimental consequences: overlapping intellectual property rights may make it difficult for inventors to commercialize new innovations (Gallini, 2002 reviews this literature). Patent pools have been proposed by Merges (1999), Priest (1977), Shapiro (2000), and the U.S. Patent and Trademark Office (Clark, Piccolo, Stanton, and Tyson, 2001) as a way in which firms can address "patent thicket" problems.},
tags={#Private Mechanisms, Pools, Licensing, Grantbacks},
filename={Lerner Tirole Strojwas (2007) - The Design Of Patent Pools The Determinants Of Licensing Rules.pdf}
}
@techreport{llanes2009anticommons,
title={Anticommons and Optimal Patent Policy in a Model of Sequential Innovation},
author={Llanes, G. and Trento, S.},
year={2009},
abstract={When innovation is sequential, the development of new products depends on the access to previous discoveries. As a consequence the patent system affects both the revenues and the cost of the innovator. We construct a model of sequential innovation in which an innovator uses n patented inputs in R&D to invent a new product. We ask three questions: (i) what is the net effect of patents on innovation as technologies become more complex (n increases)? (ii) are patent pools welfare enhancing? (iii) what is the optimal response of patent policy as technological complexity increases? We find that the answers to these questions depend on the degree of complementarity and substitutability between the inputs used in research.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Neutral},
thicket_stance_extract={When the inputs are complements, the profitability of the innovation is decreasing in the technological complexity. In the limit (when n -> infinity), when the degree of substitutability is below a threshold level, which is higher than 1, the innovation is never profitable. This paper therefore gives a formal treatment of the tragedy of the anticommons. On the other hand, when the inputs are substitutes, the profitability of the innovation is increasing in technological complexity. Even in this case, when n -> infinity, the cost of gathering all the inputs for the innovation is always too high from a social point of view and thus the probability of innovation is suboptimal.},
thicket_def={#A, References Heller/Eisenberg, Complementary Inputs, Diversely-Held, Hold-up},
thicket_def_extract={As the number of inputs needed in research increases, the innovator faces a patent thicket and is threatened by the possibility of hold-up, namely the risk that a useful innovation is not developed because of lack of agreement with the patent holders. This problem has been dubbed the tragedy of the anticommons (Heller 1998, Heller and Eisenberg 1998).},
tags={#Private Mechanisms, Pools, Licensing, Sequential Innovation},
filename={Llanes Trento (2009) - Anticommons And Optimal Patent Policy In A Model Of Sequential Innovation.pdf}
}
@article{lin2001research,
title={Research Versus Development: Patent Pooling, Innovation and Standardization in the Software Industry},
author={Lin, D.},
journal={J. Marshall Rev. Intell. Prop. L.},
volume={1},
pages={274--309},
year={2001},
abstract={Despite the impressive pace of modern invention, a certain “patent thicket” effect that may be impeding what has become an increasingly difficult road to the commercialization of new technologies. Specifically, as new technologies build upon old technologies, they necessarily become increasingly complex, and as a result, are often subject to the protection of multiple patents, covering both the new cumulative technologies as well as old foundational technologies. The difficulties of acquiring licenses (e.g. hold-out problems) for all such patents has the potential to stifle the development and commercialization of these new technologies. As such, patent pooling, once condemned as facilitating antitrust violations in past eras, has been reintroduced as a practice that, if properly structured, has potentially strong pro-competitive benefits. Patent pooling has the potential to reduce the level of research and invention in new technologies that can compete with an incumbent standard. Recent patent jurisprudence and lenient federal antitrust agency of recent patent pooling proposals seem to create an environment that encourages the resurgence of patent pooling.},
discipline={Law},
research_type={Theory},
industry={Software},
thicket_stance={Assumed Pro},
thicket_stance_extract={Despite the impressive pace of modern invention, commentators have observed a certain "patent thicket" effect that may be impeding what has become an increasingly difficult road to the commercialization of new technologies.1 Specifically, as new technologies build upon old technologies, they necessarily become increasingly complex, and as a result, are often subject to the protection of multiple patents, covering both the new cumulative technologies as well as old foundational technologies.2 The difficulties of acquiring licenses (e.g., hold-out problems) for all such patents has the potential to stifle the development and commercialization of these new technologies.},
thicket_def={#A-T, References Shapiro, Complementary Inputs, Diversely-Held},
thicket_def_extract={Despite the impressive pace of modern invention, commentators have observed a certain "patent thicket" effect that may be impeding what has become an increasingly difficult road to the commercialization of new technologies.1 Specifically, as new technologies build upon old technologies, they necessarily become increasingly complex, and as a result, are often subject to the protection of multiple patents, covering both the new cumulative technologies as well as old foundational technologies.2 The difficulties of acquiring licenses (e.g., hold-out problems) for all such patents has the potential to stifle the development and commercialization of these new technologies.},
tags={#Private Mechanisms, Standards, SSOs, Pools, Sequential Innovation},
filename={Lin (2001) - Research Versus Development.pdf}
}
@article{lin2011licensing,
title={Licensing Strategies in the Presence of Patent Thickets},
author={Lin, L.},
journal={Journal of Product Innovation Management},
volume={28},
number={5},
pages={698--725},
year={2011},
abstract={Many key industries (e.g., biomedical, pharmaceuticals, telecommunications, and information technologies) are characterized by cumulative innovations, where the introduction of a new product or service often requires many complementary technologies. When these technologies are protected by intellectual property rights owned by many firms, patent thickets exist, which researchers have argued may hinder the development of cumulative innovations. Specifically, patent thickets may lead to excessive royalty burdens for potential licensees, which is called ‘‘royalty stacking,’’ and if such costs are passed on to consumers, prices of products based on cumulative technologies will be driven up, dubbed as ‘‘double marginalization.’’ The literature, however, does not address these issues under different forms of licensing contracts. This article develops a game-theoretic model where a downstream firm seeks to license N patents that read on its product from upstream firms. It discusses a variety of licensing forms widely used in practice and attempts to discover whether royalty stacking and double marginalization occur under these forms of licenses. It also studies the impact of bargaining power between parties. It is found that when patent ownership becomes more fragmented, neither royalty stacking nor double marginalization occurs under profit-based royalty, fixed fee, and hybrid licenses. Such problems occur only under pure quantity-based or pure revenue-based royalty licenses when the downstream firm’s bargaining power is low. It is also shown that no matter how fragmented the ownership structure of patent is, hybrid licenses consisting of a fixed fee and a quantity- or revenue-based royalty rate lead to the same market outcomes as a fully integrated firm that owns all the patents and the downstream market. This article has interesting implications for both research and practice. First, the results show that even under the same patent ownership structure, different forms of licenses lead to quite different market outcomes. Therefore, it is suggested that firms and policy makers pay more attention to contractual forms of licenses when trying to minimize the negative impact of patent thickets. Second, the extant literature has largely assumed that quantity-based royalties are used, where double marginalization is the most severe. In practice, revenue-based royalties are most common, under which double marginalization is much milder. Third, the results show that patent pools can be most effective in mitigating royalty stacking and double marginalization when quantity-based or revenue-based royalties are the sole or primary payment form, especially when downstream firms have low bargaining power.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={When these technologies are protected by intellectual property rights owned by many firms, patent thickets exist, which researchers have argued may hinder the development of cumulative innovations. Specifically, patent thickets may lead to excessive royalty burdens for potential licensees, which is called ‘‘royalty stacking,’’ and if such costs are passed on to consumers, prices of products based on cumulative technologies will be driven up, dubbed as ‘‘double marginalization.’’},
thicket_def={#B1, #D, References Heller/Eisenberg, References Shapiro, Overlapping Patents, Diversely-Held, Cummulative Invention},
thicket_def_extract={Related, and often overlapping, patents owned by many entities are often described as ‘‘patent thickets’’ and researchers have argued that patent thickets can be detrimental to innovation, especially in information industries such as software (see, among others, Heller and Eisenberg, 1998; Lessig, 2001; Shapiro, 2001; Bessen and Maskin, 2009).},
tags={#Private Mechanisms, Pools, Royalties, Licensing, Cumulative Innovation},
filename={Lin (2011) - Licensing Strategies In The Presence Of Patent Thickets.pdf}
}
@article{liu2008internal,
title={Internal Sequential Innovations: How does Interrelatedness Affect Patent Renewal?},
author={Liu, K. and Arthurs, J. and Cullen, J. and Alexander, R.},
journal={Research Policy},
volume={37},
number={5},
pages={946--953},
year={2008},
abstract={The value of patented innovations has attracted substantial research attention, especially in the context of patent renewal. However, research often assumes that a firm’s patented innovations are independent from each other.We draw upon evolutionary economics and suggest that some of a firm’s patents share important genealogical relationships, which we refer to as internal sequential innovations.We propose internal sequential innovations are more valuable and therefore more likely to be renewed than stand-alone innovations. We examine our hypotheses from a dataset of US pharmaceutical and biotechnology patents. The results confirm our hypotheses at both the patent and the firm levels.},
discipline={Econ},
research_type={Empirical},
industry={Pharma, Biotech},
thicket_stance={Assumed Anti},
thicket_stance_extract={With the power of the intellectual regime, internal sequential innovations offer a larger thicket of protection that can define the underlying technologies in a set of overlapping patents},
thicket_def={#B1, References Shapiro, Overlapping Patents, Cummulative Invention},
thicket_def_extract={With the power of the intellectual regime, internal sequential innovations offer a larger thicket of protection that can define the underlying technologies in a set of overlapping patents. That is, a sequence of patents revolving around the same technological trajectory can define the intellectual property more precisely and protect it with an enlarged degree of coverage. The holder of such patented innovations can thereafter exclude competitors from the collective scope of the claims laid out in all of the sequential patents (Wagner and Parchomovsky, 2005). In contrast, stand-alone innovations are more likely to be invented around and the underlying intellectual property has a higher hazard of being appropriated (Shapiro, 2000).},
tags={#Firm Strategy, Value from Position/Portfolio, Defensive/Offensive Patenting, #Private Mechanisms, Regime Selection, Sequential Innovation, #IPR Reform, Renewals},
filename={Liu (2008) - Internal Sequential Innovations.pdf}
}
@article{macdonald2004means,
title={When Means Become Ends: Considering the Impact of Patent Strategy on Innovation},
author={Macdonald, S.},
journal={Information Economics and Policy},
volume={16},
number={1},
pages={135--158},
year={2004},
abstract={The patent is supposed to be a means to an end, that end being innovation. Whether the innovation comes from the protection the patent affords the inventor, or from the dissemination of the information of invention the patent allows, the patent is not meant to be an end in itself. This seems to be changing, the patent acquiring a strategic value increasingly independent of innovation. If this development has gone largely unnoticed, it may be because the patent system tends to be viewed from the entrenched perspectives of lawyers and economists, and of a number of interest groups that justify their reliance on the system in terms of the innovation it is supposed to encourage. These groups have never included small firms and developing countries in whose name they frequently defend the patent system. They may have some difficulty justifying a system whose strategic value is so divorced from its value for innovation.},
discipline={Mgmt},
research_type={Discussion},
industry={General},
thicket_stance={Weak Pro},
thicket_stance_extract={The pharmaceutical industry has been instrumental in creating a patent system for the pharmaceutical industry, appropriate to the orderly innovation of that industry. Acceptance of the innovation myth has meant that this logic is rarely challenged. Thus, for instance, development may relate to many patents, not just one (Heller and Eisenberg, 1998). The costs of navigating through mazes of overlapping patent rights – through patent thickets – are likely to be considerable (Shapiro, 2001), and are likely to be an obstacle to innovation.},
thicket_def={#A-T, #B-T, References Shapiro, Overlapping Patents},
thicket_def_extract={The costs of navigating through mazes of overlapping patent rights – through patent thickets – are likely to be considerable (Shapiro, 2001)...},
tags={#Firm Strategy, Value from Position/Portfolio, Defensive/Offensive Patenting, #IPR Reform},
filename={Macdonald (2004) - When Means Become Ends.pdf}
}
@article{mallo2008patent,
title={Patent-related Barriers to Market Entry for Generic Medicines in the European Union: A Review of Weaknesses in the Current European Patent System and Their Impact on Market Access of Generic Medicines},
author={Mallo, L. and Roox, K. and Pike, J. and Brown, A. and Becker, S. and Thaler, G.},
journal={Journal of Generic Medicines: The Business Journal for the Generic Medicines Sector},
volume={5},
number={4},
pages={255--280},
year={2008},
publisher={SAGE Publications},
abstract={Patents are effective tools for promoting innovation in the pharmaceutical sector. Originator companies should be able to recoup their R & D investments during the term of the basic patent / SPC on an active pharmaceutical substance. Generic competition should be available immediately after expiry of that term. The chances of market entry for generic medicines companies in all markets the day following expiry of the main basic patent in all European Union markets is, however, not possible or, at best, is extremely diffi cult. Due to a diminishing number of newly registered products and contracting product pipelines, originator companies may be tempted to unjustly prolong the patent monopoly of existing products. The result is known as the ‘ evergreening ’ of a basic patent with the help of follow-on patents to keep generic competitors off the market. These follow-on patents are often weak or trivial and, upon careful examination, it is clear that they should never have been granted. Patent quality is therefore of the utmost importance. The European patent system should only reward true inventions and should discourage patent applications for ordinary innovation. An important way of reducing the incidence of poor quality follow-on patents is to remedy certain structural defi ciencies and weaknesses in the current examination procedure. Priority must be given to ensuring that the European Patent Offi ce (EPO) has the resources it needs to continue to improve the quality of patent examiners, along with their training and remuneration, and to increase the number of more experienced senior examiners in order to give every patent application the deliberate, expert review it deserves. This would lead to a more stringent application of the patentability requirements and fewer trivial patents. Applicants should be more rigorously required to provide patent applications of the highest quality accompanied by all relevant information at the start of the examination process. Similarly, they should be under obligation to disclose all information known to them that is material to the patentability of their invention. Furthermore, better third-party participation would also help to avoid inappropriate follow-on patents from being granted. When such patents are granted, an immediate review should be possible to avoid the assertion of ultimately invalid patents to hinder generic competition. This would require an acceleration of the current opposition proceedings that today can take many years. The structure established under the European Patent Convention only provides for a common and single European patent application and granting system by the EPO. A European patent is not a unitary patent, but essentially a bundle of national patents. As a result, questions of patent infringement and validity are governed by various national laws and are handled by the national courts operating under different procedural rules. This purely national litigation system results in a complex arena of multiple patent litigation involving high costs, forum shopping and diverging, even contradictory, court decisions. The lack of a central judiciary composed of experienced patent judges is regarded as one of the major defects in the current patent system. An effective solution would be the creation of a central European patent court that would deal with questions of invalidity and infringement at a pan-European level. Until this has been achieved, specialised national patent courts should be created with technically skilled judges with powers to reach a decision within an acceptable timeframe. Furthermore, the standard for obtaining an interim injunction should be returned to its roots as an equitable remedy since injunctions today are often used simply as a litigious tactic. This change would require a litigant to establish the existence of irreparable harm that cannot be compensated by monetary damages before a court would take the far-reaching step of enjoining a product. Finally, measures should be taken to ensure that originator companies do not use other means to unjustly prolong their monopoly by, for example, introducing a system of patent linkage, obtaining improperly granted SPCs, deploying inaccurate marketing campaigns for promoting ‘ new ’ products with no substantial added therapeutic value as innovative products, etc.},
discipline={General Science},
research_type={Discussion},
industry={Pharma},
thicket_stance={Weak Pro},
thicket_stance_extract={Certain structural deficiencies and weaknesses in the current examination procedure, however, result in the grant of patents of variable quality, giving a patent owner / originator company facing expiry of a basic product patent the opportunity to create what is known as a ‘patent thicket’ (see below). The most obvious structural issues are discussed below.},
thicket_def={#C1, Single Firm, Evergreening, Dubious Patents, Unspecified Blocking Mechanism},
thicket_def_extract={Originators file numerous follow-on patent applications covering a drug in the hope that at least one of them will be granted and survive a litigation challenge. The consequence of this is often an extensive thicket or cloud of patents around a drug, the various parts of that cloud each typically... A good example of both an improperly granted follow-on patent and a patent thicket is found in relation to the product perindopril erbumine, discussed in Annex A... To prevent the creation of patent thickets and reduce the incidence of poor followon patents: (a) improve the quality of patents as outlined above and apply a rigorous assessment of patentability requirements; (b) prevent the fi ling of divisional patents that are essentially identical to the parent application; (c) require that patent claims with respect to the pharmacokinetic effect of administering a particular drug be directly linked to the formulation used to achieve that effect; (d) limit the scope of second and further medical use patents; and (e) grant patents only to genuine incremental innovation and not to simple changes in chemistry or formulation.},
tags={#Firm Strategy, Evergreening, #IPR Reform, Review of Patent Validity, Stricter Patenting Requirements},
filename={Mallo (2008) - Patent Related Barriers To Market Entry For Generic Medicines In The European Union.pdf}
}
@article{meniere2008patent,
title={Patent Law and Complementary Innovations},
author={M{\'e}ni{\`e}re, Y.},
journal={European Economic Review},
volume={52},
number={7},
pages={1125--1139},
year={2008},
abstract={The patent system was initially designed to provide incentives to develop stand-alone innovations in fi?elds such as mechanics, chemicals or pharmaceuticals. Its application is therefore problematical in more recent ?elds such as biotechnology and ICT industries, where innovation patterns are different. A well-known problem concerns cumulative innovations. Patent law must then trade off the rights granted to upstream patent owners with the incentives to develop subsequent innovations (Scotchmer, 1991; Donoghue, Scotchmer and Thisse, 1998; Denicolò, 2000). Another issue concerns complementary innovations, which are the focus of the paper. When ?final products embody several complementary innovations, the scattering of patents between various owners jeopardizes the commercial exploitation of the products because of negotiation and royalty stacking issues (Merges & Nelson, 1990; Heller & Eisenberg, 1998; Shapiro, 2001). In biotechnology, this is the case of therapeutic proteins or genetic diagnostic tests that require the use of multiple patented gene fragments (Heller & Eisenberg, 1998). It is also very frequent in ICT industries such as electronics, computer hardware and software, where ?firms have to navigate "patent thickets" (Shapiro, 2001). Shapiro (2001) reports, for example, that in the semi-conductor industry ?rms receive ?thousands of patents each year and manufacturers can potentially infringe on hundreds of patents with a single product". The situation is similar in the U.S. software industry, where there are ?potentially dozens or hundreds of patents covering individual components of a product?(FTC, 2003). I study the problem of the production of complementary innovations in a model of dynamic R&D competition between two ?firms, and argue that in some cases complementary innovations should not be patentable as such, but bundled with other innovations prior to patenting. To do so I consider two complementary innovations and examine whether they should be patented separately or as a bundle. This approach echoes several papers on cumulative innovations where patentability requirements are de?ned as the need to develop two or more successive innovations before obtaining a patent (Scotchmer and Green, 1990; Hunt, 1995; O?Donoghue, Scotchmer and Thisse, 1998; Denicolò, 2000). As regards complementary innovations, the optimal patenting rule depends on a trade-off between the pro?fit loss due to scattered complementary patents, and the possible bene?fit of patent disclosure. The scattering of complementary patents between different owners creates a double marginalization issue. Since each patentee behaves as a monopolist, the Cournot (1838) theorem predicts that prices do not maximize the ?rms?pro?ts (Shapiro, 2001; Lerner & Tirole, 2005)1 . The requirement that complementary innovations be bundled prior to patenting can be a way to prevent this pro?t loss. However, small innovations are not disclosed when innovations have to be bundled prior to patenting (Scotchmer and Green, 1990). As a result, ?firms lose the possibility to quit the race after a ?first innovation has been patented, which leads to R&D cost duplications. I show that patent disclosure has a positive social effect, although it does not permit a fully effi cient coordination between ?firms. In this context, bundling innovations prior to patenting can be more effi cient if innovations can be devel- oped quickly. As I argue in the Conclusion, this condition is consistent with the legal de?nition of the "inventive step" patentability requirement. The paper is structured in six sections. First, the model is introduced in Section 2. Section 3 then considers the case in which innovations can be patented separately, while Section 4 focuses on the case in which they must be bundled prior to patenting. Section 5 compares the social outcomes of the two require- ments. Finally, Section 6 concludes and discusses the policy implications of the model.},
discipline={Econ},
research_type={Theory},
industry={ICT, Biotech},
thicket_stance={Assumed Pro},
thicket_stance_extract={The present paper upholds policy arguments that emphasize the importance of a severe application of this patentability requirement as a means to limit the size of "patent thickets" and to promote innovation in sectors where complementary innovations are frequent (Jaffe, 2000; Barton, 2003; FTC, 2003)... When ?final products embody several complementary innovations, the scattering of patents between various owners jeopardizes the commercial exploitation of the products because of negotiation and royalty stacking issues (Merges & Nelson, 1990; Heller & Eisenberg, 1998; Shapiro, 2001)},
thicket_def={#A-T, References Shapiro, Complementary Inputs, Diversely-Held, Transaction Costs},
thicket_def_extract={It is also very frequent in ICT industries such as electronics, computer hardware and software, where firms have to navigate "patent thickets" (Shapiro, 2001)...The present paper upholds policy arguments that emphasize the importance of a severe application of this patentability requirement as a means to limit the size of "patent thickets" and to promote innovation in sectors where complementary innovations are frequent... When ?final products embody several complementary innovations, the scattering of patents between various owners jeopardizes the commercial exploitation of the products because of negotiation and royalty stacking issues... The scattering of complementary patents between different owners creates a double marginalization issue.},
tags={Complements, #IPR Reform, Stricter Patenting Requirements},
filename={Meniere (2008) - Patent Law And Complementary Innovations.pdf}
}
@article{maskus2006reforming,
title={Reforming US Patent Policy: Getting the Incentives Right},
author={Maskus, K.E.},
journal={Innovations: Technology, Governance, Globalization},
volume={1},
number={4},
pages={127--153},
year={2006},
publisher={MIT Press},
abstract={},
discipline={Econ},
research_type={Discussion},
industry={General},
thicket_stance={Weak Pro},
thicket_stance_extract={In addition to the costs of individual patents, researchers have to contend with “patent thickets.” That is, complex technologies, such as biomedical research tools,embody a number of technological inputs, many of which are patented. A different company, in turn, could own each patent. Negotiating these thickets raises the cost of securing rights. Weaker patent standards encourage patent proliferation and an enlargement of the thickets for research in areas such as biotechnology, agricultural chemicals, and pharmaceuticals...That suggests patent thickets and transactions costs may slow down the diffusion of scientific research.},
thicket_def={#A, Complementary Inputs, Diversely-Held},
thicket_def_extract={In addition to the costs of individual patents, researchers have to contend with “patent thickets.” That is, complex technologies, such as biomedical research tools,embody a number of technological inputs, many of which are patented.},
tags={#IPR Reform, Issues of Patent Validity, Compulsory Licensing},
filename={Maskus (2006) - Reforming Us Patent Policy Getting The Incentives Right.pdf}
}
@article{masur2010costly,
title={Costly Screens and Patent Examination},
author={Masur, J.S.},
journal={Journal of Legal Analysis},
volume={2},
number={2},
pages={687--734},
year={2010},
publisher={Oxford University Press},
abstract={The United States Patent and Trademark Office has acquired a well-deserved reputation for inefficacy and inefficiency. Proposals for reforming the patent office have thus focused on improving the quality of patent review while decreasing its cost. Yet this view overlooks the valuable function performed by the high costs associated with obtaining a patent: these costs serve as an effective screen against low-value patents. Moreover, due to asymmetries in patent values, the costly screen is likely to select against socially harmful patents in disproportionate numbers. Although the patent office is the most prominent forum in which this type of costly screening operates, it is not the only one. In a variety of other contexts, the private costs of navigating an administrative process may complement the process itself in screening out unwanted participants.},
discipline={Law},
research_type={Discussion},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={Third, there are patents of low private value and low (or negative) social value; this class of patents includes both discarded, unenforced patents that increase the search costs and risk imposed on commercial firms—the "patent thicket", in popular parlance (Shapiro 2001)—and worthless, largely unenforceable patents usable only for extracting nuisance settlements (see Section 2.2.).},
thicket_def={#C1, #D-S, References Shapiro, Dubious Patents},
thicket_def_extract={Third, there are patents of low private value and low (or negative) social value; this class of patents includes both discarded, unenforced patents that increase the search costs and risk imposed on commercial firms—the ‘‘patent thicket,’’ in popular parlance (Shapiro 2001)...},
tags={#IPR Reform, Review of Patnet Quality, Infrastructure Changes},
filename={Masur (2010) - Costly Screens And Patent Examination.pdf}
}
@article{merges2006introductory,
title={Introductory Note to Brief of Amicus Curiae in eBay v. MercExchange},
author={Merges, R.P.},
journal={Berkeley Tech. LJ},
volume={21},
pages={997--1016},
year={2006},
abstract={},
discipline={Law},
research_type={Discussion},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={As noted above, the existence of the patent thicket and the problem of low quality patents make it especially easy for trolls to acquire patents that arguably cover one of the hundreds or thousands of processes incorporated in a single high technology product. The troll waits until a company with deep pockets makes irreversible investments in the arguably infringing technology. The troll may even revise the terms of the patent (through a patent "reissuance" or "continuation") in light of the target's investment in order to strengthen the infringement claim. The troll then uses the threat of an injunction shutting down production to demand a significant share of the total profit associated with the product. This gamesmanship results in no social benefit and a great deal of harm.},
thicket_def={#A, #C1, References Shapiro, Complementary Inputs, Diversely-Held, Dubious Patents},
thicket_def_extract={As the Federal Trade Commission recently explained, innovation in the computer and Internet industry is often incremental and cumulative, and the pace of change is rapid.4 The net result is that each marketable product in this industry may incorporate--often in an incidental, tangential, and sometimes unintentional way-hundreds or even thousands of patented processes. This is commonly described as a "patent thicket": "a dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology." Carl Shapiro, Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting, in INNOVATION POLICY AND THE ECONOMY 119, 120-21 (Adam Jaffee et al. eds., 2001); see also To Promote Innovation 2:27-31, 3:2, 34-35, 52-53},
tags={#Private Mechanisms, NPEs},
filename={Merges (2006) - Introductory Note To Brief Of Amicus Curiae In Ebay V MercExchange.pdf}
}
@article{mertes2010managing,
title={Managing the Patent Thicket and Maximizing Patent Lifetime in Vaccine Technology},
author={Mertes, M.M.M. and St{\"o}tter, G.},
journal={Human Vaccines},
volume={6},
number={10},
pages={860--863},
year={2010},
publisher={Landes Bioscience},
abstract={Patents are exclusive rights for a limited period of time that are granetd to provide an incentive for innovation and in exchange for the public disclosure of an invention. Patenting in the medical field, especially in the field of human vaccine technologies, is full of pitfalls, because the products that finally access the market are often covered by a multitude of exclusive IP rights. This commentary gives an overview on obstacles in vaccine patenting and how to overcome them, and intends to provide a patenting guideline for researchers.},
discipline={General Science},
research_type={Discussion},
industry={Biotech},
thicket_stance={Weak Pro},
thicket_stance_extract={Managing the patent thicket in the fields of vaccine technology is challenging as one product may be covered by a plurality of exclusive IP rights that have to be considered when developing a product and building up a patent portfolio. Consequently, licensing is a key point in the vaccine industry.If a basic patent is held by a powerful patent holder refusing to grant a license under reasonable commercial terms or abuses a market-dominating position, it should be examined, whether the requirements to request a compulsory license are fulfilled.},
thicket_def={#A, Complementary Inputs, Diversely-Held},
thicket_def_extract={Managing the patent thicket in the fields of vaccine technology is challenging as one product may be covered by a plurality of exclusive IP rights that have to be considered when developing a product and building up a patent portfolio.. Consequently, licensing is a key point in the vaccine industry. If a basic patent is held by a powerful patent holder refusing to grant a license under reasonable commercial terms or abuses a market-dominating position, it should be examined, whether the requirements to request a compulsory license are fulfilled.},
tags={#Private Mechanisms, Licensing, #Firm Strategy, Value from Position/Portfolio},
filename={Mertes Stotter (2010) - Managing The Patent Thicket And Maximizing Patent Lifetime In Vaccine Technology.pdf}
}
@article{meurer2002business,
title={Business Method Patents and Patent Floods},
author={Meurer, M.J.},
journal={Wash. UJL \& Pol'y},
volume={8},
pages={309--342},
year={2002},
abstract={},
discipline={Law},
research_type={Discussion},
industry={General},
thicket_stance={Weak Pro},
thicket_stance_extract={Furthermore, a thicket of patents may stultify development of technology because of the cost of securing patent licenses from the large numbers of patent owners.},
thicket_def={#A, References Shapiro, Complementary Inputs, Diversely-Held, Transaction Costs},
thicket_def_extract={Of particular concern, reduced patent quality increases uncertainty about the scope and validity of patents and increases the frequency of patent litigation. The fragility of the many start-ups in new markets makes them vulnerable to strategic patent litigation. The threat of patent litigation may deter entry or induce exit from the market. Furthermore, a thicket of patents may stultify development of technology because of the cost of securing patent licenses from the large numbers of patent owners... The other anticompetitive threat is a pool or cross-licensing agreement justified as a way to cut through a patent thicket and economize on transaction costs might actually serve merely to orchestrate collusion on prices... },
tags={#Private Mechanisms, Pools, #Firm Strategy, Patent Floods, Defensive/Offensive Patenting},
filename={Meurer (2002) - Business Method Patents And Patent Floods.pdf}
}
@book{muris2001competition,
title={Competition and Intellectual Property Policy: The Way Ahead},
author={Muris, T.J.},
year={2001},
publisher={US FTC},
abstract={},
discipline={Policy Report},
research_type={Discussion},
industry={General},
thicket_stance={Weak Anti},
thicket_stance_extract={Moreover, even if there were a "patent thicket" problem, others state that firms have found a range of means to overcome these obstacles, including cross-licenses and patent pooling.},
thicket_def={#A-S, Quotes Shapiro, References Shapiro},
thicket_def_extract={According to Professor Carl Shapiro, a "patent thicket" has formed, which he describes as "a dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology." Firms in certain industries are said to fear that it is "all too easy" to infringe another patent accidentally and thereby risk liability. A On the other hand, some observers believe that innovation currently is not hindered.'"' Moreover, even if there were a "patent thicket" problem, others state that firms have found a range of means to overcome these obstacles, including cross-licenses and patent pooling.-},
tags={#IPR Reform, Balance with Anti-trust, Balance with Anti-trust, Duration Limits, #Private Mechanisms, SSOs},
filename={Muris (2001) - Competition And Intellectual Property Policy The Way Ahead.pdf}
}
@article{napoleon2009impact,
title={Impact of Global Patent and Regulatory Reform on Patent Strategies for Biotechnology},
author={Napoleon, V.J.},
journal={Pitt. J. Tech. L. \& Pol'y},
volume={9},
pages={1--31},
year={2009},
abstract={},
discipline={Law},
research_type={Discussion},
industry={Biotech},
thicket_stance={Weak Pro},
thicket_stance_extract={Pharmaceutical companies typically grow a patent thicket seeking a wide range of chemical variants and analogs, methods of synthesizing the drug, chemical intermediates in this synthesis, different crystal forms, different finished dosage forms and various methods of use. 62 Obtaining permission from various patent holders for use of patents can prove to be difficult particularly if the patent holder’s objective in creating the thicket is to block innovation by outsiders. Because useful innovation in biotechnology requires multiple inventive steps and technologies, we could conceivably witness cumulative innovation with infringement on many patents which ultimately serves as a drag on innovation and commercialization.},
thicket_def={#A, #B1, #D, Quotes Shapiro, References Shapiro, Complementary Inputs, Diversely-Held, Single Firm, Unspecified Blocking Mechanism},
thicket_def_extract={This pattern, however, has created what some would characterize as a “Patent Thicket”59 in biotechnology. That is, emerging from the overabundance of patent filings and associated activity is “a dense web of overlapping intellectual property rights”60 that requires those seeking to commercialize new technology to obtain licenses from multiple patentees.61 Pharmaceutical companies typically grow a patent thicket seeking a wide range of chemical variants and analogs, methods of synthesizing the drug, chemical intermediates in this synthesis, different crystal forms, different finished dosage forms and various methods of use.62 Obtaining permission from various patent holders for use of patents can prove to be difficult particularly if the patent holder’s objective in creating the thicket is to block innovation by outsiders. Because useful innovation in biotechnology requires multiple inventive steps and technologies, we could conceivably witness cumulative innovation with infringement on many patents which ultimately serves as a drag on innovation and commercialization.},
tags={#IPR Reform, International Harmonization, Renewal },
filename={Napoleon (2009) - Impact Of Global Patent And Regulatory Reform On Patent Strategies For Biotechnology.pdf}
}
@article{nielsen2006compulsory,
title={Compulsory Patent Licensing: Is It a Viable Solution in the United States},
author={Nielsen, C.M. and Samardzija, M.R.},
journal={Mich. Telecomm. \& Tech. L. Rev.},
volume={13},
pages={509},
year={2006},
abstract={As technology continues to advance at a rapid pace, so do the number of patents that cover every aspect of making, using, and selling these innovations. In 1996, to compound the rapid change of technology, the U.S. Supreme Court affirmed that business methods are also patentable. Hence in the current environment, scores of patents, assigned to many different parties, may cover a single electronic device or software—making it increasingly impossible to manufacture an electronic device without receiving a cease and desist letter or other notice from a patentee demanding a large royalty or threatening an injunction. Companies, particularly those in the high technology sector, have been asserting for some time now that they are under constant threat of lawsuits that threaten to shut them down. As a result, numerous radical changes to the U.S. Patent Act and patent practice before the U.S. Patent & Trademark Office have been proposed. Certain proposed changes, however, are meeting with resistance because of a reliance on long term patent protection and exclusivity of patent rights by different industries. Notwithstanding, certain foreign governments have already enacted provisions making it possible to obtain a compulsory patent license in the event that a patentee is not practicing his invention or is simply refusing to license the rights to his invention for a reasonable royalty fee.},
discipline={Law},
research_type={Discussion},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={Many of the patents overlap and block the use of other patents, thereby creating a “patent thicket”—a “dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology.”3 It is hypothesized that patent thickets increase transactional costs and stifle innovation by making it more expensive and difficult to bring new developments to the market.},
thicket_def={#A-T, Quotes Shapiro, References Shapiro, Complementary Inputs, Diversely-Held, Transaction Costs},
thicket_def_extract={In some industries, particularly the semiconductor industry, access to hundreds of patents may be necessary in order to produce a single commercial product. Many of the patents overlap and block the use of other patents, thereby creating a “patent thicket”—a “dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology.”3 It is hypothesized that patent thickets increase transactional costs and stifle innovation by making it more expensive and difficult to bring new developments to the market... the ability to bring a product to market in the presence of a patent thicket and the stacking royalties must separately be addressed... Closely related is the concept of patent thickets. A single product may include many different, individually patented components.... The patent thicket is best understood in the semiconductor industry where any given microchip may infringe a number of patents, including the process manufacturing patents used to produce the chip. Here, patents are complementary because different inventors independently have patented different components of the larger invention. This is unlike blocking patents (otherwise referred to as improvement patents) resulting from the incremental process of innovation.},
tags={#Private Mechanisms, #IPR Reform, Compulsory Licensing, Pools, Clearinghouses, Licensing},
filename={Nielsen Samardzija (2006) - Compulsory Patent Licensing.pdf}
}
@article{palangkaraya2011misclassification,
Title = {Misclassification Between Patent Offices: Evidence From A Matched Sample Of Patent Applications},
author = {Palangkaraya, Alfons and Webster, Elizabeth and Jensen, Paul H.},
journal = {The Review of Economics and Statistics},
volume = {93},
number = {3},
pages = {pp. 1063-1075},
abstract = {In this paper, we estimate the extent of misclassification in patent examination decisions between the European Patent Office (EPO) and the Japanese Patent Office (JPO), that is, applications that are incorrectly refused a patent or incorrectly granted a patent. Using a proxy for inventive step as the predictor of the correct decision, we find that the probability that a "true grant" application is refused is 6.1%, while the probability that a "true refusal" application is granted is 9.8%. However, we find no evidence of an increasing trend of granting "bad" patents at the EPO and JPO.},
year = {2011},
publisher = {The MIT Press},
copyright = {Copyright © 2011 The MIT Press},
discipline={Econ},
research_type={Empirical},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={Second, our notion of a correct decision rests on the legal meaning of validity (that is, novelty, nonobviousness, and usefulness). From an economic perspective, however, whether an invention should be patentable depends on the relative net change to the incentive to invent and innovate and the size of the deadweight monopoly losses. The latter includes strategic ways to construct undesirable patent thickets, build patent portfolios to extract additional bar- gaining power in cross-licensing arrangements, or other rent-seeking activities.},
thicket_def={#C1, Unspecified Blocking Mechanism, Strategic Patenting (Bad)},
thicket_def_extract={Second, our notion of a correct decision rests on the legal meaning of validity (that is, novelty, nonobviousness, and usefulness). From an economic perspective, however, whether an invention should be patentable depends on the relative net change to the incentive to invent and innovate and the size of the deadweight monopoly losses. The latter includes strategic ways to construct undesirable patent thickets, build patent portfolios to extract additional bargaining power in cross-licensing arrangements, or other rent-seeking activities.},
tags={#IPR Reform},
filename={Palangkaraya Webster Jensen (2011) - Misclassification Between Patent Offices.pdf}
}
@article{paredes2006written,
title={Written Description Requirement in Nanotechnology: Clearing a Patent Thicket},
author={Paredes, J.P.},
journal={J. Pat. \& Trademark Off. Soc'y},
volume={88},
pages={489},
year={2006},
abstract={Nanotechnology is an emerging technology, and as an emerging technology, there are certain intellectual property issues surrounding the appropriate protection for nanotechnology. Broadly speaking, nanotechnology is the manufacture of structures and manipulation of matter within dimensions below 100 nanometers, where unique phenomena enable novel applications. At the nanoscale, the physical, chemical, and biological properties of materials differ in fundamental and valuable ways from the properties of individual atoms and molecules or bulk matter.' Researchers and companies are attempting at applying these novel properties to a wide-range of applications and industries.' One important intellectual property issue in addressing nanotechnology is the patenting of innovative techniques and compositions of matter which are necessary for downstream innovation. The notion of a patent thicket is where an overlapping set of patent rights requires that those seeking to commercialize new technology obtain licenses from multiple patentees. If you get monopoly rights down at the bottom, "you may stifle competition that uses those patents later on and so the breadth and utilization of patent rights can be used not only to stifle competition, but also have adverse effects in the long run on innovation." The patent thicket problem in nanotechnology has been suggested by a recent report by LuxResearch (hereinafter "LuxReport"), indicating that many patents have been filed relating to nanomaterials with their claims overlapping.While many companies will want to use these nanomaterials, the LuxReport states these companies will be forced to license patents from many different sources. Potentially, there will be significant transactional costs for further nanotechnology developments due to these overlapping claims. Moreover, the quality of these nanotechnology patents has been repeatedly called into question," so the navigation of a patent thicket will have to be around these questionable patents. The legal principles in the written description requirement could clear some of this patent thicket by narrowing overlapping claims in nanotechnology during examination, litigation, and especially in postgrant procedures. This paper generally discusses 1) the background of the nanomaterials in the LuxReport and the patent thicket; 2) the legal principles within the written description requirement; 3) why the written description requirement should be used; 4) the application of the legal principles within the written description requirement to nanomaterials discussed in the LuxReport; and 5) proposals for the written description requirement for the USPTO, the Federal Circuit, and postgrant procedures.},
discipline={Law},
research_type={Discussion},
industry={Nanotech},
thicket_stance={Assumed Pro},
thicket_stance_extract={While many companies will want to use these nanomaterials, the LuxReport states these companies will be forced to license patents from many different sources. Potentially, there will be significant transactional costs for further nanotechnology developments due to these overlapping claims. Moreover, the quality of these nanotechnology patents has been repeatedly called into question," so the navigation of a patent thicket will have to be around these questionable patents.},
thicket_def={#B1, References Shapiro, Overlapping Patents, Broad Patents, Dubious Patents, Unspecified Blocking Mechanism (Not DHCI), Diversely-Held, Cummulative Invention},
thicket_def_extract={The notion of a patent thicket is where an overlapping set of patent rights requires that those seeking to commercialize new technology obtain licenses from multiple patentees... If you get monopoly rights down at the bottom, "you may stifle competition that uses those patents later on and so the breadth and utilization of patent rights can be used not only to stifle competition, but also have adverse effects in the long run on innovation."... indicating that many patents have been filed relating to nanomaterials with their claims overlapping... Moreover, the quality of these nanotechnology patents has been repeatedly called into question," so the navigation of a patent thicket will have to be around these questionable patents.},
tags={#IPR Reform},
filename={Paredes (2006) - Written Description Requirement In Nanotechnology.pdf}
}
@article{rai2003engaging,
title = {Engaging Facts and Policy: A Multi-Institutional Approach to Patent System Reform},
author = {Rai, Arti K.},
journal = {Columbia Law Review},
volume = {103},
number = {5},
pages = {pp. 1035-1135},
abstract = {The Court of Appeals for the Federal Circuit, charged with adjudicating appeals in patent cases, has adopted an unusual approach that arrogates power over fact finding while it simultaneously invokes rule-formalism. Although the Federal Circuit's approach may be justified by the fact-finding and policy application deficiencies of the trial courts and the Patent and Trademark Office (PTO), it has had a negative impact on innovation policy and has resulted in a patent system that is sorely in need of reform. This Article argues that because of the interdependence of the various institutions within the patent system, reform of the system must be both multi-institutional and closely attentive to the institutional competence of the system's actors. Although Congress should clearly bolster the PTO's fact-finding abilities, giving plenary responsibility over factual questions to the PTO would not be cost effective. Accordingly, Congress should endow the system with improved fact-finding expertise through the institution of specialized trial courts. As for actual policy formulation, each of the available institutional options--the legislature, the PTO, and the courts--has substantial associated liabilities. On balance, however, the Federal Circuit is probably best positioned to formulate patent policy, so long as the fact-finding expertise of inferior institutions is bolstered and additional appellate mechanisms are instituted. By paying attention to institutional design and revising our institutions accordingly, we can achieve the patent system we should have had all along.},
year = {2003},
publisher = {Columbia Law Review Association, Inc.},
copyright = {Copyright © 2003 Columbia Law Review Association, Inc.},
discipline={Law},
research_type={Discussion, Theory},
industry={General},
thicket_stance={Neutral},
thicket_stance_extract={Defensive patenting has become particularly prominent in certain industries like the semiconductor industry, where innovation is cumulative, and a thicket of relevant patents often exists. See Bronwyn H. Hall & Rosemarie Ham Ziedonis, The Patent Paradox Revisited: An Empirical Study of Patenting in the U.S. Semiconductor Industry, 1979-1995, 32 RAND J. Econ. 101, 104 (2001). In such industries, firms gain freedom to operate through defensive patenting. Indeed, within the semiconductor industry, it appears that much of the increase in patenting per R&D dollar over the last two decades has been the consequence of defensive patenting. See id. (noting that firms "appear to be engaged in 'patent portfolio races' aimed at reducing concerns about being held up by external patent owners and at negotiating access to external technologies on more favorable terms"). According to Hall and Ziedonis, this increase in defensive patenting "is causally related to the pro-patent shift in the U.S. legal environment in the 1980s." Id. I discuss this alleged "pro-patent" shift infra Part III.B.},
thicket_def={#A, #C1, References Heller/Eisenberg, Transaction Costs, Dubious Patents, Unspecified Blocking Mechanism},
thicket_def_extract={Defensive patenting has become particularly prominent in certain industries like the semiconductor industry, where innovation is cumulative, and a thicket of relevant patents often exists.... Moreover, the guidelines on utility incorporate, at least implicitly, economic concerns that setting the utility standard too low could impede scientific progress by creating a transaction-cost-heavy thicket of patents on basic research},
tags={#IPR Reform, Review of Patent Validity},
filename={Rai (2003) - Engaging Facts And Policy.pdf}
}
@inproceedings{rubinfeld2004strategic,
title={The Strategic Use of Patents: Implications for Antitrust},
author={Rubinfeld, D.L. and Maness, R.},
booktitle={Antitrust, Patent and Copyright Conference},
year={2004},
abstract={},
discipline={Law},
research_type={Discussion},
industry={General},
thicket_stance={Neutral},
thicket_stance_extract={The competitive offensive advantage associated with a patent thicket can be high. It follows, of course, that there is also a substantial defensive advantage as well. The result may be a “race” to grow one’s IP portfolio. Unfortunately, however, it is not clear whether that race will be “to the top” (i.e., in the social interest), or “to the bottom” (i.e., harmful from a social point of view).},
thicket_def={#C1, #C2, References Shapiro, Quotes Shapiro, Dubious Patents, Single Firm, Unspecified Blocking Mechanism (Not DHCI), Strategic Patenting (Bad)},
thicket_def_extract={In this case, a firm with a large patent portfolio surrounding competitors’ key technologies (i.e., a “patent thicket”) has the opportunity to use its patent portfolio to lessen competition in the final goods market.17 Suppose, for example, that within a patent thicket are a number of patents of dubious merit (perhaps some were obtained through inequitable conduct) and it is costly to innovate around assertions of infringement.... Shapiro (2001) characterizes a patent thicket as a “dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology.”... Previous research recognizes a few ways in which a patent thicket can be used to strategic advantage. First, a company can patent new technology before potential competitors, including features and technologies that it never intends to commercialize (socalled “submarine patents).21 The patent thicket creates considerable uncertainty for competitors about whether their technology infringes, especially with respect to a hidden or submarine patent. Even if a firm is not practicing submarine patents, a patent thicket makes it hard to design and sell products without running the risk of infringing on a competitor’s patent.... A patent thicket is an especially effective means of extracting concessions from rivals.},
tags={#Firm Strategy, Value from Position/Portfolio, Defensive/Offensive Patenting, Package Licenses},
filename={Rubinfeld Maness (2004) - The Strategic Use Of Patents Implications For Antitrust.pdf}
}
@article{rey2012abuse,
title={Abuse of Dominance and Licensing of Intellectual Property},
author={Rey, P. and Salant, D.},
journal={International Journal of Industrial Organization},
year={2012},
abstract={This paper examines the impact of the licensing policies of one or more upstream owners of essential intellectual property (IP hereafter) on the downstream firms that require access to that IP, as well as on consumers and social welfare. The paper considers a model in which there is product differentiation downstream. License fees and fixed entry costs determine the number of downstream competitors and thus variety. We first consider the case where there is a single upstream owner of essential IP. Increasing the number of licenses enhances product variety, which creates added value, but it also intensifies downstream competition, which dissipates profits. We derive conditions under which the upstream IP monopoly will then want to provide an excessive or insufficient number of licenses, relative to the number that maximizes consumer surplus or social welfare.When there are multiple owners of essential IP, royalty stacking can reduce the number of the downstream licensees, but also the downstream equilibrium prices the consumers face.The paper derives conditions determining whether this reduction in downstream price and variety is beneficial to consumers or society. Finally, the paper explores the impact of alternative licensing policies. With fixed license fees or royalties expressed as a percentage of the price, an upstream IP owner cannot control the intensity of downstream competition. In contrast, volumebased license fees (i.e., per-unit access fees), do permit an upstream owner to control downstream competition and to replicate the outcome of complete integration. The paper also shows that vertical integration can have little impact on downstream competition and licensing terms when IP owners charge fixed or volume-based access fees.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={Patent thickets have long been a concern due to the potential for delaying deployment of products and adversely affecting consumers.},
thicket_def={#A, Complementary Inputs, Diversely-Held, Deliberate Royalty Stacking},
thicket_def_extract={Patent thickets, layers of licenses a firm needs to be able to offer products that embody technologies owned by multiple firms, and licensing policies have drawn increasing scrutiny from policy makers. Patent thickets involve complementary products, which gives rise to double marginalization - the so-called royalty stacking problem - and has the potential to retard diffusion of new technologies and reduce consumer welfare.},
tags={#Private Mechanisms, Licensing, Royalties},
filename={Rey Salant (2012) - Abuse Of Dominance And Licensing Of Intellectual Property.pdf}
}
@book{schacht2006patent,
title={Patent Reform: Issues in the Biomedical and Software Industries},
author={Schacht, W.H.},
year={2006},
publisher={Congressional Research Service (7 April 2006), available at: http://sharp.sefora.org/wp-content/uploads/2007/12/rl33367.pdf},
abstract={},
discipline={Policy Report},
research_type={Discussion},
industry={Biotech, Software},
thicket_stance={Neutral},
thicket_stance_extract={Concerns have been expressed in the academic community that the propensity to patent and the extensive use of cross licensing has resulted in a “patent thicket” where ownership of patent title is used to block others from innovating... Others agree that innovation in the software industry is not hindered by a patent thicket. In one study where actual software companies and investors were surveyed, the analyst found new companies were not concerned with existing patent portfolios as a barrier to their work...},
thicket_def={#A, #B, #D, References Heller/Eisenberg, Unspecified Blocking Mechanism, Single Firm},
thicket_def_extract={Concerns have been expressed in the academic community that the propensity to patent and the extensive use of cross licensing has resulted in a “patent thicket” where ownership of patent title is used to block others from innovating... Others agree that innovation in the software industry is not hindered by a patent thicket. In one study where actual software companies and investors were surveyed, the analyst found new companies were not concerned with existing patent portfolios as a barrier to their work},
tags={Patent Reform, existence of thickets},
filename={Schacht (2006) - Patent Reform Issues In The Biomedical And Software Industries.pdf}
}
@article{shapiro2003antitrust,
title={Antitrust Limits to Patent Settlements},
author={Shapiro, C.},
journal={RAND Journal of Economics},
pages={391--411},
year={2003},
abstract={Patents, patent litigation, and patent settlements increasingly influence competition. Settlements of patent disputes come in many forms,including licensing and cross-licensing agreements, patent pools, mergers, and joint ventures. While frequently procompetitive, such settlements can stifle competition and harm consumers. I propose a specific antitrust rule limiting such settlements: a settlement must leave consumers at least as well off as they would have been from ongoing patent litigation. After establishing that profitable settlements satisfying this constraint generally exist, I show how this antitrust rule can be used to evaluate three types of settlements: mergers, patent pools, and negotiated entry dates.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={As described in Shapiro (2001), more and more companies are facing a patent thicket requiring them to obtain multiple licenses to bring their products safely to market.},
thicket_def={#A, #C1, #C2, References Shapiro, Diversely-Held, Unspecified Blocking Mechanism},
thicket_def_extract={Making matters even more complex, many products can potentially infringe multiple patents. As described in Shapiro (2001), more and more companies are facing a patent thicket requiring them to obtain multiple licenses to bring their products safely to market. The need to negotiate licenses or other settlements of intellectual property disputes is made even greater because of the danger of hidden or submarine patents, which make it all too easy for a company unintentionally to infringe on a patent that was not yet issued when the company's product was designed.2 Likewise, the need to resolve intellectual property disputes is arguably made yet greatert o the extent thatt he U.S. Patenta nd TrademarkO ffice has issued "bad"p atents, i.e., patentso n technology that does not in fact meet the novelty requirements.},
tags={#Firm Strategy, Mergers, #Private Mechanisms, Pools, Settlements, Negotiated Entry Dates},
filename={Shapiro (2003) - Antitrust Limits To Patent Settlements.pdf}
}
@article{sabety2004nanotechnology,
title={Nanotechnology innovation and the patent thicket: Which IP policies promote growth},
author={Sabety, T.},
journal={Alb. LJ Sci. \& Tech.},
volume={15},
pages={477},
year={2004},
abstract={},
discipline={Law},
research_type={Discussion},
industry={Nanotech},
thicket_stance={Neutral},
thicket_stance_extract={On the one hand, the fear of the patent thicket has been raised: "[i]f you get monopoly rights down at the bottom, you may stifle competition that uses those patents later on and so . . . the breadth and utilization of patent rights can be used not only to stifle competition, but also have adverse effects in the long run on innovation."9On the other hand, encouraging private investment in commercialization has also been raised: "[b]y enabling corporations to negotiate exclusive licenses of promising technologies [that were publicly funded],... [this] encourage[s] them to invest in the additional research, development, and manufacturing capabilities needed to bring new products to market." The information technology industry did not suffer severe patent deadlock in its early years while the radio industry did},
thicket_def={#A, #B1, Quotes Shapiro, References Shapiro, Unspecified Blocking Mechanism},
thicket_def_extract={Yet, several commentators have raised concerns that the extraordinary pace of patenting of nanotechnology5 will result in a patent deadlock6 that will stifle innovation and impede economic growth.7... Carl Shapiro defines "patent thicket" as "an overlapping set of patent rights requiring that those seeking to commercialize new technology obtain licenses from multiple patentees."},
tags={#Private Mechanisms, Licensing, #IPR Reform, Government Funding},
filename={Sabety (2004) - Nanotechnology Innovation And The Patent Thicket.pdf}
}
@article{santore2010patent,
title = {Patent Pools as a Solution to Efficient Licensing of Complementary Patents? Some Experimental Evidence},
author = {Rudy Santore and Michael McKee, and David Bjornstad},
journal = {Journal of Law and Economics},
volume = {53},
number = {1},
pages = {pp. 167-183},
year = {2010},
publisher = {The University of Chicago Press for The Booth School of Business of the University of Chicago and The University of Chicago Law School},
abstract = {Abstract Production requiring licensing groups of complementary patents implements a coordination game among patent holders, who can price patents by choosing among combinations of fixed and royalty fees. Summed across patents, these fees become the total producer cost of the package of patents. Royalties, because they function as excise taxes, add to marginal costs, resulting in higher prices and reduced quantities of the downstream product and lower payoffs to the patent holders. Using fixed fees eliminates this inefficiency but yields a more complex coordination game in which there are multiple equilibria, which are very fragile in that small mistakes can lead the downstream firm to not license the technology, resulting in inefficient outcomes. We report on a laboratory market investigation of the efficiency effects of coordinated pricing of patents in a patent pool. We find that pool-like pricing agreements can yield fewer coordination failures in the pricing of complementary patents.},
discipline={Econ},
research_type={Theory, Empirical},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={More recently, a National Academy of Sciences (2006) committee studied the issue, concluding that even though evidence of blocking or market failures has yet to emerge, the anticommons or patent thickets may well emerge as profit opportunities in biomedical markets grow.},
thicket_def={#A, References Shapiro, Complementary Inputs, Diversely-Held},
thicket_def_extract={Royalty fees are an inherently inefficient mechanism for pricing patents. In effect, such fees constitute an excise tax on downstream production, shifting the marginal cost of the good upward and resulting in higher prices and lower quantities for the consumers of the final product. The problem is compounded when a set of patents is required to produce the good.3 Each patent holder sets a use fee (a royalty), and since each of these acts as an excise tax on the downstream producer, the cumulative effect of several fees being charged (what Lemley and Shapiro [2007] refer to as “patent stacking”) is a higher cost of producing the good and a smaller quantity of output. The welfare losses consist of the sum of the patent holder’s lost returns, the lost profits of the downstream firm, and the consumers’ loss of surplus from the final product.... Buchanan and Yoon (2000) study the incentives inherent in pricing complementary patents and demonstrate conditions under which the price of a complementary patent bundle increases with each additional patent in the bundle. Shapiro (2001) broadens the concept as a “patent thicket” in which possible outcomes include excessively high fees for the use of the patent set, uncertainty regarding potential patent infringement, and, in the limit, holdup problems.},
tags={#Private Mechanisms, Pools, Complements, Licensing},
filename={Santore McKee Bjornstad (2010) - Patent Pools As A Solution To Efficient Licensing Of Complementary Patents.pdf}
}
@article{schmidt2008complementary,
title={Complementary Patents and Market Structure},
author={Schmidt, K.},
year={2008},
publisher={CEPR Discussion Paper No. DP7005},
abstract={Many high technology goods are based on standards that require access to several patents that are owned by different IP holders. We investigate the royalties chosen by IP holders under different market structures. Vertical integration of an IP holder and a downstream producer solves the double mark-up problem between these firms. Nevertheless, it may raise royalty rates and reduce output as compared to non-integration. Horizontal integration of IP holders (or a patent pool) solves the complements problem but not the double mark-up problem. Vertical integration discourages entry and reduces innovation incentives, while horizontal integration always encourages entry and innovation.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={This “patent thicket” (Shapiro, 2001) gives rise to a complements problem: each patent holder does not internalize the negative external effect on the revenues of the other patent holders when setting his royalties, so the sum of all royalties will be inefficiently high.},
thicket_def={#A, References Shapiro, Complementary Inputs, Diversely-Held},
thicket_def_extract={This “patent thicket” (Shapiro, 2001) gives rise to a complements problem: each patent holder does not internalize the negative external effect on the revenues of the other patent holders when setting his royalties, so the sum of all royalties will be inefficiently high.},
tags={#Private Mechanisms, Pools, Licensing, Standards},
filename={Schmidt (2008) - Complementary Patents And Market Structure.pdf}
}
@article{schneider2008fences,
title={Fences and Competition in Patent Races},
author={Schneider, C.},
journal={International Journal of Industrial Organization},
volume={26},
number={6},
pages={1348--1364},
year={2008},
abstract={This paper studies the behaviour of ?firms facing the decision to create a patent fence, de?fined as a portfolio of substitute patents. We set up a patent race model, where ?firms can decide either to patent their inventions, or to rely on secrecy. It is shown that fi?rms build patent fences, when the duopoly profi?ts net of R&D costs are positive. We also demonstrate that in this context, a fi?rm will rely on secrecy when the speed of discovery of the subsequent invention is high compared to the competitor?s. Furthermore, we compare the model under the First-to-Invent and First-to-File legal rules. Finally, we analyze the welfare implications of patent fences.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Assumed Pro},
thicket_stance_extract={While the issue of "thickets" of complementary technologies in cumulative innovations has been extensively analyzed2, as well as the institutional solutions to overcome this problem (Lerner and Tirole, 2005 and Shapiro, 2001), little attention has been paid to fencing patents so far.},
thicket_def={#A, #B2, #D, Complementary Inputs, Single Firm},
thicket_def_extract={More precisely, firms will patent a coherent group of inventions, which form what is sometimes called a patent "bulk", aimed at protecting one product. The "bulk" can either be a "fence" of substitute patents or a "thicket" of complementary patents (see Reitzig, 2004 and Cohen et al., 2000).... In complex product industries, where innovation is highly cumulative, ?rms use patents to force rivals into negotiations and, as a consequence, they create "thickets" of complementary technologies.},
tags={#Firm Strategy, #Private Mechanisms, Regime Selection, Secrecy},
filename={Schneider (2008) - Fences And Competition In Patent Races.pdf}
}
@article{schmalensee2009standard,
title={Standard-Setting, Innovation Specialists And Competition Policy},
author={Schmalensee, R.},
journal={The Journal of Industrial Economics},
volume={57},
number={3},
pages={526--552},
year={2009},
publisher={Wiley Online Library},
abstract={Using a simple model of patent licensing followed by product-market competition, this paper investigates several competition policy questions related to standard-setting organizations (SSOs). It concludes that competition policy should not favor patent-holders who practice their patents against innovation specialists who do not, that SSOs should not be required to conduct auctions among patent-holders before standards are set in order to determine post-standard royalty rates (though less formal ex ante competition should be encouraged), and that antitrust policy should not allow or encourage collective negotiation of patent royalty rates. Some recent policy developments in this area are discussed.},
discipline={Econ},
research_type={Theory},
industry={General},
thicket_stance={Weak Anti},
thicket_stance_extract={One might argue that the rate of innovation or at least of patenting is in fact too high in some sectors, particularly those in which the patent thicket problem is severe. A problem 26 with this argument is that the returns to major innovations would be reduced by collective negotiation, not just the returns to the minor advances that contribute more to patent thickets than to real progress. },
thicket_def={#C1-ST, References Shapiro, Dubious Patents, Unspecified Blocking Mechanism (Not DHCI)},
thicket_def_extract={Patent Office has been awarding patents too easily and that US courts have been too willing to uphold the validity of dubious patents.9 To the extent that patent policy inflates the number of patents that must be licensed in order to practice a standard, it contributes to what has beecalled a ‘patent thicket’ through which standard-setting must pass.},
tags={#Private Mechanisms, Standards, SSOs, #IPR Reform, Balance with Anti-trust, Prevent Hold-up/Royalty Stacking},
filename={Schmalensee (2009) - Standard Setting Innovation Specialists And Competition Policy.pdf}
}
@article{shand2007trends,
title={Trends in Intellectual Property and Nanotechnology: Implications for the Global South},
author={Shand, H. and Wetter, K.J.},
journal={Journal of Intellectual Property Rights},
volume={12},
pages={111--117},
year={2007},
abstract={The race is on to win exclusive monopoly patents on nano-scale materials, devices and processes. The US National Science Foundation predicts that the immensely broad power and scope of nano-scale technologies will revolutionize manufacturing across all industry sectors - capturing a $1 trillion market within six or seven years. Although industry analysts assert that nanotech is in its infancy, patent thickets on fundamental nano-scale materials, tools and processes are already creating thorny barriers for would-be innovators. Industry analysts warn that, 'IP roadblocks could severely retard the development of nanotechnology.' After a decade of confusion and controversy over biotech patents, South governments are now facing a newer, bigger technology wave. By 1 July 2013 even 'least developed' countries will be obligated by the World trade Organization's Trade-Related Asapects of Intellectual Property (TRIPS) to acccommodate nanotechnology-related inventions. Despite rosy predictions that nanotech will provide a technical fix for health, sustainable energy, and environmental security in the South, researchers in the developing world are likely to find that participation in the proprietary 'nanotech revolution' is highly restricted by patent tolbooths, obliging them to pay royalties and licensing fees to gain access.},
discipline={Law},
research_type={Discussion},
industry={Nanotech},
thicket_stance={Weak Pro},
thicket_stance_extract={Although industry analysts assert that nanotech is in its infancy, patent thickets on fundamental nano-scale materials, tools and processes are already creating thorny barriers for would-be innovators.},
thicket_def={#B, Broad Patents, Unspecified Blocking Mechanism, Cummulative Invention},
thicket_def_extract={Will overly broad patents or 'patent thickets' on emerging nano-scale materials, processes and devices prevent researchers in the global South from participating in the nanotech revolution?},
tags={TRIPS, Industry Commentary},
filename={Shand Wetter (2007) - Trends In Intellectual Property And Nanotechnology.pdf}
}
@article{somaya2003strategic,
title = {Strategic Determinants of Decisions Not to Settle Patent Litigation},
author = {Somaya, Deepak},
journal = {Strategic Management Journal},
volume = {24},
number = {1},
pages = {pp. 17-38},
abstract = {Settlement outcomes in patent litigation are modeled as resulting from strategies pursued by firms with their patented technologies. Hypotheses are derived for two types of influences: the use of patents as isolating mechanisms to protect valuable strategic stakes, and their 'defensive' role in obtaining access to external technologies through mutual hold-up. Parameter estimates from a sample selection probit model provide support for the strategic stakes hypotheses, while the evidence for mutual hold-up is inconclusive. Interindustry comparisons show that nonsettlement of patent suits in both research medicines and computers is increased by strategic stakes and, in addition, mutual hold-up appears to play an important role in computer patent suits.},
year = {2003},
publisher = {Wiley},
copyright = {Copyright © 2003 Wiley},
abstract={Settlement outcomes in patent litigation are modeled as resulting from strategies pursued by firms with their patented technologies. Hypotheses are derived for two types of influences: the use of patents as isolating mechanisms to protect valuable strategic stakes, and their 'defensive' role in obtaining access to external technologies through mutual hold-up. Parameter estimates from a sample selection probit model provide support for the strategic stakes hypotheses, while the evidence for mutual hold-up is inconclusive. Interindustry comparisons show that nonsettlement of patent suits in both research medicines and computers is increased by strategic stakes and, in addition, mutual hold-up appears to play an important role in computer patent suits.},
discipline={Mgmt},
research_type={Theory, Empirical},
industry={ICT, Biotech},
thicket_stance={Anti},
thicket_stance_extract={When strong, watertight patents are available, as in pharma ceuticals, firms may be able to rely on them to isolate key commercial opportunities (Merges, 1998). On the other hand, in systems products industries, thickets of patents may be necessary to foil attempts to invent around the patent, and obtain a robust patent position. Moreover, defen sive patenting?the building of large patent port folios may become necessary if rivals, aided by a strong enforcement regime, are able to effectively threaten to hold up a firm's commercial operations (Hall and Ziedonis, 2001).},
thicket_def={#B2, #D, Single Firm, Unspecified Blocking Mechanism, Strategic Patenting (Bad), Hold-up},
thicket_def_extract={When strong, watertight patents are available, as in pharma ceuticals, firms may be able to rely on them to isolate key commercial opportunities (Merges, 1998). On the other hand, in systems products industries, thickets of patents may be necessary to foil attempts to invent around the patent, and obtain a robust patent position. Moreover, defensive patenting, the building of large patent port folios may become necessary if rivals, aided by a strong enforcement regime, are able to effectively threaten to hold up a firm's commercial operations (Hall and Ziedonis, 2001).},
tags={#Firm Strategy, Value from Position/Portfolio, #Private Mechanisms, Settlements},
filename={Somaya (2003) - Strategic Determinants Of Decisions Not To Settle Patent Litigation.pdf}
}
@article{somaya2011innovation,
title={Innovation in Multi-Invention Contexts: Mapping Solutions to Technological and Intellectual Property Complexity},
author={Somaya, D. and Teece, D. and Wakeman, S.},
journal={California Management Review},
volume={53},
number={4},
pages={47--79},
year={2011},
publisher={JSTOR},
abstract={},
discipline={Mgmt},
research_type={Theory},
industry={General},
thicket_stance={Pro},
thicket_stance_extract={Scholars such as Michael Heller and Rebecca Eisenberg, Carl Shapiro, and others have drawn attention—arguably too much attention—to the transactional problems created for innovators by such dispersed ownership and the density (or so-called thickets) of patents.58 Less attention has been paid by those authors to the equally important role of patents for supporting innovation in multi-invention settings. Innovators and entrepreneurs are often among the most enthusiastic supporters of the patent system because they perceive it as providing safeguards from misappropriation of their inventions.59 Research has also shown that innovators are often able to devise “working solutions” to navigate patent access concerns, and that patents may in turn be crucial for enabling transactions in technology.60},
thicket_def={#A-ST, References Heller/Eisenberg, Complementary Inputs, Diversely-Held, Transaction Costs},
thicket_def_extract={Scholars such as Michael Heller and Rebecca Eisenberg, Carl Shapiro, and others have drawn attention—arguably too much attention—to the transactional problems created for innovators by such dispersed ownership and the density (or so-called thickets) of patents... Indeed, the plethora of IP implicated, and the resulting complex licensing required, has led some academics to despair that some sections of the economy have—or are about to—experience a “tragedy of the anticommons” (i.e., no one will use the patented technology because licensing the required technologies is simply too challenging or too expensive).},
tags={#Private Mechanisms, Pre-emptive patenting, #Firm Strategy Value from Position/Portfolio, Defensive/Offensive Patenting, Licensing},
filename={Somaya Teece Wakeman (2011) - Innovation In Multi Invention Contexts.pdf}
}
@article{tullis2005application,
title={Application of the Government License Defense to Federally Funded Nanotechnology Research: The Case for a Limited Patent Compulsory Licensing Regime},
author={Tullis, T.K.},
journal={UCLA L. Rev.},
volume={53},
pages={279},
year={2005},
abstract={Nanotechnology's potential impact on worldwide industries has nations around the world investing billions of dollars for research in order to capture a part of the projected trillion dollar market for nanotechnology products in 2010. The current rush to patent nanotechnologies may lead to an overcrowded nanotechnology patent thicket that could deter critical innovation and continued product development in the United States. At this early stage of nanotechnology's life cycle, increasing numbers of broad and potentially overlapping patents are being issued--while few nonexclusive licenses are being offered. Furthermore, the lack of significant case law provides little guidance on proper nanotechnology patent scope and validity, while the decline of legal defenses such as experimental use leaves innovators exposed to potential infringement liability for even the most fundamental of scientific research studies. In this Comment, the author proposes that the U.S. government exercises the full extent of its rights under the twenty-five year old Bayh-Dole Act and develop the government license defense to create a limited patent compulsory licensing regime for the fruits of federally funded research. The author argues that recipients of the billions of dollars in federal nanotechnology research funds should provide broad, nonexclusive licenses to the privatized patent rights they obtain as a result of public funding. Ultimately, a well-formulated government license defense, which assesses the extent to which an "infringing" act against a federally funded patent falls along a spectrum of fair use, would provide a means for overcoming the innovation-impeding effects of absolute exclusion rights.},
discipline={Law},
research_type={Discussion},
industry={Nanotech},
thicket_stance={Assumed Pro},
thicket_stance_extract={The development of such a patent thicket could deter further innovation, 6 and the active enforcement by nanotechnology patent holders of their exclusivity rights ultimately could result in the creation of a nanotechnology anticommons-a situation in which a scarce resource becomes prone to underuse because there are too many owners holding the right to exclude others from that resource, and no one has an effective privilege of use.},
thicket_def={#A, #B, References Shapiro, Overlapping Patents, Diversely-Held, Unspecified Blocking Mechanism},
thicket_def_extract={Unfortunately, the rush to secure worldwide intellectual property rights in nanotechnology could lead to the development of a "patent thicket." This term, coined by intellectual property scholars, refers to an overlapping set of patent rights that requires researchers, inventors, and entrepreneurs seeking to commercialize new technologies to obtain licenses from multiple patentees.},
tags={#IPR Reform, Compulsory Licensing},
filename={Tullis (2005) - Application Of The Government License Defense To Federally Funded Nanotechnology Research.pdf}
}
@article{taylor2003american,
title={American Patent Policy, Biotechnology, and African Agriculture: The Case for Policy Change},
author={Taylor, M.R. and Cayford, J.},
journal={Harv. JL \& Tech.},
volume={17},
pages={321},
year={2003},
abstract={},
discipline={Law},
research_type={Theory},
industry={Biotech},
thicket_stance={Pro},
thicket_stance_extract={The patent thicket is a problem because useful innovation in biotechnology requires multiple inventive steps and technologies. The field of biotechnology is particularly dependent on the cumulative work of many researchers, and therefore is vulnerable to the “anticommons” problem mentioned earlier.},
thicket_def={References Shapiro, Overlapping Patents, Broad Patents, Unspecified Blocking Mechanism},
thicket_def_extract={#B1, This pattern — the increasing number of patents, increasing patent breadth, and the issuance of patents on more basic discoveries — has created what some call a patent thicket in biotechnology: “an overlapping set of patent rights requiring that those seeking to commercialize new technology obtain licenses from multiple patentees},
tags={#IPR Reform, Research Exemption, Compulsory Licensing, Industry Commentary},
filename={Taylor Cayford (2003) - American Patent Policy Biotechnology And African Agriculture.pdf}
}
@article{van2006clearing,
title={A Clearing House for Diagnostic Testing: the Solution to Ensure Access to and Use of Patented Genetic Inventions?},
author={Van Zimmeren, E. and Verbeure, B. and Matthijs, G. and Van Overwalle, G.},
journal={Bulletin of the World Health Organization},
volume={84},
number={5},
pages={352--359},
year={2006},
publisher={SciELO Public Health},
abstract={In genetic diagnostics, the emergence of a so-called “patent thicket” is imminent. Such an overlapping set of patent rights may have restrictive effects on further research and development of diagnostic tests, and the provision of clinical diagnostic services. Currently, two models that may facilitate access to and use of patented genetic inventions are attracting much debate in various national and international fora: patent pools and clearing houses. In this article, we explore the concept of clearing houses. Several types of clearing houses are identified. First, we describe and discuss two types that would provide access to information on the patented inventions: the information clearing house and the technology exchange clearing house. Second, three types of clearing houses are analysed that not only offer access to information but also provide an instrument to facilitate the use of the patented inventions: the open access clearing house, the standardized licences clearing house and the royalty collection clearing house. A royalty collection clearing house for genetic diagnostic testing would be the most comprehensive as it would serve several functions: identifying patents and patent claims essential to diagnostic testing, matching licensees with licensors, developing and supplying standardized licences, collecting royalties, monitoring whether users respect licensing conditions, and providing dispute resolution services such as mediation and arbitration. In this way, it might function as an effective model for users to facilitate access to and use of the patented inventions. However, it remains to be seen whether patent holders with a strong patent portfolio will be convinced by the advantages of the royalty collection clearing house and be willing to participate.},
discipline={Policy Report},
research_type={Discussion},
industry={Genetics},
thicket_stance={Weak Pro},
thicket_stance_extract={Moreover, there are factors that may lead to the emergence of a patent blocking problem in genetics in the future: increased awareness among researchers; and growing rate of patent enforcement caused by the strategic enforcement of their rights by patent holders and the proliferating complexity of biomedical research requiring a broader range and greater number of inputs of which a growing number is patented.},
thicket_def={#A-T, References Shapiro, References Heller/Eisenberg, Complementary Inputs, Diversely-Held, Transaction Costs},
thicket_def_extract={Scientists, patent attorneys and academics have expressed concerns about the emergence of a “patent thicket” in the biomedical sciences. Many patents have been granted in this specific technical field, leading to concern among researchers and companies that they will encounter serious difficulties cuttting through the bulk of patents and paying the associated licensing fees.1 Heller and Eisenberg developed the idea that such an increase in property rights will ultimately lead to a “tragedy of the anticommons”.2,3 By this, they refer to the situation where there are so many property rights in the hands of various owners — with whom parties must reach agreements to enable them to aggregate the rights they need access to in order to legally perform their activities — that it will prove difficult to bargain licences to the patented inventions successfully.},
tags={#Private Mechanisms, Pools, Clearinghouses, Royalties},
filename={VanZimmeren (2006) - A Clearing House For Diagnostic Testing.pdf}
}
@article{vanoverwalle2010turning,
title = {Turning Patent Swords into Shares},
author = {Van Overwalle, Geertrui},
journal = {Science},
volume = {330},
number = {6011},
series = {New Series},
pages = {pp. 1630-1631},
abstract = {},
year = {2010},
publisher = {American Association for the Advancement of Science},
copyright = {Copyright © 2010 American Association for the Advancement of Science},
abstract={Compulsory licenses and patent pools will assist modern patent law in fueling genetic test development.},
discipline={General Science},
research_type={Discussion},
industry={Biotech, Genetics},
thicket_stance={Weak Pro},
thicket_stance_extract={Empirical data do not yet confirm existence of a patent thicket in genetics at large (14, 15). However, thicket problems in genetic diag- nostics could grow with shifts (i) from mono- genetic to multifactorial testing (multiplex diagnostics) and (ii) toward diagnostics based on genome-wide association studies driven by the high-throughput of single nucleotide polymorphism platforms and next-generation sequencing possibilities (6, 16). Although not an illustrative example of this phenomenon, the Myriad decision has invigorated concerns about potential negative effects of a dense and dispersed patent landscape.},
thicket_def={#A, #B1, Quotes Shapiro, References Shapiro, References Heller/Eisenberg, Complementary Inputs, Diversely-Held, Transaction Costs},
thicket_def_extract={A second phenomenon relates to the dense and fragmented genetic patent landscape. Problems arise when “patent thickets” (a web of overlapping patents through which a company must “hack” in order to commercialize a technology) emerge ( 12). Accumulation, or “stacking,” of royalties that have to be paid when confronted with a patent thicket may lead to a “tragedy of the anti-commons”},
tags={#Private Mechanisms, Pools, #IPR Reforms, Compulsory Licensing},
filename={VanOverwalle (2010) - Turning Patent Swords Into Shares.pdf}
}
@article{verbeure2006patent,
title={Patent Pools and Diagnostic Testing},
author={Verbeure, B. and van Zimmeren, E. and Matthijs, G. and Van Overwalle, G.},
journal={TRENDS in Biotechnology},
volume={24},
number={3},
pages={115--120},
year={2006},
abstract={There is increasing concern that overlapping patents in the field of genetics will create a costly and legally complex situation known as a patent thicket, which, along with the associated issues of accumulating royalty payments, can act as a disincentive for innovation. One potential means of preventing this is for the patent holders to enter into a so-called patent pool, such as those established in the electronics and telecommunications industries. Precedents for these also exist in the field of genetics, notably with the patents pertaining to the SARS genome. In this review, we initially address the patent pool concept in general and its application in genetics. Following this, we will explore patent pools in the diagnostic field in more detail, and examine some existing and novel examples of patent pools in genetics.},
discipline={General Science},
research_type={Discussion},
industry={Biotech},
thicket_stance={Weak Pro},
thicket_stance_extract={There is increasing concern that overlapping patents in the field of genetics will create a costly and legally complex situation known as a patent thicket, which, along with the associated issues of accumulating royalty payments, can act as a disincentive for innovation.},
thicket_def={#A-T, #B1-T, Quotes Shapiro, References Shapiro, References Heller/Eisenberg, Diversely-Held, Unspecified Blocking Mechanism},
thicket_def_extract={Anticommons effect. An effect arising from the situation where multiple owners each have the right to exclude others from the use of a resource and no one has an effective privilege of use: this results in under use of the resource [7,8].... Patent thicket: The intellectual property portfolios of several companies that form a dense web of overlapping intellectual property rights... Recent studies have reported on the licensing practices of the owners of patents for genetic inventions [3–6], and concerns have been raised that patent thickets, resulting in royalty stacking (see Glossary), block access to patented technology through the accumulated license fees that a downstream inventor has to pay to upstream patent holders. Although the existence of an anticommons effect (see Glossary) of patents [7,8] has not been validated by comprehensive empirical data, it is pertinent to reflect on ways to remedy this},
tags={#Private Mechanisms, Pools},
filename={Verbeure (2006) - Patent Pools And Diagnostic Testing.pdf}
}
@article{wang2010rise,
title={Rise of the Patent Intermediaries},
author={Wang, A.W.},
journal={Berkeley Tech. LJ},
volume={25},
pages={159},
year={2010},
abstract={Patents are evolving from purely exclusionary instruments into intellectual property assets that play a part in business strategy and have value as transactional goods. Businesses operating in the intellectual property marketplace have experienced an unprecedented explosion of activity involving these intangible but valuable assets. The new market for intellectual property has inspired entrepreneurial legal professionals and business professionals alike to create new companies and expand existing ones to act as middlemen, encouraging the continued proliferation of patent transactions. These entities operate and thrive in the intermediary market between buyers and sellers of intellectual property as well as auxiliary markets related to the protection of intellectual property.},
discipline={Law},
research_type={Discussion},
industry={ICT},
thicket_stance={Assumed Pro},
thicket_stance_extract={In this age of patent thickets, an organization must tread carefully lest it infringe countless patents just by doing business (cites Heller Eisenberg's Anticommons)},
thicket_def={#A-ST, Quotes Shapiro, References Shapiro, Diversely-Held, Transaction Costs, Unspecified Blocking Mechanism},
thicket_def_extract={Carl Shapiro defines a patent thicket as a “dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology.”... In this age of patent thickets,60 an organization must tread carefully lest it infringe countless patents just by doing business,61 and an aggregate license to a large cluster of patents in the appropriate field of technology can provide peace of mind.... This is not the case for new entrants to the field, who are unable to transact on even grounds and are likely to find it far more difficult to penetrate the thicket without financially overextending themselves through costly licensing and search-related expenditures. However, without such expenditures they risk even more expensive litigation. },
tags={},
filename={Wang (2010) - Rise Of The Patent Intermediaries.pdf}
}
@article{wagner2003information,
title = {Information Wants to Be Free: Intellectual Property and the Mythologies of Control},
author = {Wagner, R. Polk},
journal = {Columbia Law Review},
volume = {103},
number = {4},
pages = {pp. 995-1034},
year = {2003},
publisher = {Columbia Law Review Association, Inc.},
abstract = {This Essay challenges a central tenet of the recent criticism of intellectual property rights: the suggestion that the control conferred by such rights is detrimental to the continued flourishing of a public domain of ideas and information. In this Essay, Professor Wagner argues that such theories understate the significance of the intangible nature of information, and thus overlook the contribution that even perfectly controlled intellectual creations make to the public domain. In addition, this Essay shows that perfect control of propertized information--an animating assumption in much of the contemporary criticism--is both counterfactual and likely to remain so. These findings suggest that increasing the appropriability of information goods is likely to increase, rather than diminish, the quantity of "open" information. Further, the benefits of control in fostering coordination and enabling flexibility in arrangements are essential elements of promoting progress in a changing world.},
discipline={Law},
research_type={Theory, Discussion},
industry={ICT},
thicket_stance={Anti},
thicket_stance_extract={Control-talk is of "the second enclosure movement," the lurking "tragedy of the anticommons," or the dangers of "patent thickets" -not to mention the phenomenon of litigation efforts (or perhaps social movements?) sporting their own slogans (and logos), such as "Free the Mouse," "Create Like It's 1790," or "When Copyright Attacks."},
thicket_def={#A, References Shapiro, Unspecified Blocking Mechanism},
thicket_def_extract={"Patent thickets" refer to the fact that in many areas of technology, great numbers of related patents exist at any particular time, and many might have applicability to any commercial product. See, e.g, Carl Shapiro,},
tags={#Private Mechanisms, Patent Intermediaries},
filename={Wagner (2003) - Information Wants to be Free}
}
