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August 08, 2013


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Matt Lister

"Whether patent claims are based on tort or contract may help understand why the law works the way it does and it is certainly interesting to think about, it doesn’t help anyone deal with a particular case, nor is it likely to help a policy maker decide how the law should change to address the evolving world of invention."

Ralph, I know very little about IP in particular, but I'll admit to being puzzled by this claim. How could "understanding why the law works the way it does" _not_ help people "deal with a particular case" or "help policy makers decide how the law should change"? Of course, particular cases in most areas of the law are fact-specific, and so conference papers are unlikely to be _specifically_ helpful, but it seems very unusual to think they should be helpful _in that way_. Similarly, "knowing how the law works" might not tell us which policy is more likely to help us achieve particular policy goals (though it might!) but I'll admit to thinking that knowing how the law currently works is often likely to be useful in deciding what sorts of changes are likely to actually be improvements. Certainly that's so in many areas of the law.

Anyway, I'd be very glad if you'd expend on your thoughts here. As put, they seem to be to be so obviously wrong that I think I must be missing your point, unless you're arguing that academic work should be like that CLE classes that people regularly sleep or check email through.

Orin Kerr

First, on the question of patents as contract vs. tort, I think it depends on what you mean. The bounds of a patent are best understood as a contract that bestows a property right; infringement claims are tort claims alleging a kind of trespass on the patent property right. See generally me, Rethinking Patent law in the Administrative State, 42 Wm & Mary L. Rev. 127, 134-45 (2000), available here:

Also, I agree with Matt that the difference can have lots of doctrinal implications. With apologies for the continued self-citation, see the article I link to in the previous paragraph; it offers an argument for why appreciating the private law underpinnings of the patent system sheds light on the standards of review that should apply to various patent actions.


A very good posting that hit the key issue in a lot of IP scholarship (but not all.) IP lawyers because of their background (engineering, experimental end of sciences) have a pretty relentlessly practical focus and tend to be turned off by overly theoretical approaches.

I would though point out that the nature of "know-how" and "trade-secrets" is somewhat of an issue in international practice, and in my GC days there was a bit of civil war over it between US and UK based legal departments. English (and Irish, and similar systems) regards trade secrets as part of the law of confidences and pretty substantially contract law - much of the rest of the world sees it as a form of intellectual property per se (as does EU regulation.) This can have a serious practical impact on how licenses are drafted - I used to end this by telling everyone that they had to understand both systems properly.

Ralph D. Clifford

I would like to respond to several of the comments my post received, particularly where the poster made it clear that I was not clear in my original post.

To Matt: There is no question that understanding why the law works is useful to the practicing lawyer and is a critical component of becoming a lawyer, but in the real world, I feel that most attorneys are more interested in what the rule of law is. In most cases, why the rule is what it is doesn’t become a factor in the case. When I was in practice, I worked on hundreds of cases. Fewer than one percent of them required any litigation about what the law was; instead, they required an application of a set of facts to a set of legal rules that were understood and accepted by all of the litigants and the court. The reality is that law review articles are not actively used in practice.

To Orin: I was trying not to reach the substance of the article itself. I recognize that understanding how the system works, or more accurately, what analogies make the system easier to understand, should be an important part of the process of evaluating the effectiveness of a legal system, particularly if changes are being proposed. The question I am raising is whether this happens in reality. It does not appear that law review articles are of interest to anyone outside of the academy as judges, legislators, and practicing attorneys all express disinterest.

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