Innovation and Its Discontents: How Our Broken Patent System Is Endangering Innovation and Progress, and What to Do About It

by Adam B. Jaffe and Josh Lerner
Princeton University Press, Princeton, New Jersey,2004
256 pp., illus. 14 b/w. Trade, $29.95
ISBN: 0-691-11725-X.

Reviewed by Zainub Verjee
Ottawa, ON, Canada, K1R 7X1

bigvee@sympatico.ca

A timely and concise book that presents a comprehensive and convincing argument about the not so explicit changes in the United States of America’s laws beginning in 1982 that have broken a patent system that delivered till then. Primarily this book could be slated as a discussion between economist and lawyers, and yet it is very effective for a lay reader; where the economists, i.e. the authors, squarely lay the blame on the patent lawyers. Nevertheless, the authors’ analysis offers useful insight for anyone with research interests in this area as to how to make strategic interjection given the take over of the process of patenting by special interests and their lawyers (p.23).

This new book by Adam Jaffe of Brandeis University and Josh Lerner of Harvard Business School argue a strong case as to how the current (read since 1982) the patent regime has failed to deliver the promise of America's innovation engine. It further offers prescription of certain strategies to make the necessary corrections to the problems at the US Patent and Trademark Office.

In one line the argument is about the clogging up of system by virtue of perky patent lawsuits and its economic fallout (p.150) that discourages innovation process. One of the key pressures that the authors identify is the diversification of the patent revenue to other governmental expenses.

One of the key chapters is the fourth one where the authors focus on the Court of Appeals for the Federal Circuit (CAFC), the appellate patent specialty court with the most influence on the patent system. They discuss the CAFC’s role in increasing patent strength via broadening the list of topics that can be patented, restriction on challenges to validity of patent and offer more effective solutions.

The authors have tended to be more communal while offering solutions. They prefer to offer a peer scrutiny as a better mechanism than an individual expertise in the evaluation of patents. Further they want the other stake-holders in this community of innovators, like scientists and businessmen, to weigh in about any issue around the novelty of a new invention. There is an interesting suggestion made regarding the place of challenge to a patent. The authors moot such a place should be primarily be a patent office and not necessarily be discussed in front of a jury, which is not necessarily equipped and have a nuanced understanding imperative for such an evaluation. They do make another point about the way to prevent useless and perky tactics is to make the challenger pay for the costs if s/he lost. This all is summed up in chapters six and seven where an examination of previous failure and strategize for future reform. The author suggest, in addition to above, recouping more resources for patent examination, the establishing of a pre-grant opposition and better deployment of special masters/knowledgeable professional to advise judges on complex topic and give judges more powers.

In regards to suggestions as to how the system could be improved, one will have to give the authors’ the benefit of doubt given the scope of the topic and limitations that a 200 odd page book offers. One notices that they are steadfast in articulating faith in traditional patent system and not talking about undoing of the change in appeals court jurisdiction, which according to them is one of the key factor for downwards trend in innovation. Not everyone is going to take their diagnosis and prescription on a face value. That is the paradox!

Anyway one can fairly say that the authors largely succeed in putting across their key argument. They employ interesting strategies and tools to keep the tone of the book light despite dealing with such a dry and tedious subject. Anecdotal tone, interesting snippets with a sprinkling of a historical narrative and proposed reforms pack up the just over 200 page book with a good dose of footnotes and a reasonable index, it makes for an engaging and a quick simple read.