September 24, 2012 13:58 Age: 2 yrs

Patent Law: Playing to the Audience

Timothy R. Holbrook

Professor of Law, Associate Dean of the Faculty

(read the Insights article)

BS, North Carolina State University, 1993
JD, Yale Law School, 1996

Scholarly interests: patent law, international patent law, patent litigation, trademark law and policy, property law

As part of his broader research agenda of exploring how patents and patent law act as a system of communication, Timothy Holbrook’s recent scholarship is focused on the exact audience of patent law — a question not given much consideration in either the design of patent law or the study of it.

Given widespread concern that patents fail in providing adequate public notice of their scope, Holbrook and Professor Mark Janis, Indiana University School of Law, explored how well the public notice function of patents actually works. Their research revealed that, amidst all of the discussion in the scholarly literature and the courts of “public notice,” no one had really defined the relevant “public.”

For some doctrines, a “person having ordinary skill in the art” (phosita) is used to frame the relevant legal question — such as what a term in a patent means. At other times, courts instead use a “reasonable competitor” or other standard. These proxies, Holbrook believes, have been poorly defined for the most part, and nearly all have fallen by the wayside, with the exception of the phosita, in recent years. The courts have not afforded the phosita much flesh, meanwhile, and often apply it to contexts in which a technological perspective seems ill-suited. 

In Patent Law’s Audience, 97 Minnesota Law Review (forthcoming 2012), Holbrook and Janis offer a novel theoretical framework to address the audience issue in patent law. They suggest, in essence, a steadily shifting tradeoff between the complexity of a rule and the proximity of the relevant audience to the law. This rubric can be applied generally, but has particular salience in patent law. Courts often focus solely on reducing legal complexity to enhance notice, but Holbrook believes that a consideration of proximity offers an alternative, underappreciated means for courts to more finely tune patent doctrine. By constructing appropriate heuristics that bridge the gap between the courts and the appropriate audience, public notice can be enhanced.   

Holbrook hopes his research will lead the courts to think more diligently about public notice by more accurately considering the actual public. Some patent doctrines are badly developed, he says, if their target audience really is the inventive community. Instead, the courts have seemed to target lawyers as their audience, without considering that technologists are unlikely to understand the resulting dynamic. As scholars consider whether the incentives of patent law work effectively, Holbrook hopes they will draw upon the framework he and Janis have proposed to inform their own analysis.

Holbrook sees this recent work as particularly important, given the “sea change” in patent law in the last few years — with the Supreme Court and the U.S. Court of Appeals for the Federal Circuit having changed the law dramatically.

Most notable was the dramatic transformation instigated by Congress with the passage of the America Invents Act in 2011. Instead of awarding patents to the first person to create the relevant innovation, the patent generally will now be awarded to the first person to file a patent application. In addition to creating its host of new procedures for the U.S. Patent and Trademark Office, thus, the aia alters what had been the most distinguishing aspect of U.S. patent law: the “first to invent” system. As a result of the aia, the patent will now go to the first inventor to file an application at the Patent and Trademark Office, bringing U.S. law more in line with most legal systems abroad.

Yet the aia, Holbrook says, continues to diverge significantly from other countries’ patent law regimes — and is rife with ambiguity, to boot. Complicating matters further is that patents under the old system remain in effect until at least 2033, meaning that the U.S. will effectively have two patent systems for the next two decades.

Engaging another critical line of inquiry, other recent papers by Holbrook — Territoriality and Tangibility after Transocean, 61 Emory Law Journal (forthcoming 2012); Should Foreign Patent Law Matter?, 34 Campbell Law Review (forthcoming 2012) (symposium); and Extraterritoriality in U.S. Patent Law, 49 William and Mary Law Review 2119 (2008) — explore the possibility of a conflicts-based approach to issues of extraterritoriality in the enforcement of U.S. patents. Extending Holbrook’s influence yet further into the design of U.S. patent policy, this work was the basis of a recent presentation to the director of the U.S. Patent and Trademark Office, and will be the subject of a joint Emory-Patent and Trademark Office workshop later this year. 

Excerpt: “Patent Law’s Audience”

Who does read patent law? ... In truth, we think it would be only a mild exaggeration to assert that no one actually reads the patent law in its raw state. Really, who would? ... [I]t is at best a fond Jeffersonian conceit to suggest that modern research scientists pass their days poring through the prodigious output of the U.S. Court of Appeals for the Federal Circuit—or that they have a clear notion of who or what the court even is. Moreover, the obvious retort—that modern patent professionals read the patent law and retransmit the text to their clients—raises additional questions, and assumes (incorrectly, we think) that patent professionals actually do get their patent law predominantly from source materials, rather than from intermediaries.

The fact is that patent law is probably much more remote from its putative end users than patent law rhetoric conventionally admits. Two types of problems result. First, remoteness complicates patent law’s ex ante incentives story. In the traditional version of the story, patent law incents inventors’ actual decisions about whether to work on inventions, or inventors’ decisions to disclose them, and patent rulemaking is an exercise in intricately sculpting those incentives to create a perfect fit with the overriding normative and constitutional goal of promoting progress in the useful arts. But that account assumes that the law’s incentives actually are communicated, in some form, to inventors. If modern patent law is all but incomprehensible to inventors, then who does receive patent law’s messages about incentives? How are those messages rebroadcast to inventors? How certain are we that the subtleties of patent law’s putative incentive effects are not lost in translation?

Second, patent law’s remoteness presents serious challenges for the design of the patent system’s institutions and rules. It creates great pressure on the system to develop intermediaries that can function to refine the formal patent law so that its audience can receive a comprehensible essence. It creates pressure to perfect those intermediaries so as to minimize the chance that they will introduce translation errors. And it suggests that in elaborating patent law rules, Congress, the courts, and the United States Patent and Trademark Office (USPTO) need a better understanding of the composition of the intended audience, and need to understand how and when to invoke the intermediaries that may connect rule to audience.

We identify and define two considerations that guide this design exercise, proximity and complexity, and offer a simple matrix to illustrate the proximity/complexity tradeoff in the design of rules. …

Formal law sometimes communicates directly with those bound by it. Consider, for example, a speed limit sign displayed on a public road. The rule of law is communicated directly to the relevant audience, car drivers. The legal text is literally spelled out for the ultimate audience and presented in such a manner that no specialized expertise is required in order to discover the text. We could characterize such a rule by saying that there is little distance between the speaker (the state) and the audience (the drivers).

Such direct communication of the law to the relevant audience does not always occur. Often, parties bound by formal legal rules have never read the texts, may not know where to find them or how to read them if they could find them, and see little need to do so in any event. In such instances, other mechanisms forge an indirect connection between formal law and its audience. … For example, although most may not understand the subtle differences between murder and homicide, everyone knows that taking the life of another is a crime, absent some justification such as self-defense. The failure to read the statute that defines murder does not reduce the effectiveness of the law. …

Alternatively, formal law may be communicated to its ultimate audience by way of intermediaries. Intermediaries may be individuals, institutions, or legal constructs. … In some areas—such as patent law—the technical precepts of the law may not be rooted in background norms …Thus, for designing the patent law system, it is critical to develop intermediaries and situate them in such a way as to facilitate efficient dissemination of the formal rules or … elaborate legal constructs to help translate the law.

To capture the notion of a degree of separation between the entity promulgating a formal legal rule and the audience targeted by that rule, it may be useful to speak of a rule’s proximity to its audience. …

As even the most casual student of the law well knows, some legal rules are easier to decode than others. … Here, we note that the ease of decoding should also be a function of the rule’s inherent complexity…. A highly complex rule, as we define it, is difficult to decode, but this presents little concern if the relevant audience is small and expert. It presents greater concern as the audience becomes large and more diverse in its abilities and familiarity with the legal regime at issue. …

Our central proposal here is simple: in the design of legal rules, there is a tradeoff between proximity and complexity. Rulemaking exercises that ignore this tradeoff are not likely to produce rules that operate as intended. … Our central focus here is on rules … that purport to convey highly complex content to a distant audience. Those rules are candidates for redesign. They need either to be restructured to reduce their complexity … or keyed to take advantage of intermediaries or to invoke other sorts of heuristics to increase the effective proximity. …

Patent scope doctrines are generally complex, but yet they purport to speak to the general public. As our framework predicts, such doctrines are problematic; they do not respect the proximity/complexity tradeoff. …[L]ongstanding rules of patentability that bar inventors from patent protection based on their own prior disclosures or sales activities—the so-called statutory bars to patentability… suffer from a similar tradeoff problem: they purport to convey subtle incentives (high complexity) directly to inventors (unfavorable or low proximity). A reassessment of these rules is in order, especially in view of the passage of new patent legislation. …

--from Patent Law’s Audience, 97 Minnesota Law Review (forthcoming 2012) (with Mark D. Janis)

Selected Publications


Patent Litigation and Strategy (Thomson-West, 4th ed., forthcoming 2012) (with Judge Kimberly A. Moore of the U.S. Court of Appeals for the Federal Circuit and John F. Murphy)


"Patent Law’s Audience," 97 Minnesota Law Review (forthcoming 2012) (with Mark D. Janis)

"Territoriality and Tangibility after Transocean," 61 Emory Law Journal (forthcoming 2012)

"Should Foreign Patent Law Matter?," 34 Campbell Law Review (forthcoming 2012) (symposium)

Patents, Presumptions, and Public Notice, 86 Indiana Law Journal 779 (2011)

"Equivalency and Patent Law’s Possession Paradox," 23 Harvard Journal of Law & Technology 1 (2009)

"Extraterritoriality in U.S. Patent Law," 49 William and Mary Law Review 2119 (2008)

"The Expressive Impact of Patents," 84 Washington University Law Review 573 (2006)

"Possession in Patent Law," 59 SMU Law Review 123 (2006)

"When Patents Threaten Science," 314 Science 1695 (December 1, 2006) (with Jordan Paradise, Lori Andrews, and Danielle Bochneak)


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