The Promise and Perils of Strategic Publication to Create Prior Art: A Response to Professor Parchomovsky

Authors

Rebecca S. Eisenberg, University of Michigan Law SchoolFollow

Document Type

Correspondence

Publication Date

1-2000

Abstract

In a provocative recent article in the Michigan Law Review, Professor Gideon Parchomovsky observes that a firm racing with a competitor to make a patentable invention might find it strategically advantageous to publish interim research results rather than risk losing a patent race. This strategy exploits legal rules limiting patent protection to technological advances that are new and "nonobvious" in light of the "prior art" or preexisting knowledge in the field. By publishing research results, a firm adds to the prior art and thereby limits what may be patented in the future. Parchomovsky posits that, before it is able to claim a patentable invention of its own, a firm might have sufficient information to publish results that would raise the threshold for patentability enough to preclude the issuance of a patent to its rival. A firm that believes a rival is likely to complete an invention first might therefore try to defeat the rival's patent prospects through publication, leaving both firms free to compete in the market for the unpatented invention. Otherwise, the firm that wins the race could use the patent to exclude the lagging firm from the market entirely. This "spoiler" strategy, according to Parchomovsky, "explains the otherwise peculiar practice of commercial firms that routinely publish research results in scientific and technological journals."

Recommended Citation

Eisenberg, Rebecca S. "The Promise and Perils of Strategic Publication to Create Prior Art: A Response to Professor Parchomovsky." Mich. L. Rev. 98, no. 7 (2000): 2358-70.