About | HeinOnline Law Journal Library | HeinOnline Law Journal Library | HeinOnline

LOG IN
LOG IN


111 Nw. U. L. Rev. 377 (2016-2017)
Data-Generating Patents

handle is hein.journals/illlr111 and id is 391 raw text is: Copyright 2017 by Brenda M. Simon & Ted Sichelman Printed in U.S.A. Vol. 111, No. 2 DATA-GENERATING PATENTS Brenda M Simon & Ted Sichelman ABSTRACT-Patents and trade secrets are often considered economic substitutes. Under this view, inventors can decide either to maintain an invention as a trade secret or to seek a patent and disclose to the public the details of the invention. However, a handful of scholars have recognized that because the patent disclosure requirements are not always rigorous, inventors may sometimes be able to keep certain aspects of an invention secret, yet still receive a patent to the invention as a whole. Here, we provide further insight into how trade secrets and patents may act as complements. Specifically, we introduce the concept of data-generating patents, which refer to patents on inventions involving technologies that by design generate valuable data through their operation or use. For instance, genetic tests and medical devices produce data about patients. Internet search engines and social networking websites generate data about the interests of consumers. When data-generating inventions are patented, and the patentee enjoys market power over the invention, by implication, the patentee also effectively enjoys market power over the data generated by the invention. Trade secret law further protects the patentee's market power over the data, even where that data is in a market distinct from the patented invention and especially after the patent expires or is invalidated. We contend that the use of patents and trade secrets as complements in this manner may sometimes yield socially harmful results. We identify the conditions under which such results occur and make several recommendations to mitigate their effects. AUTHORS-Brenda M. Simon, Associate Professor, Thomas Jefferson School of Law; Non-Resident Fellow, Stanford Law School. Ted Sichelman, Professor, University of San Diego School of Law. We thank Dan Burk, Colleen Chien, William Hubbard, Dmitry Karshtedt, Anna Laakman, Bert Lazerow, Mark Lemley, Orly Lobel, Jonathan Masur, Lisa Ouellette, Nicholson Price, Arti Rai, Lisa Ramsey, Sandra Rierson, Rachel Sachs, Josh Sarnoff, Andrew Schwartz, David Schwartz, Steve Semeraro, Jacob Sherkow, Kathy Strandburg, and Marketa Trimble, as well as participants at the IP Scholars 2014 and 2015 conferences and the University of San Diego 2015 IP Speaker Series, for their helpful comments and discussion.