Allocating Patent Rights Between Earlier and Later Inventions

Charles W. Adams, University of Tulsa

Abstract

Allocating Patent Rights Between Earlier and Later Inventions By Charles W. Adams Abstract The patent statutes expressly authorize patents for improvements to earlier inventions, but they do not address the allocation of rights between the patents for the original inventions and the after-arising technology. From an economic standpoint, the allocation of patent rights should depend on the relative contribution of the original inventor and the improver and on the effect that the allocation would have on their respective incentives. Improvements on earlier inventions may give rise to blocking patents in which the permission of both the original inventor and the improver is required for either of them or anyone else to make, use or sell the improvement. These blocking patents may lead to costly negotiations and create the possibility of deadlock in which nobody can exploit an improvement. Blocking patents commonly arise where an earlier invention is combined with an additional component or a new process for making or using a patented product is developed. In addition, several cases arising out of the massive litigation in the 1970’s and 1980’s over the patent rights to polypropylene developed a theory of the enablement requirement for patentability that would permit an additional category of blocking patents for improvements. This precedent has been substantially undercut by a number of recent Federal Circuit decisions, though. As a result, blocking patents now appear to be limited to patents for combinations of an earlier invention with an additional component and processes for making or using products that are subject to patents.