18th Annual Intellectual Property Scholars Conference (IPSC) hosted by the Berkeley Center for Law & Technology

Patents covering surgical techniques are statutorily unenforceable against the likely would-be infringers of those patents—surgeons and hospitals. Essentially, surgical procedures are eligible for patenting, but any such patent is largely worthless as the holder is unable to obtain either money damages or an injunction. Such patents grant rights without any remedy for infringement. Despite this, surgical method patents are routinely sought by would-be patentees and granted by the U.S. Patent & Trademark Office. So, why would someone go through the expense (upwards of $20,000) and hassle of obtaining a patent on a surgical technique if they would merely acquire a “right without a remedy?” The answer that this paper proposes is surprisingly simple: some inventors are motivated to patent by something other than the patent’s right to exclude. In the surgical field, nonexclusive rights motivations such as prestige among one’s peers, recognition as a pioneer in a particular field, or reputation as an innovator are better explanations for some forms of patenting than the traditional exclusive rights explanation. This paper builds on work by Eric Von Hippel (and many others) that documents the phenomenon of user invention. User innovation refers to innovation that is created by users rather than by producers or manufacturers. User innovation has long been recognized as a driving force behind many of the most innovative advancements in areas as diverse as semiconductors and snowboards. This paper connects the user innovation literature to patent law, showing that in some cases the desire to innovate does not stem from the ability to exclude. As such, it provides a way of understanding the motivation to patent in terms of knowledge dissemination, not exclusive rights. This novel understanding should encourage us to reassess various patent law doctrines.