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- Title
ENDING PATENT LAW'S WILLFULNESS GAME.
- Authors
Lemley, Mark A.; Tangri, Ragesh K.
- Abstract
Patent law's doctrine of willful infringement turns the attorney-client privilege on its head by requiring companies confronted with a patent first to obtain a written opinion of counsel and then to disclose that opinion in court. The willful infringement game is a costly one with perverse consequences for patent law. The complex rules of the game cause attorneys to withhold information and candid advice from their clients because they know the advice may later have to be disclosed to the other side. The current rules also infect pre-litigation advice, essentially making it impossible for a competent lawyer to advise a client that a competitor's patent should be avoided. Perhaps worst of all, they discourage engineers and companies from reading patents in the first place, thereby undermining the disclosure function that is at the foundation of the patent system. This Article proposes that the best approach to reducing these perverse effects is first to redefine willful infringement as adopting a technology with knowledge that it was derived from the patentee, and second to adjust the premium charged for it. Changing the focus of the inquiry to the time of adoption would reduce the number of accused infringers that would be required to seek an opinion of counsel and minimize the scope of the disclosure for the rest. Adjusting the damages premium by limiting willful infringement damages awards to attorneys fees in the bulk of cases will ensure that the willfulness doctrine fulfills its purpose of compensating the patentee while not over-deterring competitors in the marketplace. Narrowing the willfulness doctrine and limiting the amount of damages awarded are consistent with the purposes of patent law and will put an end to a longstanding and dangerous game.
- Subjects
UNITED States; PATENT law; WAIVER; PATENTS; INDUSTRIAL laws &; legislation; INDUSTRIAL property
- Publication
Berkeley Technology Law Journal, 2003, Vol 18, Issue 4, p1085
- ISSN
1086-3818
- Publication type
Article