Robert P. Merges

Books

Articles

Older Articles

Presentations

Books


INTELLECTUAL PROPERTY IN THE NEW TECHNOLOGICAL AGE
(Aspen Law & Business, 4th ed. 2006), with Mark Lemley, Peter S. Menell and Robert P. Merges (along with 2003 Case and Statutory Supplement and Teacher’s Manual).

To order, click here, or call toll-free (800)-234-1660. The ordering information is:
Text: ISBN 0-7355-3652-X ($84.00)

Statutory Supplement: ISBN 0-7355-2813-6 ($32.95) Teacher’s Manual: free; for law professors only

Updates to the text are available here.

SOFTWARE AND INTERNET LAW
(Aspen Law & Business, 3rd ed. 2006), with Mark Lemley, Peter S. Menell, Robert P. Merges, and Pamela Samuelson (along with Teacher’s Manual)

To order, click here, or call toll-free (800)-234-1660 . The ordering information is
Text: ISBN 0-7355-3654-6 ($83.00)

Teacher’s Manual: free; for law professors only

Updates to the text are available here.

Foundations of Intellectual Property }
(Foundation Press, 1st ed. summer 2004) with Jane C. Ginsburg, Columbia University
ISBN #: 1-58778-754-7
For the table of contents, click here.
Call toll-free 800-328-2209 (Select Option 1) to order.


Articles

"Justifying Intellectual Property," forthcoming, Harvard University Press, 2010.

"An Estoppel Doctrine for Patented Standards," forthcoming California Law Review, 2008 (with J. Kuhn)

"Locke for the Masses: Property Rights and the Products of Collective Creativity," forthcoming, Ideas Section, Hofstra Law Review, 2009.

The Economics of Intellectual Property Law (Editor) (Economic Approaches to Law Series, Edward Elgar Publishers, 2008), vol. 1 and 2.

Software and Patent Scope: A Report from the Middle Innings. Texas Law Review Vol. 85:1627, 2007.

"Now and Then, Here and There: A Review Essay on Khan, The Democratization of Invention, and Blind, et al., Software Patents," Journal of Economic Literature, 2007

Locke remixed ; ) This brief Comment was prepared as part of a conference on Intellectual Property and Social Justice at U.C. Davis Law School in March, 2006. I argue here against a broad legal right to "remix" digital content -- to freely alter or modify pre-existing copyrighted works.  I first note that remix culture is flourishing under our current legal regime, partly as a result of high enforcement costs on the part of copyright owners, and partly due to voluntary waivers of copyrights by content owners who see a market opportunity in encouraging remixing. Next, I argue that despite widespread de facto remixing, remixers should not be given a legal right to remix any and all content. I contest the assertion by some theorists that remixing is necessary for the self-actualization of people living in a media-saturated world. I note that themes of rebellion and resistance dominate the narrative of the pro-remix literature, and introduce a counter-narrative: the struggling content creator, trying to make a living creating and selling digital content. Because these creators have a dignity interest in what they create, and because intellectual property rights can help them make a living at what they do, the interests of remixers ought not automatically trump creators' claims.

The Standard of Creativity and the Graham Cases, in Intellectual Property Stories (Rochelle Cooper Dreyfuss and Jane Ginsburg, eds., Foundation Press, 2006) (with John Duffy).

A Response to the Commentators, response to specially commissioned comments on Arora & Merges, 13 Ind. & Corp. Change 451-475 (2004), by five economists, 15 Ind. & Corp. Change (2006).

A Transactional View of Property Rights, 20 Berkeley Tech. L.J. 1477 (2005).

Incentives to Challenge and Defend Patents: Why Litigation Won't Reliably Fix Patent Office Errors and Why Administrative Patent Review Might Help, 19 Berkeley Tech. L.J. 943-970 (2004) (with Joseph Farrell, Professor of Economics, U.C. Berkeley).

A New Dynamism in the Public Domain, 71 Chi. L. Rev. 183-203 (2004).

Specialized Supply Firms, Property Rights, and Firm Boundaries, 13 Ind. & Corp. Change 451-475 (2004) (with Ashish Arora); Notes and Comments: Special Section: Comments on Ashish Arora and Robert Merges, "Specialized supply firms, property right and firm boundaries," 14 Industrial and Corporate Change 1195-1240 (2005).

"From Medieval Guilds to Open Source: Informal Norms, Appropriability Institutions, and Innovation," presented at Conference on the Legal History of Intellectual Property. Madison, WI, 2004.

The Uninvited Guest: Patents on Wall Street, 88 Federal Reserve Bank of Atlanta Economic Review 4 (Fourth Quarter 2003).

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"Institutions for Intellectual Property Exchange: The Case of Patent Pools", in Intellectual Products: Novel Claims to Protection and Their Boundaries (Oxford Univ. Press, 2001) (Rochelle Dreyfuss, ed.).

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One Hundred Years of Solicitude: Intellectual Property Law, 1900-2000, 88 Cal. L. Rev. 2187 (2000).

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Incentives to Challenge and Defend Patents: Why Litigation Won't Reliably Fix Patent Office Errors and Why Administrative Patent Review Might Help
Berkeley Technology Law Journal, Annual Review of Law and Technology, Vol. 19, No. 1, 2004
by Joseph Farrell and Robert P. Merges

Abstract

Given the limits on Patent Office scrutiny of patent applications, one might hope that ex post litigation can fix at least the important errors. Unfortunately, the often grossly skewed incentives to
challenge and to defend issued patents make this view too optimistic. Since litigation cannot fix all errors, we urge better USPTO funding and higher standards of initial review, better incentives (not limited to formal duties) for applicants to find and disclose prior art information, and the creation of a cheap and workable administrative post-issue review. We explain why existing administrative reviews are not a workable system, and recommend some features that a new system should have.

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Specialized Supply Firms, Property Rights and Firm Boundaries
Industrial and Corporate Change, Volume 13, Number 3, pp. 451-475 (2004)
by Ashish Arora and Robert P. Merges

Abstract

The proper specification of intellectual property rights (IPRs) is a delicate and controversial matter. In this paper, we consider one specialized context in which IPRs can add to efficiency. We build on contributions of both ‘firm capabilities’ scholars (e.g. Teece, Pisano et al.) and ‘property rights’ economists (e.g. Hart) to show that IPRs can affect efficiency by influencing the location of technological innovation. Using a simple set up, where the key choice is whether a technology-intensive input will be supplied by an independent firm or produced in-house, we analyze how the choice is affected by the strength of IPRs and by the existence (and nature) of information spillovers. Specifically, we show that when the supply relationship is likely to produce new information of value to the supplier, stronger property rights favor independent suppliers over vertical integration. An important implication of our model (backed by empirical case studies) is that strong IPRs therefore encourage investments in specialized firms with strong ‘firm capabilities’ in the area of innovative input supply. IPRs therefore may play a role—along with multiple other factors—in the location of firm boundaries in some cases. This contribution to the viability of small, specialized firms, with their superior ability to innovate in some cases, must be taken into account in evaluating recent criticisms of over-fragmented IPR ownership (i.e. the ‘anticommons’problem). It also contributes to an understanding of IPRs in the ‘post-Chandlerian’ economy, where smaller, specialized firms play a prominent role.

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Compulsory Licensing vs. the Three "Golden Oldies" Property Rights, Contracts, and Markets
Cato Institute, Cato Policy Analysis No. 508, Jan. 15, 2004.
by Robert P. Merges

Executive Summary

From its inception in the U.S. in the early 20th century, compulsory licensing has been seen as a means of making intellectual works available by reducing some of the transaction costs associated with obtaining permission to use copyrighted material. There are now increasing calls for compulsory licensing for digitized works on the Internet, particularly music.

Conceptually, a compulsory license falls midway between granting full copyright, which gives owners broad control, and denying copyright protection altogether.

Rather than allowing musicians, artists, and other copyright owners to negotiate licensing terms for use of their works, a compulsory license forces copyright owners to allow use of their works under legislatively set prices and restrictions on use.

When warring groups sound the alarm over excessive control via copyright on the one hand and insufficient incentives to create on the other, compulsory licensing seems a reasonable compromise. Compulsory licensing seems to pay off big in the short term by reducing the need for individual buyers to locate, negotiate with, and pay individual sellers. Compulsory licensing supposedly addresses the "market failure" of high transaction costs.

But markets for digitized works do not suffer from market failures. Furthermore, the Internet has reduced the transaction costs that once served as a key rationale for compulsory licensing. Recent developments suggest that fears of excessive control of digital content are overblown. Without enhancing compulsory licensing, the digital landscape is diverse, as the case of music demonstrates. There is free music, temporarily free music, and low-cost music online. Offline, music companies are lowering the prices of CDs.

The influence costs associated with compulsory licensing schemes make them a more expensive mechanism for setting prices. Private negotiations are much cheaper and more flexible over the long term.

In the digital realm, we have not yet abandoned the basic building blocks of all creative endeavors—property rights, contracts, and voluntary markets—and we therefore retain the preconditions for future growth and diversification.

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The Uninvited Guest: Patents on Wall Street

by Robert P. Merges
Federal Reserve Bank of Atlanta Economic Review
Fourth Quarter 2003, Volume 88, Number 4

Abstract

For at least the past twenty-five years, financial services industries have been creating innovative products and services without the help of patents. The 1998 State Street Bank case changed all this, making patents freely available in these industries. Will patents help or hurt financial services innovation in the long run? This article sheds some light on this issue.

Before the advent of patents, several “appropriability” mechanisms protected financial services innovation: “first mover” advantages, complementary or “cospecific” assets, and trade secrecy. Evidence suggests that, in the immediate post-patent era, financial firms’ first order of business was to protect these traditional appropriability practices. This explains the early push to secure a “prior use rights” defense to protect established firms against patent claims by upstart outsiders. From an historical perspective, this reaction to the “patent threat” tracks that of other industries: nineteenth century railroads, and the software industry of the 1980s in particular.

In the end, the author argues, patents are not likely to cause any real and lasting problems. Although patents may increase the costs of interchanging innovative ideas, they may bring some unintended benefits as well – by fostering spin-offs and facilitating entry by startups, for example. Like random shocks in the natural world, the new patent regime provides a shakeup that could bring some good but unpredictable consequences.

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A New Dynamism in the Public Domain
71 U. Chi. L. Rev. 183-203 (2004)

By Robert P. Merges (U.C. Berkeley)
Do not cite or quote without permission.
© 2004 Robert P. Merges

Abstract

Many believe intellectual property has overreached, and that policymakers must respond. In this Essay, I argue that the critique may have merit, but private parties are in some cases taking mat-ters into their own hands. Firms and individuals are increasingly injecting information into the public domain with the explicit goal of preempting or undermining the potential property rights of economic adversaries. Biotechnology firms invest millions of dollars in public domain gene sequence databases, to prevent hold-ups by firms with patents on short gene sequences. Major software firms fight en-trenched rivals by investing millions of dollars, contributing to open source operating systems. In both cases, property-preempting investments (PPIs) are made to offset the effects of competitors’ property rights. Individuals and nonprofits are joining in too, with initiatives such as the Creative Commons project. All of these major private investments in the public domain reveal a self-correcting feature of the intellectual property system that has been overlooked until now, and signal that public lawmaking is not the only arena in which the excesses of intellectual property may be addressed.

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Property Rights, Firm Boundaries, and R&D Inputs (PDF)

By Ashish Arora (Carnegie-Mellon University) and Robert P. Merges (U.C. Berkeley)
Draft. Do not cite or quote without permission.
© 2000 Ashish Arora and & Robert P. Merges

Abstract

This Article offers an explanation of the role of intellectual property rights (IPRs) in information-intensive vertical supply relationships. In particular, we explore the connection between stronger property rights and the enhanced viability of independent (versus vertically integrated) input supply firms when contracts are incomplete. We start by modeling a tradeoff between two types of information transfer in buyer-supplier relationships: "synergies," in which joint efforts reveal new applications of existing technology; and "leakage," or disclosure of existing information. We show that property rights in the hands of an independent input supplier can create the potential for greater inter-firm synergy, outweighing the risk of leakage. Greater synergies arise due to the supplier's greater effort to adapt its generalized technology to the specific needs of the buyer. Property rights play a crucial role: they reduce the risk of buyer firm opportunism, in effect raising the cost of the buyer's "outside option" in the event the supplier-buyer contract is terminated. The "residual" nature of property rights makes them more effective in this regard than contracts alone. We extend our basic results to analysis of buyouts and spinoffs, and assay an extensive body of empirical evidence. Broad support is found for our approach, pointing the way to future discussions of the relationship between property rights specifications and the opening up of new contracting horizons.


Older Articles

Contracting Into Liability Rules: Intellectual Property Rights and Collective Rights Organizations (84 Calif. L. Rev.1293 (1996)) 

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Intellectual Property Rights, Input Markets, and the Value of Intangible Assets

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Institutions for Intellectual Property Transactions:  The Case of Patent Pools

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Who Owns the Charles River Bridge? Intellectual Property and Competition in the Software Industry

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As Many as Six Impossible Patents Before Breakfast: Property Rights for Business Concepts and Patent System Reform

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Property Rights Theory and the Commons: The Case of Scientific Research

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Presentations

"The Concept of Property in the Digital Age," Baker Botts Distinguished Lecture, University of Houston, April 1, 2008.

IP and New Business Models: Patent Quality and Reliable Assets, presentation at annual Almaden Institute, IBM, San Jose, CA, May 8, 2008.

Kant on Intellectual Property Rights: Concepts and Principles for the Digital Era, presentation at the Cardozo School of Law, New York, September 10, 2007.

Software and Business Method Patents: A Review and Update, presentation at the Intellectual Property Owners Annual Meeting, New York, September 10, 2007.

IP Under Attack? Worldwide IP Issues in Perspective, Bay Area Meeting, Association of Intellectual Property Professionals (AIPPI), Spring 2007.

China/US IP Issues: Software Patents and Interoperability: Presentation at SAP, Inc.

The Future of Property, Berkeley Alumni group presentation, Palo Alto, CA, May 2007.

Patent Law presentation, Federal Judicial Center continuing education for federal judges, Berkeley, June 2007.