Patent Scope Revisited: Merges & Nelson’s “On the Complex Economics of Patent Scope,” 20 Years After

Date(s) of Conferences:

September 23-24, 2010


Indiana University Maurer School of Law
211 South Indiana Avenue
Bloomington, Indiana 47405


In their classic article, published in 1990, Merges & Nelson transformed the debate over the economic foundations of patent law. At the time, the bulk of the economics literature (with the notable exception of Ed Kitch’s Prospect Theory paper) had focused on issues such as patent duration. Merges & Nelson pointed out that the determinations of greatest everyday significance to the patent system – determinations of patent scope – had attracted the least economic analysis. Taking Kitch’s work as their model, Merges & Nelson crafted their own new answers to the question of how patent scope decisions affect technological development. They concluded that the law should strive to preserve competition for improvements, even at the expense of eroding incentives for pioneer firms to some extent. They also concluded that technical advance proceeded differently in different industries, and that patent scope decisions should reflect that fact. The resulting work has joined Kitch’s as a staple in the scholarly literature on patent law.

The landscape of patent law has changed dramatically since 1990. In the jurisprudence, crucial cases on the processes of claim interpretation, the shape of the doctrine of equivalents, and the extent of the written description requirement, to name only a few, were all handed down after 1990. In the patent literature, formerly the domain of only a few pioneers, many voices have now joined the discourse. Even questions of what patent “scope” encompasses, and how it connects to the task of defining patent rights, are matters of current debate. At this conference, we will look consider what has been learned about these topics since the publication of Patent Scope, and how the work of current scholars, lawyers and judges will inform future debates in this area.

The nation’s leading patent scholars will discuss:

  • The role of the written description in defining patent rights in light of the en banc Ariad decision;
  • The future of the claim construction procedures in view of the continuing controversey over the Markman/Cybor de novo review practice and the role of equivalency;
  • The presetn and future institutions responsible for claim scope determinations and the rules governing those determinations;
  • And other current topics, inspired by Merges &

Contact Information:

Professor Mark Janis (


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