Robin Feldman - Academia.edu (original) (raw)
Papers by Robin Feldman
The patent regime is a quintessential notice system. Implicit in its design is the concept that o... more The patent regime is a quintessential notice system. Implicit in its design is the concept that one attempting to license a patent can identify those who hold the requisite rights and the territory that the patent holders claim. The modern system, however, bears little resemblance to the idealized form. In the last decade, an entire Hobbit’s world has been created under the foliage with little information available to inform the market. To address the problem, this Article suggests borrowing from doctrines related to disclosure in the realm of corporate securities, molding those doctrines to particular patent concerns. As a government grant, bestowed for constitutional purposes, a patent is an asset imbued with the public interest. Analogous to the trading of public securities, the trading of patent assets must be sufficiently transparent to ensure proper functioning of that trading market
Harvard Journal on Legislation, 2016
Thirty years ago, Congress ushered in a new and miraculous era in medicine, with the creation of ... more Thirty years ago, Congress ushered in a new and miraculous era in medicine, with the creation of the Hatch-Waxman system for approval of generic drugs. The progress, however, has not been without resistance. Our paper presents an overview of three generations of games pharmaceutical companies play to keep generics off the market and maintain monopoly pricing. In “Generation 1.0,” branded companies simply paid generics to delay entering the market, reaping billions of dollars of benefit. “Generation 2.0” involves paying for delay through multiple side deals that camouflage the value of the payment. Generation 2.0 also includes what we call “boy scout clauses” — agreements to behave honorably that actually mask anticompetitive collusion. The newest generation, however, moves from collusion to obstruction. Generation 3.0 uses administrative processes, regulatory schemes, and drug modifications to prevent generics from getting to market. Some of these schemes have now made the news as d...
Minnesota Law Review, 2018
Chapman Law Review, 2015
In ordinary circumstances, legal doctrines evolve at a glacial pace. As I have discussed in prior... more In ordinary circumstances, legal doctrines evolve at a glacial pace. As I have discussed in prior work, law is constantly driven to adapt to changing circumstances within existing frameworks, as tested and refined through various spheres of acceptance.1 This is not, however, a speedy process, and it can take years or even decades for issues on the ground to bubble up to the level of an administrative agency, let alone the Supreme Court or Congress.
ERPN: Labor Economics (Topic), 2016
The startup industry has matured rapidly over the past decade, becoming a subject of substantial ... more The startup industry has matured rapidly over the past decade, becoming a subject of substantial interest to the business community, academics, and the general public alike. Yet, the set of organizations that has sprouted up around the startup industry – dedicated to supporting the growth of fledgling ventures – has received less attention. Divided roughly into the three categories of co-working spaces, incubators, and accelerators, these support organizations all aim to “catalyze” the success of new startups. Thus, we have coined the term “Catalyst” to refer to them collectively. In the present study, we used a qualitative interview method to obtain a more comprehensive picture of how Catalysts have impacted the entrepreneurial ecosystem. In particular, we found a discrepancy between the narrative propagated by Catalyst personnel and the actual data when it came to the issue of gender. While respondents described a collaborative, open environment cultivated by Catalysts that should...
Traditional justifications for patents are all based on direct or indirect contribution to the cr... more Traditional justifications for patents are all based on direct or indirect contribution to the creation of new products. Patents serve the social interest if they provide not just invention, but innovation the world would not otherwise have. Non-practicing entities (“NPEs”) as well as product-producing companies can sometimes provide such innovation, either directly, through working the patent or transferring technology to others who do, or indirectly, when others copy the patented innovation. The available evidence suggests, however, that patent licensing demands and lawsuits from NPEs are normally not cases that involve any of these activities. Some scholars have argued that patents can be valuable even without technology transfer because the ability to exclude others from the market may drive commercialization that would not otherwise occur. We demonstrate that even if various commercialization theories can sometimes justify patent protection, they cannot justify most NPE lawsuit...
SSRN Electronic Journal, 2019
Trade secret has drifted from a quiet backwater doctrine to a pervasive force in intellectual pro... more Trade secret has drifted from a quiet backwater doctrine to a pervasive force in intellectual property. As always, the risk of distortion is great when a legal arena is developing and expanding rapidly. Nowhere do the theoretical tensions of trade secret law appear in such stark relief as in the modern pharmaceutical debates, where the heart of the theoretical question involves whether pricing is a proper subject for trade secrecy claims. We aim to bring trade secret into greater harmony with broad concepts that reach across all intellectual property regimes. As with other areas of intellectual property law, trade secret law is not a mere contest of private commercial interests. Rather, it embeds substantial dedication to the public interest, reflecting utilitarian balancing of key societal interests. In this context, we develop the concept of “thin” trade secret, looking to the analogous concepts in other intellectual property regimes. Such approaches embody the recogniztion that intellectual property rights are not solid monoliths, presenting an impenetrable wall through which no party but the rights holder may pass. Rather, they are brilliantly nimble and subtle systems, deftly threading their way among various societal goals. This article offers the potential of anchoring trade secret more firmly to its theoretical base, as well as bringing trade secret closer to the family of other intellectual property regimes. Although squabbling, chaotic, and somewhat dispersed, all members of this time-honored family can learn from each other, sharing their battle-worn wisdom with the newest, young upstart.
SSRN Electronic Journal, 2018
Health care spending rarely follows an ordinary, rational model. Yet even in that context, prescr... more Health care spending rarely follows an ordinary, rational model. Yet even in that context, prescription drug prices are rising at a puzzling rate. What is causing the phenomenon? Quite simply, incentives percolating throughout the prescription drug market push players toward higher prices. At the center lies the highly secretive and concentrated Pharmacy Benefit Manager (PBM) industry-middle players who negotiate between drug companies and health insurers by arranging for rebates and establishing coverage levels for patients. Contracts between drug companies and the middle players are closely guarded secrets. The PBM customers, including Medicare, private insurers, and even their auditors, generally are not permitted access to the terms. And the middle players are not alone; everyone is feeding at the trough. Markets, like gardens, grow best in the sun. They wither without information. Thus, one should not be surprised to see competitive distortions and suboptimal outcomes. Despite the extreme secrecy, details have begun to seep out-through case documents (including recent contract disputes among parties), government reports, reports to shareholders, and industry insider reports. Piecing together these sources, this Article presents a full picture of incentive structures in which higher-priced drugs receive favorable treatment, and patients are channeled towards more expensive medicines. In exchange for financial incentives structured in different ways to appeal to hospitals, insurers, doctors, and even patient advocacy groups, drug companies ensure that lower-priced substitutes cannot gain a foothold. It is a win-win for everyone, except of course for taxpayers and society. This Article also analyzes popular proposals that are unlikely to work and suggests approaches for aligning incentives.
Journal of Law and the Biosciences, 2018
SSRN Electronic Journal, 2016
for research assistance and proofreading. We wish to particularly thank John Gray, whose data ins... more for research assistance and proofreading. We wish to particularly thank John Gray, whose data insights played a critical role in the analysis, and Rosie Buchannan, who was instrumental in guiding us through the computer coding process. While the article was in progress, Evan Frondorf completed his position at the University of California Hastings College of the Law, began a full-time position at Stripe, and thus, had to bow out of the final stages. His contributions to the article were immeasurable. In accordance with the protocols outlined in the Harvard Journal of Law & Technology Open Letter on Ethical Norms, all of the data is publicly available for future use by other academics on SSRN.com.
SSRN Electronic Journal, 2016
To ensure that the TPP agreement works properly in practice with regard to patents and the govern... more To ensure that the TPP agreement works properly in practice with regard to patents and the governance of pharmaceuticals and semiconductors, strong mechanisms for enforcement and for rooting out system abuse are needed. To make this happen, regulators should learn from past mistakes of the U.S. patent system: the proliferation of non-practicing entities (NPEs), and strategic behavior that blocks or delays generic competition in the pharmaceutical industry. This Think Piece presents key findings of the author's research on the complexity of the U.S. litigation and regulatory frameworks that have provided fertile ground for strategic behavior that can have negative effects on innovation, and may distort the expected gains from trade for innovation.
Journal of Law and the Biosciences, 2015
Research universities have made enormous contributions to the field of medicine and the treatment... more Research universities have made enormous contributions to the field of medicine and the treatment of human disease. Alone or in collaboration with pharmaceutical companies, academic researchers have added to the store of knowledge that has led to numerous life science breakthroughs. A new chapter may be opening for academic researchers, however, that could lead to a darker tale. 'The mouse that trolled: the long and tortuous history of a gene mutation patent that became an expensive impediment to Alzheimer's research, by Bubela et al., chronicles one such tale.' The authors do an excellent job of bringing to life the twisting saga that engulfed numerous academic and non-profit Alzheimer's researchers over many years. The authors note that the story is an outlier, but sadly, that may not be the case. There are increasing signs that academic researchers and their institutions are being caught up in the rush for gold that is accompanying the proliferation of the non-practicing entity business model. As I have noted before, academic institutions have a dual role, as keepers of the academic flame and guardians of the public monies entrusted to them through state and federal research funding. The specter of taxpayer money being used, not to advance research and for the betterment of society, but as part of schemes to extract money from productive companies may not sit well with voters, and ultimately, with legislators. In that case, researchers and institutions themselves may have much to lose. 'The Mouse that Trolled: The Long and Tortuous History of A Gene Mutation Patent That Became an Expensive Impediment to Alzheimer's Research' describes an important case in which a gene mutation patent, owned by a non-practicing entity, was asserted against researchers studying the causes and effects of Alzheimer's disease. Non-practicing entities (NPEs) are parties whose core activity involves licensing or
Quantitative analysis of patent behavior is critical, as congressional and regulatory agencies co... more Quantitative analysis of patent behavior is critical, as congressional and regulatory agencies consider the impact of patent trolling on modern markets. Anecdotal evidence has suggested that "non-practicing entities," also known as "patent trolls," specifically target companies for lawsuits, licensing demands, or other monetization activity as firms approach or complete major funding events, such as their initial public offering (IPO). To test this narrative, we survey in-house legal staff at companies that have recently gone public about their exposure to patent demands surrounding their first round of venture capital funding and their IPO. The study is one of the first attempts at providing quantitative insight into this potential strategic behavior both in and out of the courtroom. We find evidence supporting extensive patent demand activity near IPOs, one of the most public and vulnerable periods of a company's development. A significant proportion of recently public companies received patent demands either shortly before or after their IPO, with the majority of this activity originating from non-practicing entities. The effects are especially pronounced for information technology companies. Our results are yet another indication that patent assertion activity is driven by issues other than the merits of individual patent claims.
SSRN Electronic Journal, 2004
SSRN Electronic Journal, 2012
The patent regime is a quintessential notice system. Implicit in its design is the concept that o... more The patent regime is a quintessential notice system. Implicit in its design is the concept that one attempting to license a patent can identify those who hold the requisite rights and the territory that the patent holders claim. The modern system, however, bears little resemblance to the idealized form. In the last decade, an entire Hobbit’s world has been created under the foliage with little information available to inform the market. To address the problem, this Article suggests borrowing from doctrines related to disclosure in the realm of corporate securities, molding those doctrines to particular patent concerns. As a government grant, bestowed for constitutional purposes, a patent is an asset imbued with the public interest. Analogous to the trading of public securities, the trading of patent assets must be sufficiently transparent to ensure proper functioning of that trading market
Harvard Journal on Legislation, 2016
Thirty years ago, Congress ushered in a new and miraculous era in medicine, with the creation of ... more Thirty years ago, Congress ushered in a new and miraculous era in medicine, with the creation of the Hatch-Waxman system for approval of generic drugs. The progress, however, has not been without resistance. Our paper presents an overview of three generations of games pharmaceutical companies play to keep generics off the market and maintain monopoly pricing. In “Generation 1.0,” branded companies simply paid generics to delay entering the market, reaping billions of dollars of benefit. “Generation 2.0” involves paying for delay through multiple side deals that camouflage the value of the payment. Generation 2.0 also includes what we call “boy scout clauses” — agreements to behave honorably that actually mask anticompetitive collusion. The newest generation, however, moves from collusion to obstruction. Generation 3.0 uses administrative processes, regulatory schemes, and drug modifications to prevent generics from getting to market. Some of these schemes have now made the news as d...
Minnesota Law Review, 2018
Chapman Law Review, 2015
In ordinary circumstances, legal doctrines evolve at a glacial pace. As I have discussed in prior... more In ordinary circumstances, legal doctrines evolve at a glacial pace. As I have discussed in prior work, law is constantly driven to adapt to changing circumstances within existing frameworks, as tested and refined through various spheres of acceptance.1 This is not, however, a speedy process, and it can take years or even decades for issues on the ground to bubble up to the level of an administrative agency, let alone the Supreme Court or Congress.
ERPN: Labor Economics (Topic), 2016
The startup industry has matured rapidly over the past decade, becoming a subject of substantial ... more The startup industry has matured rapidly over the past decade, becoming a subject of substantial interest to the business community, academics, and the general public alike. Yet, the set of organizations that has sprouted up around the startup industry – dedicated to supporting the growth of fledgling ventures – has received less attention. Divided roughly into the three categories of co-working spaces, incubators, and accelerators, these support organizations all aim to “catalyze” the success of new startups. Thus, we have coined the term “Catalyst” to refer to them collectively. In the present study, we used a qualitative interview method to obtain a more comprehensive picture of how Catalysts have impacted the entrepreneurial ecosystem. In particular, we found a discrepancy between the narrative propagated by Catalyst personnel and the actual data when it came to the issue of gender. While respondents described a collaborative, open environment cultivated by Catalysts that should...
Traditional justifications for patents are all based on direct or indirect contribution to the cr... more Traditional justifications for patents are all based on direct or indirect contribution to the creation of new products. Patents serve the social interest if they provide not just invention, but innovation the world would not otherwise have. Non-practicing entities (“NPEs”) as well as product-producing companies can sometimes provide such innovation, either directly, through working the patent or transferring technology to others who do, or indirectly, when others copy the patented innovation. The available evidence suggests, however, that patent licensing demands and lawsuits from NPEs are normally not cases that involve any of these activities. Some scholars have argued that patents can be valuable even without technology transfer because the ability to exclude others from the market may drive commercialization that would not otherwise occur. We demonstrate that even if various commercialization theories can sometimes justify patent protection, they cannot justify most NPE lawsuit...
SSRN Electronic Journal, 2019
Trade secret has drifted from a quiet backwater doctrine to a pervasive force in intellectual pro... more Trade secret has drifted from a quiet backwater doctrine to a pervasive force in intellectual property. As always, the risk of distortion is great when a legal arena is developing and expanding rapidly. Nowhere do the theoretical tensions of trade secret law appear in such stark relief as in the modern pharmaceutical debates, where the heart of the theoretical question involves whether pricing is a proper subject for trade secrecy claims. We aim to bring trade secret into greater harmony with broad concepts that reach across all intellectual property regimes. As with other areas of intellectual property law, trade secret law is not a mere contest of private commercial interests. Rather, it embeds substantial dedication to the public interest, reflecting utilitarian balancing of key societal interests. In this context, we develop the concept of “thin” trade secret, looking to the analogous concepts in other intellectual property regimes. Such approaches embody the recogniztion that intellectual property rights are not solid monoliths, presenting an impenetrable wall through which no party but the rights holder may pass. Rather, they are brilliantly nimble and subtle systems, deftly threading their way among various societal goals. This article offers the potential of anchoring trade secret more firmly to its theoretical base, as well as bringing trade secret closer to the family of other intellectual property regimes. Although squabbling, chaotic, and somewhat dispersed, all members of this time-honored family can learn from each other, sharing their battle-worn wisdom with the newest, young upstart.
SSRN Electronic Journal, 2018
Health care spending rarely follows an ordinary, rational model. Yet even in that context, prescr... more Health care spending rarely follows an ordinary, rational model. Yet even in that context, prescription drug prices are rising at a puzzling rate. What is causing the phenomenon? Quite simply, incentives percolating throughout the prescription drug market push players toward higher prices. At the center lies the highly secretive and concentrated Pharmacy Benefit Manager (PBM) industry-middle players who negotiate between drug companies and health insurers by arranging for rebates and establishing coverage levels for patients. Contracts between drug companies and the middle players are closely guarded secrets. The PBM customers, including Medicare, private insurers, and even their auditors, generally are not permitted access to the terms. And the middle players are not alone; everyone is feeding at the trough. Markets, like gardens, grow best in the sun. They wither without information. Thus, one should not be surprised to see competitive distortions and suboptimal outcomes. Despite the extreme secrecy, details have begun to seep out-through case documents (including recent contract disputes among parties), government reports, reports to shareholders, and industry insider reports. Piecing together these sources, this Article presents a full picture of incentive structures in which higher-priced drugs receive favorable treatment, and patients are channeled towards more expensive medicines. In exchange for financial incentives structured in different ways to appeal to hospitals, insurers, doctors, and even patient advocacy groups, drug companies ensure that lower-priced substitutes cannot gain a foothold. It is a win-win for everyone, except of course for taxpayers and society. This Article also analyzes popular proposals that are unlikely to work and suggests approaches for aligning incentives.
Journal of Law and the Biosciences, 2018
SSRN Electronic Journal, 2016
for research assistance and proofreading. We wish to particularly thank John Gray, whose data ins... more for research assistance and proofreading. We wish to particularly thank John Gray, whose data insights played a critical role in the analysis, and Rosie Buchannan, who was instrumental in guiding us through the computer coding process. While the article was in progress, Evan Frondorf completed his position at the University of California Hastings College of the Law, began a full-time position at Stripe, and thus, had to bow out of the final stages. His contributions to the article were immeasurable. In accordance with the protocols outlined in the Harvard Journal of Law & Technology Open Letter on Ethical Norms, all of the data is publicly available for future use by other academics on SSRN.com.
SSRN Electronic Journal, 2016
To ensure that the TPP agreement works properly in practice with regard to patents and the govern... more To ensure that the TPP agreement works properly in practice with regard to patents and the governance of pharmaceuticals and semiconductors, strong mechanisms for enforcement and for rooting out system abuse are needed. To make this happen, regulators should learn from past mistakes of the U.S. patent system: the proliferation of non-practicing entities (NPEs), and strategic behavior that blocks or delays generic competition in the pharmaceutical industry. This Think Piece presents key findings of the author's research on the complexity of the U.S. litigation and regulatory frameworks that have provided fertile ground for strategic behavior that can have negative effects on innovation, and may distort the expected gains from trade for innovation.
Journal of Law and the Biosciences, 2015
Research universities have made enormous contributions to the field of medicine and the treatment... more Research universities have made enormous contributions to the field of medicine and the treatment of human disease. Alone or in collaboration with pharmaceutical companies, academic researchers have added to the store of knowledge that has led to numerous life science breakthroughs. A new chapter may be opening for academic researchers, however, that could lead to a darker tale. 'The mouse that trolled: the long and tortuous history of a gene mutation patent that became an expensive impediment to Alzheimer's research, by Bubela et al., chronicles one such tale.' The authors do an excellent job of bringing to life the twisting saga that engulfed numerous academic and non-profit Alzheimer's researchers over many years. The authors note that the story is an outlier, but sadly, that may not be the case. There are increasing signs that academic researchers and their institutions are being caught up in the rush for gold that is accompanying the proliferation of the non-practicing entity business model. As I have noted before, academic institutions have a dual role, as keepers of the academic flame and guardians of the public monies entrusted to them through state and federal research funding. The specter of taxpayer money being used, not to advance research and for the betterment of society, but as part of schemes to extract money from productive companies may not sit well with voters, and ultimately, with legislators. In that case, researchers and institutions themselves may have much to lose. 'The Mouse that Trolled: The Long and Tortuous History of A Gene Mutation Patent That Became an Expensive Impediment to Alzheimer's Research' describes an important case in which a gene mutation patent, owned by a non-practicing entity, was asserted against researchers studying the causes and effects of Alzheimer's disease. Non-practicing entities (NPEs) are parties whose core activity involves licensing or
Quantitative analysis of patent behavior is critical, as congressional and regulatory agencies co... more Quantitative analysis of patent behavior is critical, as congressional and regulatory agencies consider the impact of patent trolling on modern markets. Anecdotal evidence has suggested that "non-practicing entities," also known as "patent trolls," specifically target companies for lawsuits, licensing demands, or other monetization activity as firms approach or complete major funding events, such as their initial public offering (IPO). To test this narrative, we survey in-house legal staff at companies that have recently gone public about their exposure to patent demands surrounding their first round of venture capital funding and their IPO. The study is one of the first attempts at providing quantitative insight into this potential strategic behavior both in and out of the courtroom. We find evidence supporting extensive patent demand activity near IPOs, one of the most public and vulnerable periods of a company's development. A significant proportion of recently public companies received patent demands either shortly before or after their IPO, with the majority of this activity originating from non-practicing entities. The effects are especially pronounced for information technology companies. Our results are yet another indication that patent assertion activity is driven by issues other than the merits of individual patent claims.
SSRN Electronic Journal, 2004
SSRN Electronic Journal, 2012