Cotter on Wrongful Patent Assertion and Disproportionality

I have a new paper up on SSRN, titled Wrongfulness as Disproportionality: Toward a Law-and-Economics Approach to Wrongful Patent Assertion, in Proportionality in Intellectual Property Law (Christopher Heath & Anselm Kamperman Sanders eds., Wolters Kluwer, forthcoming)).  Here is a link, and here is the abstract:

Nations throughout the world employ a variety of legal doctrines, including antitrust law, unfair competition law, and the abuse of rights doctrine, among others, to impose consequences for what can be characterized as the wrongful enforcement or assertion of patent rights.  The present essay—to be published in an edited volume of papers presented at the 20th IEEM Intellectual Property Seminar, held in Macau S.A.R. in November 2024 and titled “Proportionality in Intellectual Property Law”—explores how the concept of proportionality might help to inform what constitutes the wrongful assertion of patent rights, with examples drawn from my pending (and more comprehensive) book project, titled Wrongful Patent Assertion:  A Comparative Law and Economics Analysis, under contract with Oxford University Press.  My thesis here is that the various doctrines that constrain the enforcement or threatened enforcement of patent rights can be viewed as efforts to ensure that the effect of the enforcement or threatened enforcement is proportionate to some normative goal.  More specifically, I argue that a necessary (but not, in every context, sufficient) condition for characterizing an assertion of patent rights as wrongful is that the assertion enables the patent owner to obtain benefits or inflict harms that are disproportionate in view of (1) the ex ante or ex post incremental economic value of the patent to the accused infringer; (2) the ex ante probabilistic term of protection of the patent; or (3) the likelihood that immunizing an assertion of the type at issue would undermine the purposes of the patent system or other substantial social interests.  Conceptualizing proportionality in the above sense might provide some guidance in helping to ensure that the legal regulation of patent assertion aligns with broader policy objectives and is consistent with the public interest.

Comments welcome.