Legal Commentary

The Patent Law Analogy for Law Review Articles

By Eugene Volokh

Lisa Larrimore Ouellette (Written Description) builds on the patent law analogy for scholarship, originally developed by Prof. Stephen Carter:

To the above ?patent requirements? for articles, I would add the disclosure requirements of § 112. The article should ?contain a written description? of the idea in ?clear, concise, and exact terms.? Clear: avoid jargon! Concise: keep it short! Some law professors think ?word limits are for suckers,? but we rejected otherwise outstanding articles for being way too long, and the long articles we took were accepted in spite of, not because of, their length. Articles should also ?enable any person skilled in the art? to follow and use the idea, which raises the question of who the PHOSITA is for law review articles. For a generalist journal like the Yale Law Journal, I think a 2L who has taken a course in the relevant area should be able to at least follow the whole argument, even if faculty consults are needed to help fully appreciate it.

Finally, § 112 directs patentees to ?conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.? Academic authors help their readers (particularly non-specialist 2L articles editors) by being similarly honest about the scope of their claims. What is really new about the piece? What is the ?invention,? and what is ?prior art?? Too many articles falsely claim to revolutionize a field, and a few articles offer a truly novel insight without claiming it as their own.

The argument, of course, is not that good articles should actually get legally enforceable patents. (Nor is it that good articles should be written in the peculiar jargon used by many patent claims.) Rather, it?s that good scholarship should fit many of the patentability criteria ? it should be novel, nonobvious, and useful, and should describe its novel claim clearly, concisely, and distinctly.

By the way, just to make clear, the ?utility? requirement for law review articles doesn?t require utility to lawyers or judges; utility to other scholars in the field, or to other readers, is fine. If you have a historical observation about 14th-century English property law, that?s a perfectly legitimate focus for a law review article: Legal history is as worth studying as is history generally.

But your article should be useful to someone, and you should make it as useful as possible given your area of interest. Not every work needs to be useful to thousands of lawyers, but once you choose a topic, you should do what it takes to make your work useful to as many readers as possible ? so, for instance, if you?re making a historical claim that does have possible current applications, you should note those applications; if you?re making a doctrinal claim about some federal rule that also has state analogs, you should see if you can broaden your article to discuss those state analog as well; and so on.

Full post as published by The Volokh Conspiracy on February 21, 2011 (boomark / email).