University of Tasmania
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A basic economic case for reordering the patent market with gain-based remedies

posted on 2023-05-27, 12:02 authored by Abdussalam, MA
There is a sizeable disparity between the advantages enabled by patent law remedies and the underlying rationale for the patent system. Furnishing solutions to the problem of patent opportunism, which is a product of this gap, is the singular purpose of this thesis. The nexus between patent remedies and the utilitarian social welfare goals of the patent system appears to have been understudied in major patent law jurisdictions, including Australia, Canada and the United Kingdom (UK). In these jurisdictions, focus has been placed more on managing the problems of the patent system attributable to patent law remedies, rather than addressing, head on, the nature of those remedies. This is not, however, the case in the United States of America (USA) where judges, government agencies and academics have expressed ongoing concerns over the tendency of patent law remedies to impact negatively on the social welfare goals of the patent system. Notwithstanding these articulated concerns, the fundamental reason for this negative tendency has been poorly identified, and recommendations to reform patent law remedies in response to it have been equally inadequate. Ted Sichelman's work titled 'Purging Patents of Private Law Remedies' ((2014) 92 Texas Law Review 528) and that of David Opderbeck titled 'Patent Damages and the Shape of Patent Law' ((2009) 89 Boston University Law Review 127) are a timely and valuable response to this problem. Both Sichelman and Opderbeck rightly blame patent opportunism on the ideological dissonance between the purpose of the patent system and the regime of legal remedies applied towards patent infringement. However, both scholars differ in their postulations of solutions to the problem. Sichelman has not yet put forward workable recommendations on how to replace the current remedies (particularly monetary remedies) prevailing in most patent law jurisdictions, with a view to reflecting the utilitarian nature of patents. Opderbeck suggests solutions that are workable but improvable. This thesis adds to the works of Sichelman and Opderbeck by postulating gain-based remedies‚ÄövÑvÆchiefly disgorgement and restitutionary reasonable royalties‚ÄövÑvÆ as the most pertinent species of monetary remedies suitable to furthering the utilitarian nature and objectives of patent entitlements. It is the submission of this thesis that these species of remedies will be effectual in stemming the tide of patent opportunism by changing the incentives of economic entities within the patent market, and correcting problems that emanate from the patent market's illiquidity.


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Copyright 2016 the author Chapter 6 appears to be, in part, the equivalent of a pre-copyedited, author-produced version of an article accepted for publication in Journal of intellectual property law and practice (following peer review. The version of record, Abdussalam, M. 2016, On the superiority of the incremental costing approach in IP account of profits, Journal of intellectual property law & practice, 11(6), 435‚Äö-444, available online at:

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