This Article argues that the primary value society receives in the patentee social contract is not new inventions, but "unclaimed consideration." Unclaimed consideration takes many forms: additional innovations to improve on the patented invention, additional innovations created through efforts to design around the patented invention, innovations created by losers in the patent race, innovations informed by the unclaimed technical information in patents, commercialization of the patented invention or these other innovations, and the signals that patents give to investors regarding the value of a company or research lab. While there are many schools of patent scholarship engaged in spirited debate regarding how patents serve (or fail to serve) society this Article is the first to recognize and map the growing consensus among modem patent theories that unclaimed consideration is of significant value and importance to society Indeed the majority of claimed inventions are never commercialized and so granting the patent monopoly in most cases can only be justified by society receiving some other form of consideratton. Courts should therefore guard the boundaries ofpatent claims to avoid the perverse result of allowing the thicket of claimed inventions to stifle the development of unclaimed consideration. This Article demonstrates this point through a case study of Siemens Medical Solutions v Saint-Gobain Ceramics & Plastics, in which the United States Court of Appeals for the Federal Circuit decided that a product can infringe on a patent even after it is declared by the United States Patent and Trademark Office (USPTO) to be separately patentable and non-obvious over the asserted patent.I The majority of a sharply divided court thereby allowed a broad doctrine of equivalents to ensnare unclaimed consideration, relying on reasoning myopically wed to the belief that the sole way in . 2 which the patent laws promote scientific progress is by incentivizing claimed inventions. Courts instead should protect unclaimed consideration, which modem patent theory recognizes is the substantial return society ought to receive in return for the patent grant.
18 Tul. J. Tech. & Int. Prop. 1 (2015).