Exclusive rights for original artistic and intellectual properties granted for limited times to their authors and inventors.

The issuance of patents in the United States is mandated in Article I, section 8, of the U.S. Constitution, which gives Congress the right “to promote Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors, the exclusive Right to their respective Writings and Discoveries.” Out of this brief statement came the entire specialized field of patent law. Cases involving patent infringement often reach the Supreme Court for adjudication. In the United States, a patent on an invention is usually issued for a period of twenty years. A corresponding protection for works of literature or artistic works, such as songs, is provided through copyrights for longer periods.

Among the types of discoveries that cannot be patented are the discovery of a law of nature or a scientific principle. For example, Sir Isaac Newton could not have been granted a patent for discovering and articulating the laws of gravity, nor could John Bardeen have been granted a patent for his discovery of the principle of superconductivity.

The Supreme Court and Patents

Traditionally, the Court took conservative stands in patent cases. This attitude is attributable to the United States’ dedication to free enterprise, which, in the eyes of many, the issuance of patents discourages. There is a nagging concern among many citizens and jurists that strong patent protection might promote the formation of legal monopolies.

Past Court decisions relating to patents contained so many limitations that Justice Robert H. Jackson frustratedly wrote in his dissent in Jungersen v. Ostby and Barton Co.[case]Jungersen v. Ostby and Barton Co.[Jungersen v. Ostby and Barton Co.] (1949), “the only patent that is valid is one this Court has not been able to get its hands on.” If this statement seems exaggerated, one need only recall that in the two decades from 1930 to 1950, the Court nullified patents in twenty cases while upholding them in five.

Through the years, the Court, being consistent in its traditional preference for free competition and an open market over a system of rewards, incentives, and protections, viewed with rigor patents already issued. This conservative approach, however, has been moderated in the Court’s doctrine of equivalents, under which competitors may not take the substance of patented inventions as their own merely by modifying the literal language of their claims, as was demonstrated clearly in the Court’s decisions in both Winans v. Denmead[case]Winans v. Denmead[Winans v. Denmead] (1853) and, nearly a century later, Graver Tank and Manufacturing Co. v. Linde Air Products Co.[case]Graver Tank and Manufacturing Co. v. Linde Air Products Co.[Graver Tank and Manufacturing Co. v. Linde Air Products Co.] (1950).

The Court’s attitude toward patents was clearly expressed in the opinion rendered in Graham v. John Deere Co.[case]Graham v. John Deere Co.[Graham v. John Deere Co.] (1966), which clearly states that Congress cannot remove “existent knowledge from the public domain, or restrict free access to materials already available.” The great concern of the Court in regard to patent law is that in granting patents, the government may restrict and discourage the further development of intellectual properties by protecting ideas that many justices feel belong in the public domain.

Early Measures

The Patent Statute of 1793 spelled out, in terms of novelty and utility, the requirements for obtaining patents. In Hotchkiss v. Greenwood[case]Hotchkiss v. Greenwood[Hotchkiss v. Greenwood] (1850), the Court, by interpreting Article I, section 8, of the Constitution, added the requirement of inventiveness. It is this addition that enabled the Court to nullify twenty patents between 1930 and 1950. The Court rulings clearly discouraged combination patents, that is, patents for inventions that simply arranged previously known implements in new ways. In contrast to combination patents are those awarded to wholly unique inventions such as Alexander Graham Bell’s telephone or Thomas Edison’s phonograph. Such pioneering inventions as these received favored treatment by the Court when cases involving them came before it.

Although the first patents in America were granted by the Massachusetts Bay Colony in 1641 for the manufacture of salt, it was not until 1836 that a central administrative office was established to check patent applications for validity and adherence to patent law. In that year, the United States Patent and Trademark OfficePatent and Trademark Office (PTO), an arm of the Department of Commerce, was established.

After 1836, every patent application submitted in the United States was checked by the PTO to make sure that it included the three requisite parts for any such application. First, it must contain a specification that gives a general description of the invention. Second, it must present its claims, providing more detailed information than the specification, detailing in precise terms how the invention operates or is assembled. Third, each application must contain detailed drawings that illustrate the invention.

PTO personnel, called patent examiners, review applications to determine whether they meet all the requirements for the granting of a patent. It is the responsibility of applicants to verify the originality of the inventions for which they are seeking patent protection. During the course of considering the application, patent examiners usually ask applicants to answer specific questions relating to their inventions. The law is clear in its demand that applicants withhold no information from patent examiners that might determine the outcome, positive or negative, of the application. Any deception on the applicants’ parts is punishable as a felony. The examination process may take place over a considerable period of time. Applicants, frequently accompanied by patent attorneys, sometimes meet several times with patent examiners. Proving that the invention for which a patent is being sought is truly original, that it passes the nonobviousness test, and that a patent granted for it will not infringe on other patents can become an involved, convoluted, and expensive process.

The Nonobviousness Test

Congress in 1952 formalized the nonobviousness test of inventions. In Graham v. John Deere Co.[case]Graham v. John Deere Co.[Graham v. John Deere Co.], the Court made it mandatory to consider the scope and content of prior art in the field. Under this statute, a patent could be granted to an invention if it was not obvious to people familiar with the general sort of invention at the time of its discovery.

To this test was added a set of subtests, called secondary considerations. These subtests considered such matters as commercial success, the invention’s ability to satisfy long-felt but hitherto unsolved needs, the failure of similar inventions, copying, and the acquiescence of the trade. It was not until 1982 that the Court of Appeals for the Federal Circuit employed these secondary considerations as a requisite subtest for assessing the nonobviousness of issued patents where such a test applied. This change resulted in a decrease in the number of invalidations of patents by the lower courts, to which the Supreme Court rarely responded negatively.

Changing Attitudes

Patent law is a subspecialty of the broader legal field designated intellectual property. During the 1970’s, forced by the need for the United States to become more competitive internationally and to improve the nation’s balance of trade, both the executive and legislative branches of government encouraged a reconsideration of attitudes toward intellectual property.

Congress in 1982 employed the prerogative granted it in Article III of the U.S. Constitution to establish a new federal court with exclusive jurisdiction over appeals of patent decisions. This Court of Appeals of the Federal Circuit, which convenes in Washington, D.C., breathed new life into the area of patent law. During the 1980’s, possibly responding to the protectionist attitude evident in the legislative and executive branches of government, the Supreme Court delivered several decisions favorable to patent protection, although a lingering free-market mind-set remained among a number of justices, as reflected in their dissents.

With the onset of the computer and biological engineering, the scope of patent law broadened considerably, and patent decisions had to be made in arcane areas that were technologically far beyond the comprehension of most of the justices. This, of course, had always been the case to some extent. Supreme Court justices are not experts in the technologies in which people seek patents. The Court has always depended on the services of specialists employed specifically as consultants to provide technological guidance to those who ultimately have to arrive at legal decisions relating to extremely complex technologies.

Early in the 1980’s, the Court, in Diamond v. Chakrabarty[case]Diamond v. Chakrabarty[Diamond v. Chakrabarty] (1980), liberalized its interpretation of the patent statute to permit patents to be granted for biogenetically engineered organisms. During the following year, it heard Diamond v. Diehr[case]Diamond v. Diehr[Diamond v. Diehr] (1981) and permitted the patenting of inventions related to computer programs, arguing that they employed processes or mechanical devices that could meet the requirements for patent protection.

Disputes may occur if two or more people apply to patent the same invention at about the same time. As research advances and the dissemination of research findings become readily available on the Internet, this sort of dispute is increasingly likely to arise. In such circumstances, the person who first made the invention will be granted the patent, which seems an obvious solution. Which inventor was first, however, is not always easy to determine.

When such situations occur, the PTO, through a proceeding called “interference,” decides who will receive the patent. Losing applicants may appeal the PTO’s decision in the Court of Appeals for the Federal Circuit. U.S. policy runs counter to that of most other countries, where the patent goes to the first person to file an application although that person may not be the first person to make the invention.

Patents granted in the United States apply only within the jurisdiction in which they are issued. If inventors wish to protect their inventions in other countries, they must apply for patent protection in each country in which they seek such protection. Although most developed countries have enacted patent laws, these laws vary greatly from country to country so that applications approved for protection in one country may legitimately be rejected by patent officials in other countries.

Further Reading

  • A brief and lucid explanation of patent law is found in Thomas A. Penn and Ramon D. Foltz’s Understanding Patents and Other Protection for Intellectual Property (Cleveland, Ohio: Penn Institute, 1990). This is a good starting point for the uninitiated, as is Patent, Trademark, and Copyright Laws (Washington, D.C.: Bureau of National Affairs, 1991), edited by Jeffrey M. Samuels, a comprehensive presentation with essays written by acknowledged experts in the field of patent and copyright law. Considering the depth of its coverage, this book is quite readable and should not bewilder those new to the field. Robert L. Harmon’s Patents and the Federal Circuit (Washington, D.C.: Bureau of National Affairs, 1991) is especially strong in its discussion of the appeals process available to those who disagree with the decisions of the PTO. Irwin M. Aisenberg in Patent Law Precedent (Boston: Little, 1991) fully discusses various Court decisions affecting patent law, offering excellent coverage of the test cases and the landmark decisions involved. Ronald B. Hildreth’s Patent Law: A Practitioner’s Guide (New York: Practising Law Institute, 1988) is directed at the general reader and at those who are themselves interested in obtaining patents.

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