Patent

Patent Authorized by Article I, section 8, of the Constitution “to promote the progress of science and useful arts” by granting exclusive rights to authors and inventors “for limited times,” Congress made patents broadly available to “whosoever invents or discovers any new and useful process, machine, manufacture or composition of matter.” In practice, however, the Supreme Court in Graham v. John Deere Co. (1966) denied Congress the power “to remove existent knowledge from the public domain, or to restrict free access to materials already available” (p. 6), while the Court's decisions in the recent past so limited the enforcement of patent rights that Justice Robert Jackson stated in a dissent his belief that “the only patent that is valid is one this Court hasn't been able to get its hands on” (Jungersen v. Ostby, 1949). In this way, echoes of the nineteenth‐century controversy concerning the social utility of a patent system influenced the Supreme Court's thinking well into the twentieth century, particularly its belief that the useful arts prospered best when free market competition was unhindered by legal monopolies.8

Beginning in the 1970s, however, both the executive and legislative branches reevaluated the role of the nation's intellectual property system in a drive for greater international competitiveness and for an improved balance of trade. In the spirit of reform, Congress conferred exclusive jurisdiction over patent appeals upon a newly created and specialized tribunal, the Court of Appeals for the Federal Circuit, which has revitalized the domestic patent law since its inception in 1982. Responding to this more protectionist ethos, the Supreme Court handed down several ground breaking decisions in the 1980s that appeared to have expanded patent protection. Nevertheless, unresolved judicial tensions between the Court's traditional free‐market bias and current protectionist sentiments continue to haunt every major branch of patent jurisprudence, and the extent to which the Supreme Court has made a lasting commitment to a stronger patent system remains uncertain.

Most of the rules judicially crafted during the nineteenth century derived from the Supreme Court's characterization of patents as the product of a social bargain in which inventors were rewarded for the benefit of society at large. The Court obliged patentees to distinguish their inventions from the prior art and to limit their claims accordingly. It required full disclosure of how to make and use the patented inventions. Prior public use or knowledge usually destroyed the element of novelty.

In the 1980s, the Court broadened its reading of the statute to permit the patenting of biogenetically engineered organisms (Diamond v. Chakrabarty, 1980) and of computer program‐related inventions insofar as they partook of processes or mechanical devices otherwise eligible for protection (Diamond v. Diehr, 1981). In these decisions, the Court leaned toward greater emphasis on the role of patents in stimulating technological innovation.

Although the patent statute of 1793 had already set down the substantive prerequisites of novelty and utility, the Supreme Court derived a third requirement of “invention” (i.e., inventiveness) from the language of the Constitution. It was this controversial standard of invention, first articulated in Hotchkiss v. Greenwood (1850), that had enabled the Supreme Court to invalidate patents in twenty significant cases between 1930 and 1950, a period in which the Court upheld only five patents. Typically excluded were so‐called combination patents that incorporated previously known elements in a new way. In contrast, “pioneer” inventions, such as Bell's telephone or Edison's electric lamp, received liberal treatment under the prevailing reward philosophy even in the face of doubtful evidence.

In 1952, Congress codified the nonobviousness test of invention, but it was not until the Supreme Court's landmark decision in Graham v. John Deere Co. that this codified test fully matured. According to Graham, courts evaluating nonobviousness were obliged to determine the scope and content of the prior art, the extent to which the candidate invention differed from the prior art, and the level of ordinary skill in the trade. The invention became patentable if it would not have been obvious to one reasonably skilled in the art at the time it was discovered. The Graham opinion also permitted these “subjective” indicia of nonobviousness to be corroborated by a fourth set of subtests, known as the secondary considerations, which look to such allegedly “objective” factors as commercial success, copying, long‐felt but unsolved needs, failure of others, and acquiescence of the trade. The Graham test did not appreciably lessen the difficulties of applying the standard of invention until the Court of Appeals for the Federal Circuit, beginning in 1982, made the secondary considerations a crucial subtest in evaluating the nonobviousness of issued patents in all relevant cases. As a result, the likelihood of judicial invalidation has declined precipitously in recent years, as regards both utility patents and design patents, without provoking a negative response from the Supreme Court.

The patentee's right to make, use, or sell the patented invention is broad and domestic patent owners cannot be compelled to practice or license their patents. On the whole, the Supreme Court has tended to construe the scope of issued patents strictly, in keeping with its historical preference for free competition over private rewards and incentives. Despite this conservative record, the Supreme Court accepted and developed the doctrine of equivalents, which limits the ability of a competitor to take the substance of a patented invention while deviating from the literal language of the claims (Winans v. Denmead, 1853; Graver Tank & Mfg. Co. v. Linde Air Products Co., 1950).

The restrictive view of patents espoused by the Supreme Court throughout much of the twentieth century logically inclined it to take a dim view of state action impinging on the patent system because that system “is one in which uniform federal standards are carefully used to promote invention while at the same time preserving free competition” (Sears, Roebuck & Co. v. Stiffel Co., 1964; Compco Corp. v. Day‐Brite Lighting, Inc., 1964). In 1989, the Supreme Court reaffirmed this view in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., a unanimous opinion that struck down state statutes that encroached on the design patent law by prohibiting competitors from duplicating certain unpatented boat designs. This decision appeared to invest a competitor's right to reverse engineer unpatented products with constitutional underpinnings.

See also Capitalism.

Bibliography

Donald Chisum , Patents: A Treatise on the Law of Patentability, Validity and Infringement (1990).
Edmund Kitch , Graham v. John Deere Co.: New Standards for Patents, Supreme Court Review (1966): 293–316.
Philip Kurland, ed., The Supreme Court and Patents and Monopolies (1975).
J. H. Reichman , Design Protection and the New Technologies: The United States Experience in a Transnational Perspective, University of Baltimore Law Review 19 (Winter 1990): 6–153.

J. H. Riechman