Patent Acts

Shubha Ghosh

Imagine inventing a gizmo that people have only dreamed of. You probably would want to keep others from stealing your invention. Patent law is the area of law that allows you to protect your invention from theft.

EARLY VIEWS ABOUT PATENTS

Ever since the founding of the American Republic, patent law has been a source of debate. In England patents were granted by the crown to reward inventors for their creations. The patent gave the inventor a monopoly in the form of an exclusive right to practice the invention and keep others from using it. Many of our founding fathers worried about the granting of such monopolies, especially ones that had been associated with the King of England.

Thomas Jefferson, for example, was highly suspicious of a patent system. His views were famously expressed in a letter to Isaac McPherson, a Baltimore inventor, in 1813: "That ideas should freely spread from one to another ... for the moral and mutual instruction of man ... seems to have been peculiarly and benevolently designed by nature when she made them ... expansible over all space, ... incapable of confinement or exclusive appropriation. Inventions ... cannot, in nature, be a subject of property." In another letter, Jefferson was quite blunt in stating that it would be unwise for Congress to meddle in "matters of invention." Jefferson, however, was not at the Constitutional Convention, whereas James Madison and James Iredell were. They had the final word on patents. Madison asserted that "the utility [of Congress' power to grant patent[s] will scarcely be questioned." Referring to George Mason, who was critical of too much congressional power except for the granting of patents, James Iredell, the first North Carolinian to serve on the United States Supreme Court wrote: "He is a gentleman of too much taste and knowledge himself to wish to have our government established upon such principles of barbarism as to be able to afford no encouragement to genius."

CONSTITUTIONAL POWER

Congress' ability to encourage genius was made possible by Article I, section 8, clause 8 of the United States Constitution, which gave to Congress the power "to promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Pursuant to this power, Congress passed the first Patent Act in 1790, with amendments in 1793, 1836, 1839, 1870, 1897, 1903, 1928, and 1939, and with a complete revision in 1952. The 1952 Patent Act is the current law of patents, and it in turn has been amended several times, with the most recent amendments in 1999.

THE VARIOUS PATENT ACTS

The 1790 act created a system for patent review and grant that was administered by the secretary of state, the secretary of war, and the attorney general. Under this system, an invention would be submitted to these three officials for review. If two out of three determined that the invention was "sufficiently useful and important," a patent would be granted to the inventor. The patent gave the inventor the exclusive right to make, use, and sell the invention for fourteen years from the time the patent was granted.

In 1793 the system was changed radically to a registration system. Under this system, an inventor would register his invention with the secretary of state, who would instruct the attorney general to grant a patent for fourteen years to the inventor. Remember that the first secretary of state was Thomas Jefferson. It is ironic that the first patent act was administered largely by a man who, being an inventive genius in his own right, not only never sought a patent but also was critical of a patent system.

The 1836 Patent Act which created the Patent Office as part of the Department of State. The 1870 act moved the Office to the Department of Interior. The Patent Office was renamed the United States Patent and Trademark Office and moved to its current home in the Department of Commerce as a result of changes to the law in the 1940s.

PATENTS TODAY

To obtain a patent today, an inventor must go through a review process by a patent examiner, an employee of the United States Patent and Trademark Office (USPTO). The process, which takes on average two years, involves a determination that the invention is new and useful. Once the patent is granted, a description of the invention is published for everyone to read and the inventor is given an exclusive right to make, use, sell, and offer to sell the invention. If someone does make, use, sell, or offer to sell the invention without the patent owner's permission, the patent owner can sue for infringement and obtain money damages from the infringer.

Several controversies riddle contemporary patent law. Criticisms about the granting of improper patents have been raised against the office. Newspaper accounts document patents given for seemingly frivolous items. In 1998 the online retailer Amazon.com brought suit against Barnesandnoble.com for allegedly infringing on its patent for the "One-Click Shopping Method," by which customers can easily and quickly submit their order information by clicking the mouse once in the appropriate area of Amazon's Web site. The lawsuit remained in the courts until 2001, when it was determined that the patent granted to Amazon was invalid.

The One-Click patent has been cited as an example of a patent that wastes economic resources and is used only to hurt one's competitors in the marketplace. Reform proposals include expanding the USPTO to allow for more thorough patent review, disallowing patents for certain inventions altogether, and even returning to a registration system for patents as it existed in 1790 because the USPTO arguably has not been able to carry out its mission. Although it is unlikely that we will return to a pure registration system, more moderate reforms are certainly on the horizon.

INTERNATIONAL ISSUES

The major challenge to the U.S. patent system comes from international law. The biggest international questions are who is the inventor and what can be patented. The United States is unique in the world for having a first-to-invent system. Under U.S. law the first person to actually think of and make use of a new invention is entitled to the patent. In the rest of the world, the patent goes to whoever is the first to file his or her invention. This difference has been a source of contention, but it is unlikely that the United States or the rest of the world will change.

WHAT CAN BE PATENTED?

The question of what can be patented has been a difficult problem from the beginning of the United States patent system. One problem is the patent of importation, a source of controversy originating with the first Patent Act. A patent of importation is a patent granted to an invention that is taken (imported) from another country and brought into the United States. The person seeking the patent may not actually have invented the subject of the patent but may simply have discovered it. Thomas Jefferson strongly opposed patents of importation, whereas Alexander Hamilton felt they were an important way for United States citizens to obtain and disseminate inventions from other countries.

United States law allows patents of importation in very narrow ways through the legal definition of a "new" invention. Under United States law, an invention is new if it is not known or used in the United States or written about in a published form in the United States or anywhere else in the world. Notice that this definition of "new" allows a patent to be granted for something that is known outside the United States but not written about outside the United States.

The debate over patents of importation continues today with patents for drugs and therapeutic techniques based on traditional medicines. Some United States pharmaceutical companies travel to developing countries, learn traditional uses of plants and herbs, and return to the United States with this knowledge for patenting purposes. Developing countries complain that this is theft of knowledge. The U.S. companies argue that they are entitled to the patent because the use of the plants and herbs is new, as the word is defined by the law, to the United States. Some developing countries have been successful in challenging United States patents on traditional medicines by showing that the knowledge had been written about and published in ancient scriptures and texts. The result of challenging the patent successfully is that the United States companies lose the right to practice the medicine exclusively. However, because much traditional knowledge exists in oral cultures, this strategy cannot be always be used to challenge the patents.

BIOTECHNOLOGY

The most controversial issue in patent law is raised by biotechnology and the patenting of life forms. In 1980, in Diamond v. Chakravarty, the United States Supreme Court ruled that a patent can be granted on a genetically modified bacteria. The USPTO denied the patent because of longstanding policy that natural phenomena, such as plants and animals, are not patentable. The Supreme Court ruled that a genetically modified organism is not a natural phenomenon but is manmade, and that patents can be granted to "anything under the sun that is manmade." In 1988 a patent was granted on an oncomouse, a mouse genetically modified to carry human cancer cells. The rest of the world has been hesitant to expand patent protection to biotechnology. For example, Canada did not recognize a patent on the oncomouse until 2000, and many European and developing countries deny patents on biotechnological products for moral reasons. As advances in genetics and research in cloning continue, the question of how far patent protection reaches will become ever more important.

Despite Jefferson's warning, Congress has meddled with the "matters of invention" in enacting the Patent Acts. Following Madison and Iredell, the Patent Acts have served as an encouragement of genius that has expanded from the seemingly trivial (One-Click Shopping) to the very edges of our biological and natural existence (the oncomouse). This seemingly technical area of the law has provided and will continue to provide an important stage for international and domestic debates about the conduct of life and life itself.

See also: Copyright Act of 1790; Copyright Act of 1976.

BIBLIOGRAPHY

Koch, Adrienne, and William Peden, eds. The Life and Selected Writing of Thomas Jefferson. New York: Modern Library, 1993.

"Patently Problematic." The Economist. September 14–20, 2002, pp. 75–76.

Ryan, Michael P. Knowledge Diplomacy: Global Competition and the Politics of Intellectual Property. Washington, DC: Brookings Institution Press, 1998.

Slater, Dashka. "huMouse." Legal Affairs (November/December 2002): 21–28.

Walterscheid, Edward C. To Promote the Progress of Useful Arts: American Patent Law and Administration, 1787–1838. Littleton, CO: F. B. Rothman, 1998.

Warshofsky, Fred. The Patent Wars: The Battle to Own the World's Technology. New York: John Wiley and Sons, 1994.

INTERNET RESOURCE

United States Patent and Trademark Office. <http://www.uspto.gov>.

Current Patent Act

According to the current Patent Act (35 U.S.C. § 101): "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor."