Chapter §1.06 Sources of U.S. Patent Law

• Jurisdiction: United States

§1.06 Sources of U.S. Patent Law

The three primary sources of U.S. patent law are (1) the U.S. Constitution, (2) the federal patent law found in U.S. statutes and regulations, and (3) federal judicial decisions interpreting and applying these Constitutional, statutory, and regulatory provisions.¹²⁶

[A] The Constitution

Congressional power to establish a patent system derives from the Intellectual Property (IP) Clause of the U.S. Constitution. The IP Clause appears in the Constitution's Article I, Section 8 statement of Congress's enumerated powers, which also include the power to collect taxes, provide for the national defense, and the like. In more detailed terms than the other clauses of Section 8, the IP Clause provides that Congress shall have the power

to promote the Progress of Science and useful Arts by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. ¹²⁷

Note that the IP Clause (sometimes also referred to as the "Progress Clause") does not mandate the creation of patent and copyright systems; the words "patent" and "copyright" do not appear in the clause. However, patent and copyright systems long pre-dated the U.S. Constitution and were well known to the Framers.¹²⁸ Acting under the power granted to them by the IP clause, Congress enacted the first U.S. federal patent and copyright statutes in 1790.

Scholars have observed that the IP clause has an interesting parallel structure; it is really two grants of congressional power expressed as one—the patent power as well as the copyright power.¹²⁹ At the time the IP Clause was ratified in 1787, the word "Science" had a much broader connotation than it does today. "Science" then meant knowledge and learning in general, the type of learning that was documented in books, maps, and the like. Thus, the word "Science" in the IP Clause is viewed as referring to copyrightable subject matter. The portion of the IP Clause pertaining to copyright provides that to promote the progress of "Science," "Authors" shall have a time-limited exclusive right in their "Writings."

In contrast, the phrase "useful Arts" in the IP Clause is understood as referring to patentable subject matter. "Useful Arts" at the time of ratification was understood to mean "technologies" or "industries" (as opposed to the fine arts).¹³⁰ Thus, the portion of the IP Clause pertaining to patents provides that to promote the progress of the "useful Arts," "Inventors" shall have a time-limited exclusive right in their "Discoveries."

Although the IP Clause is a grant of congressional power, the Supreme Court also has interpreted it as a limitation on Congress's authority to carry out the constitutional goal of "promot[ing] the progress of Science and Useful Arts." Congress may not establish a legal system in which patents can be attained for technology that is already in the public domain, or that is a merely obvious extension thereof. As expressed by the Court in the landmark patent decision, Graham v. John Deere Co.:¹³¹

The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. Moreover, Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available. Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must "promote the Progress of . . . useful Arts." ¹³²

[B] Federal Statutes and Regulations

Pursuant to the Constitutional grant, the U.S. Congress enacted the first federal patent statute in 1790.¹³³ During the first three years after this enactment, patent applications were substantively examined by comparison to earlier-developed technology (i.e., the prior art) to determine whether the subject matter in question was new, useful, and "sufficiently . . . important" to merit patenting.¹³⁴ The administrative burden of this on-the-merits examination quickly proved too great, however, and with the Patent Act of 1793, the U.S. patent system became a pro forma "registration" system without substantive examination against the prior art. In time, the registration system came under severe criticism for permitting the grant of many invalid patents. By means of the Patent Act of 1836, Congress reverted to the substantive examination system that the United States has today.

Congress repeatedly amended the patent statutes thereafter, but the three most important revisions occurred in 1870, 1952, and 2011. The Patent Act of 1870 required that patents include claims, single-sentence definitions of the scope of the patent owner's right to exclude others from her invention.¹³⁵ The 1870 Act helped transition the U.S. patent system from a broad, "central" claiming style to a more precise system of "peripheral" claiming.¹³⁶

The Patent Act of 1952, in amended form, is the statute that continues to govern U.S. patent law today. Co-authored by then-attorney and later judge Giles S. Rich and Pasquale J. Federico, a USPTO official,¹³⁷ the Patent Act of 1952 included the first statutory requirement for nonobviousness, codified in 35 U.S.C. §103.¹³⁸...