Chapter §8.01 Originality Requirement

• Jurisdiction: United States

§8.01 Originality Requirement

U.S. patents are granted to those who invent or discover a patentable invention.¹ The Constitution speaks of inventors when providing that Congress is empowered

to promote the Progress of . . . useful Arts by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries. ²

The first U.S. patent statute echoed the Constitution in providing that patents were to be granted to persons who had "invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used. . . ."³ The Act of 1790 further provided that patents would be repealed "if it shall appear that the patentee was not the first and true inventor or discoverer. . . ."⁴

The grant of patents to persons who truly had invented something was not a new notion to the Founders; for example, England in 1624 exempted from its prohibition on monopolies the grant of patents for "the sole working or making of any manner of new manufactures within this realm to the true and first inventor and inventors of such manufactures."⁵

To be an inventor under U.S. patent law, a person must satisfy an originality requirement. Originality in the patent law context means that the person named as an inventor did not merely copy the invention from another. The patented invention must originate with the inventor. An inventor cannot merely learn about another's invention and thereafter claim it as his own when seeking a patent.⁶ In this regard, patent law parallels copyright law in requiring originality.⁷

Judge Giles Rich famously explained that obtaining a patent is analogous to successfully passing through three "doors"—the substantive criteria of utility, novelty, and nonobviousness. But the mandate of originality is a threshold requirement that must be met before the applicant even begins to pass through the first door:

The person approaching that door [the first of the three doors, 35 U.S.C. §101] is an inventor, whether his invention is patentable or not. There is always an inventor; being an inventor might be regarded as a preliminary legal requirement, for if he has not invented something, if he comes with something he knows was invented by someone else, he has no right even to approach the door. Thus, section 101 begins with the words 'Whoever invents or discovers,' and since 1790 the patent statutes have always said substantially that. ⁸

As discussed infra, qualifying as an inventor means that...