Patent Groundwork

• Author: David R. Gerk - John M. Fleming
• Pages: 7-64

Next came the Patent laws. These began in England in 1624; and,

in this country, with the adoption of our constitution. Before then,

any man might instantly use what another had invented; so that

the inventor had no special advantage from his own invention. The

patent system changed this; secured to the inventor, for a limited

time, the exclusive use of his invention; and thereby added the fuel

of interest to the fire of genius, in the discovery and production of

new and useful things.

—Abraham Lincoln,1

16th President of the United States,

inventor of U.S. Pat. No. 6,469 (1849) for a “manner

of buoying vessels.”

I. HISTORY

Perhaps the most useful background information to keep in mind when

analyzing patents, patent law, and the patent system is the purpose and

motivation behind the patent system. While virtually all countries have a

Chapter 1

P A R T 1

Patent Groundwork

7

1. Abraham Lincoln, second lecture on discoveries and inventions, de-

livered to the Phi Alpha Society of Illinois College at Jacksonville, Ill., Feb.

11, 1859, as cited by The Collected Works of Abraham Lincoln, ed. Roy P.

Basler, vol. 3, p. 357. Abraham Lincoln is the only U.S. President to be

named as an inventor on a U.S. patent.

Part 1

8Section 2, Part 1

patent system, the prevailing purposes and motivations of each system

are varied.

At the heart of the U.S. patent system is the desire to promote progress

and development in areas we today loosely refer to as science and tech-

nology. Encouragement of continued progress and development of sci-

ence and technology is set forth in the United States Constitution in

Article I, Section 8, Clause 8, and this single clause has served as the

backbone for the U.S. Patent System for several hundred years. The

drafting of Article I, Section 8, Clause 8 was not the initiation of the

concept of a patent system, and one certainly cannot claim that the Found-

ing Fathers invented a patent system in the broad sense.

The term patent originates from the Latin phrase patere, which means

“to lie open.” Patere is a shortened form of the phrase lettre patere, or

“open letter or document for some authority.”2 While the origins of the

concept of a patent system are claimed by a variety of nations, U.S.

patent law arises from a multicultural heritage that may not be properly

assigned to a single source. The Venetians are among the first to have

patent laws. Their laws provided a dual right that included (1) the exclu-

sionary right that later became the sole “right to exclude” of U.S. patent

law, as well as (2) a privilege to operate the patented invention free from

interference by the guild’s monopoly in the particular area of technol-

ogy.3 The concepts that underlie our current U.S. patent system are also

apparent in varying degree in early English and Continental systems that

developed in the wake of the Venetian system.4 While American patent

law extends back at least to the Act of 1790, patent legislation in the

individual states stretches back as far as 1641 to Massachusetts.5 Early

American patent laws in at least nine of the original thirteen colonies

granted rewards to inventors, but not all of them were necessarily “pat-

ents” in the sense of providing rights to exclude others.6

As patent law and its application attempt to keep up with the pace

of innovation, the U.S. patent system is sometimes criticized. In par-

ticular, when patents are issued for inventions deemed by the public not

2. COLLINS ENGLISH DICTIONARY—COMPLETE & UNABRIDGED 10TH EDITION, Wm.

Collins Sons & Co. Ltd. (2009).

3. MARTIN J. ADELMAN, RANDALL R. RADER, JOHN R. THOMAS, HAROLD C.

WAGNER, CASES AND MATERIALS ON PATENT LAW, American Casebook Series, West

Group, St, Paul, Minn. (1998), at p. 9.

4. Id. at pp. 10–11.

5. Id.

6. Id.

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Patent Groundwork

to be sufficiently innovative or to be overly broad in their coverage

such that they appear to stifle further innovation, the patent system can

get called into question. However, the historical purpose and motiva-

tion of most patent systems, including the U.S. patent system, are clearly

the promotion of progress and innovation in the “useful arts” (science

and technology).

A. Purpose and Motivation

The majority of patent practitioners prosecute, litigate, opine, and advise

on the application of the patent laws and regulations in relation to facts

of extreme interest to their clients. To effectively advocate or opine re-

garding scenarios of interests, it is beneficial to understand the purpose

and motivation behind the laws, statutes, and regulations. Equity and

justice may be a pivotal distinction between two scenarios and two dis-

tinct outcomes in similar or even related factual scenarios. Practitioners

may effectively use an understanding of both the broad purpose(s) of the

patent system and the more narrowly focused purpose(s) of individual

laws and regulations to advocate on behalf of a client, to predict a likely

outcome before a judicial or quasi-judicial official, and sometimes even

to invoke a change in the application of a law or regulation itself through

either the legislative process or judicial review.

While patent systems across the globe continue to become increas-

ingly similar and related under the provisions of various intellectual prop-

erty and trade treaties, individuality continues to exist among countries

in relation to their individual patent systems. Regardless, the impetus

behind intellectual property rights often can be understood as promoting

an incentive theory.

Similar to the U.S. Constitution’s explicit authorization of Congress

“to promote progress,”7 patent systems (and intellectual property systems

generally) are structured to encourage behavior or actions. Manifestation

of an incentive theory in U.S. patent law is the quid pro quo of the patent

system. In exchange for you, Mr./Ms. Inventor, publicly describing the

fully developed version (best mode) of your invention in a manner suffi-

cient to enable one skilled in the art (perhaps another engineer, computer

scientist, chemist, or the like) to re-create your invention, the govern-

ment will grant you a right to exclude others from making, using, sell-

ing, offering for sale, or importing your claimed invention for a limited

7. U.S. CONST. art. I, §8, cl. 8.