Author:Burk, Dan L.

Patents are intended as a means of promoting innovation through private pecuniary incentives. But the patent system has for some time been on a collision course with guarantees of expressive freedom. Surprisingly, no one has ever subjected patent doctrine to a close First Amendment analysis. In this paper I show, first, that patents clearly affect expressive freedom; second, that patents are subject to legal scrutiny for their effect on expressive rights; and third, that patents are not excused from scrutiny by virtue of constituting property rights or by virtue of private discretion. After examining the patent system in terms of familiar First Amendment metrics such as strict scrutiny, narrow tailoring, governmental interest, and least restrictive means, I conclude that even though many patents may survive First Amendment analysis, many will not.

Patents, which function as government-sanctioned monopolies, invade core First Amendment rights when they are allowed to obstruct the essential channels of scientific, economic, and political discourse. ([double dagger]) INTRODUCTION

Patents are temporary grants of exclusive rights, authorized by Congress and issued by a federal agency, intended as a means of promoting innovation through private pecuniary incentives. (1) Unlike the parallel system of copyright, which is expressly intended to cover expressive works, the patent system is supposedly directed toward the functional, technical arts. (2) Consequently, there has historically been little worry that the grant of patent exclusivity might conflict with the constitutional protection of speech and the press governed by the First Amendment. (3)

But the patent system has for some time been on a collision course with guarantees of expressive freedom. Some eighteen years ago I first identified a set of First Amendment difficulties posed by the patent system. (4) Patenting of the "liberal arts" (5) had brought technical function into an alarming degree of contact with protected expression. These issues became manifest in large measure due to the growing practice of software patenting, combined with an increasingly expansive approach to patent eligible subject matter. (6) But some version of these manifest quandaries had lain latent within the patent system since its inception, and the rise of software patents had merely made clear that patent law lacked the kind of doctrinal exceptions that had avoided a First Amendment collision in the related law of copyright. (7)

Since I addressed the question nearly twenty years ago, little has been said on the topic, (8) despite a long twilight struggle by the Supreme Court (9) and many commentators (10) to define the proper limits of patentable subject matter. (11) The problem has been raised by amici in key cases addressing the scope of patentable subject matter, with little judicial response. (12) But the discussion has been reinvigorated by the concurrence added by Judge Haldane Mayer of the United States Court of Appeals for the Federal Circuit to the recent decision in Intellectual Ventures I v. Symantec. (13) Judge Mayer opined that software is a form of speech, that software patents serve to frustrate protected expression, and that proper adherence to the Supreme Court's patentable subject matter test from Alice Corp. v. CLS Bank Int'l (14) would serve First Amendment interests by purging the patent system of objectionable software patents, and perhaps all software patents.

Reactions to Judge Mayer's analysis were sharp, vehement, and in some cases intemperate. (15) A common reaction has been to claim that Mayer misunderstands or misreads the Supreme Court's Alice decision; these reactions tend to adopt a fairly literalist reading of Alice, noting that it nowhere explicitly excludes software from patentable subject matter, while cabining any broader implications of the decision. (16) The most intemperate and least sensible responses, worded rather as if Mayer had in some fashion betrayed some fundamental principle of human decency, have asserted that Mayer's comments reveal him to be unfit for office, and call for him to resign or recuse himself from software cases. (17) Such comments to some extent reflect unhappiness among the practicing bar with Mayer's broad, and arguably overbroad, understanding of the implications of the Alice subject matter test. But the reaction also includes attitudes ranging from skeptical to incredulous that patent law could have any serious association with expressive rights or the First Amendment. (18)

A great deal has already been written and will, alas, likely continue to be written about the software subject matter questions implicated in Judge Mayer's concurrence. (19) Such questions are not the focus of this paper. Here I will instead concentrate on a series of questions or objections raised by his observations on patents and the First Amendment. Rather than recapitulate arguments made in my previous work, I will focus on questions raised by the responses to Judge Mayer. These range from questions that are fairly general to questions that are subject matter specific: Can technology be subjected to the jurisprudence of free speech? Is the patent system constitutionally immune from First Amendment scrutiny? Aren't patents content neutral? Are property or other exclusive rights immune from First Amendment scrutiny? Is there any state action in the enforcement of a patent? What might be the proper level of constitutional scrutiny for a patent?

Both Judge Mayer's concurrence and the vehement responses demonstrate that there is much at stake in answering these questions: taking the First Amendment implications of patent law seriously could throw into doubt the constitutional permissibility of thousands of existing patents. Despite these radical implications of addressing my series of First Amendment questions, my doctrinal goals here are relatively moderate. I show, first, that patents clearly affect expressive freedom, and may compromise interests that are protected under the First Amendment. Problematic patents certainly include software patents, but many other patents are implicated as well. Second, I will show that patents are subject to legal scrutiny for their effect on expressive rights, and, third, that patents are not excused from scrutiny by virtue of constituting property rights or by virtue of private discretion. I survey well-established First Amendment doctrines and standards of review to offer some thoughts on the proper type and level of scrutiny for different types of patents. Having mapped the terrain, I conclude with some observations and challenges for future research.


    The potential for First Amendment conflict with the exclusive rights conveyed by patents should be immediately apparent. The First Amendment provides that "Congress shall make no law ... abridging the freedom of speech, or of the press." (20) Clearly the patent statute is a law, enacted by Congress, and in a number of instances it abridges freedom of speech, and perhaps freedom of the press. Of course, the plain text of the amendment has never been read to mean exactly what it says; Congress makes a plethora of laws regarding communication and expression that have been upheld as permissible under the First Amendment: true threats against the president are prohibited; (21) information about nuclear weapons is classified and restricted; (22) advice promoting tax evasion is outlawed. (23) But when Congress does make such laws, the First Amendment is implicated and constitutional scrutiny ensues.

    Patent law should be no different, but this perhaps requires some illustration. It is relatively simple to identify issued patents that involve speech or communication, and that are potentially problematic from a First Amendment standpoint. The exercise of identifying such patents is valuable not only in establishing the legitimacy of First Amendment analysis for patenting, but in delineating the contours of such analysis. Clearly not all patent grants implicate expressive freedom, and those that do so will implicate free speech to different extents. Some patents will be entirely permissible when put through the proper First Amendment tests; others may be impermissible; others will be either permissible or impermissible under different circumstances or for different reasons.

    1. Problematic Patents

      We begin with what is clearly a core First Amendment technology. Some of the reactions to Judge Mayer's concurrence point out, entirely correctly, that if the First Amendment is implicated by patenting, then exclusive rights in inventions such as a printing press would potentially be problematic. (24) The core observation itself seems correct and rather straightforward; printing presses are machines, which fall within the statutory patentable subject matter categories of machines, processes, compositions of matter, and articles of manufacture. (25) If a given printing press is novel and non- obvious over previous printing presses, it could be the subject of a patent.

      The point of those offering this observation seems to be an accompanying implication that, since printing presses are of course patent eligible, and are not problematic, patents cannot implicate freedom of speech. But both the premises and the logic of this argument are faulty. Quite to the contrary, rather than dispelling the First Amendment issue, this observation underscores the dimensions of the First Amendment problem. Take for example the device displayed in Figure 1, one of the drawings from U.S. patent number 5,199, issued for an improved type of printing press in 1847. The claimed invention was at the time of issue judged to be a new, non-obvious, and useful device, eligible for a patent. But it is also a mechanism or conduit for communicative speech.

      Recall that the First Amendment restricts Congress from making laws restricting freedom of speech or of the...

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