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Chapter IV. United States Patents

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Chapter IV. United States Patents Owning Ideas: Chapter 4 __________________________________________________________________________ Chapter IV. United States Patents On the eve of creating the American patent regime in 1790 the American patent grant practice was still rather similar on both the practical and the conceptual level to the traditional English framework. In fact, it was much closer to the English origin than its contemporaneous British counterpart. Colonial and state patents were individual privileges granted as a result of a case-specific policy-political decision by government in the name of the public good. Although this aspect was beginning to change late in the eighteenth century, patents were also conceived and practiced not as creating “ownership” in an intellectual-informational entity called an “invention;” but rather as commercial privileges to exercise a “trade.” By the end of the nineteenth century American patents were thoroughly different creatures. Patents became governed by a general universal statutory regime administered by a special bureaucracy and by the courts of law. Within this system patents stopped being special privileges and became general rights, that is to say, they became a set of standard entitlements enjoyed by any person, as a matter of right, upon fulfillment of uniform criteria. Just as significantly, patents also came to be conceived as owne rship of technologically innovative information rather than a commercial privilege to exercise a trade. This chapter surveys in detail the transformation of American patent law and practice along these two dimensions. It argues that the change was neither sudden nor instantaneous, but rather occurred as a gradual and long development that stretched for the entire century. As for the first dimension of transformation from privileges into general rights, the chapter describes three main developmental stages. The first was the short-lived 1790 regime that had many of the characteristics of the traditional privilege framework. During the registration years between 1793 and 1836 the question of the character of the patent entitlement was handled and shaped mainly by the courts of law, most importantly through their crafting and application of the utility requirement. There existed different strands of thought within the legal community during this period, but the general trend was toward gradually increasing dominance of a legal-conceptual framework that constructed patents as general universal rights. Finally, the period from 1836 to the end of the century was characterized by a new statutory examination regime and the continuance of case-law developments that together eradicated all traces of the former special privileges scheme. The second dimension of transformation involved no less dramatic changes. Patents were gradually reconceptualized as ownership of innovative 401 Owning Ideas: Chapter 4 __________________________________________________________________________ technolo gical information rather than commercial privileges to exercise a certain economic activity. There were two correlated aspects to this change. First, there appeared a concept of the patent object of ownership as an informational entity known as the “invention.” Complex doctrinal-semantic structures developed for defining and conceptualizing this entity, as well as for debating its proper boundaries and practical implications. In this conceptual scheme “inventions” were created by “inventors.” Accordingly the second aspect of the process was the development within patent doctrine and discourse of a unique, previously non-existent concept of the inventor. The combination of all of these ingredients constituted the modern conceptual scheme of patents as radically different than that of the late eighteenth century. A. From Patent Privileges to Patent Rights At the inception of the federal patent regime the traditional character of English patents as case-specific discretionary privileges was in a state of flux and ambiguity. In Britain formal legal doctrine still treated patents as privileges, while social practices and views began to shift toward general patent rights.1 The immediate American background was more unequivocal. Colonial and state patents were and firmly remained in 1789 discretionary privileges created by case-specific enactments.2 Despite the common opinion in modern scholarship that the constitutional clause, which established the federal power to grant patents, created the “first modern patent regime,”3 the clause contained no indication whatsoever that the familiar patterns of the patent grant were changed. There is no evidence that at this point anybody contemplated a break with existing practices or even gave any thought to the issue. The transformation of patents from privileges into the modern right framework did not occur at the constitutional moment, but rather through subsequent developments in legislation, case-law and administrative practices. It also did not happen overnight or abruptly. The first federal regime of 1790 introduced some significant developments but it remained 1 See supra chapter 1, sec. I(C)(4)(b). 2 Id., sec. II. 3 B. Zorina Khan & Kenneth L. Sokoloff, History Lessons: The Early Development of Intellectual Property Institutions in the United States, 15 J. ECON. PERSP. 233, 235 (2001). 402 Owning Ideas: Chapter 4 __________________________________________________________________________ deeply rooted in the privilege framework. The transition to patent rights would take place gradually over the ensuing decades. Only in the second half of the nineteenth century would the privilege framework be completely supplanted by the modern model of patents as universal rights. 1. The 1790 Patent Act: An Early Examination System? As was the case with copyright, the fact that in 1790 many did not understand the new federal grant power a break with familiar patterns of patents is most apparent in the period leading to the enactment of the first patent statute. During this period petitioners for federal patents and the first Congress did not show any sign of interpreting the constitutional clause as necessitating any deviation from existing practices. Thus, soon after Congress convened a trickle of individual patent petitions started to arrive. The trickle gradually grew into a flood. 4 Petitioners, some of which explicitly referred to the constitutional clause, acted in patterns familiar from the state and colonial practices. Indeed, some of the early petitioners, like John Fitch, were veterans of those practices. Patent petitions to Congress detailed specific public benefits offered by the relevant inventions and pleaded for private laws granting case-specific exclusive privileges as “encouragements” or rewards. Sometimes the petitions bundled the request for exclusive privileges with pleas for other “encouragements,” such as the commission of an official printer5 or the financing of a scientific expedition. 6 As far as petitioners were 4 For a survey of early petitions see: BRUCE W. BUGBEE, GENESIS OF AMERICAN PATENT AND COPYRIGHT LAW 131-141 (1967); Edward C., EDWARD C. WALTERSCHEID, TO PROMOTE THE PROGRESS OF SCIENCE AND USEFUL ARTS: AMERICAN PATENT LAW AND ADMINISTRATION, 1798-1836 81-87, 115-116 (1998). 5 This request was included in Francis Bailey’s petition for his printing device. See Bugbee, supra note 4, at 140. 6 In his April 1789 petition for a patent for items utilizing his method of determining longitude based on magnetic variation John Churchman also petitioned for funding of an expedition to Baffin’s Bay. See Proceedings in Congress during the Years 1789 and 1790, Relating to the First Patent and Copyright Laws, 22 J. PAT OFF. SOC’Y 243, 244 (1940) [hereinafter Proceedings]. This particular request invoked some concerns that “encouragements” of this sort were beyond the power granted to Congress by the constitutional clause. See: Walterscheid, supra note 4, at 77-79; X DOCUMENTARY HISTORY OF THE FIRST FEDERAL CONGRESS OF THE UNITED 403 Owning Ideas: Chapter 4 __________________________________________________________________________ concerned, it seems, the only effect of the constitutional clause was the transfer of the familiar grant practice to the federal level. Congress did not seem to think otherwise. It did not reject the individual privilege petitions, rather it sent them for consideration on the merit by a special committee and in at least one case a private enactment was almost passed.7 At some point, for reasons that remain somewhat obscure,8 the House dealing with the various petitions decided to respond not by individual statutes but rather by enacting a general patent law. 9 After a complex legislative process,10 including a joint patent-copyright bill in the early stages,11 Congress passed the 1790 Act to Promote the Progress of the Useful Arts.12 This, in itself, was an important development. For the first time the issuance of patents were governed by a general statutory regime. But did this new general regime change the traditional character of patents as case- specific discretionary privileges? Right from the start of the federal regime a few voices began to argue that, in the words of John Fitch, “patents are now obtained as a matter of STATES OF AMERICA, Debates in the House of Representatives 213, 214, 220 (L.G. De Pauw et al. eds. 1992). 7 This was the case of Francis Bailey’s petition. The House passed a private enactment granting him protection, but, as legislation of the general patent statute advanced ,Senate failed to act and
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