Cases and Materials on Patent Law (Adelman, Rader, Thomas, Wegner) Reading notes compiled by David J. Stein, Esq. Cases and Materials on Patent Law Adelman, Rader, Thomas, Wegner, 1st Edition Chapter One: Introduction §1.1 Casebook Overview • Overview: Patent system is basically a bargain: disclosure of technology to public in exchange for the right to exclude others from using it – useful because it encourages technological development in a distinctly American way; spread of this American system throughout the world is a testament to its success – Hank Morgan, English administrator: “the very first official thing I did… was to start a patent office; for I knew that a country without a patent office and good patent laws was just a crab, and couldn’t travel any way but sideways or backwards” – patent policies demonstrate societal goals and priorities, and some basic Constitutional principles minimally changed over 200+ years • Organization: Study focuses on current patent statute, enacted in 1952 (35 USC § 101 et seq) – since patent law is truly an international field, much of this text is comparative, and some is judgmental of differences between foreign and U.S. patent systems – also, historical development of patent law doctrines will be covered §1.2 Foundations of the United States patent system • U.S. Constitution: Article I, §8: Congress has 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” – balances the rights of inventors over their inventions against the right of the public for freedom from unhelpful monopolies: patents must be for useful arts for limited duration, and Congress can’t “remove knowledge from the public domain, or restrict free access to materials already available” (Graham v. John Deere (1966)) – it’s incorrect to refer to any but the most general patent principles as “constitutional,” since Constitution only granted Congress the power to establish a patent system but didn’t specify how; rather, almost all patent principles are “statutory,” but not “Constitutional” – some economists have suggested that in certain fields of technology, patents actually hinder progress; question is still open as to whether patents in these areas are actually “unconstitutional” • Patent Act of 1790: First patent act – 14-year patent term, only for inventions that were “sufficiently useful and important” to warrant grant of monopoly – required inventor to submit a detailed specification and maybe a model to the “Commissioners for the promotion of Useful Arts” (Secretary of State, Secretary of War, and Attorney General; two of the three must authorize patent) – early system was championed by Thomas Jefferson, as Secretary of State • Patent Act of 1793: This act introduced defenses to infringement: device was not invented by patentee, or device was described in a public work before patentee invented it –principles established by this patent act are still in use today Page 1 of 138 Cases and Materials on Patent Law (Adelman, Rader, Thomas, Wegner) Reading notes compiled by David J. Stein, Esq. • Patent Act of 1842: Congress created design patent (35 USC §171) – protects an aesthetically pleasing design of an article of manufacture that is not solely dictated by functionality • Novelty: is an important concept of patent law – embodied in 35 USC §102 – patent for non-novel invention not only fails to disclose new information, but actually takes that knowledge out of the public domain – thus, selling an unpatented invention acts as a complete bar to future patentability (Pennock v. Dialogue: patentee applied for patent for improvement to rubber hose after making selling over 13,000 feet of it – patent office refused patent, and Court affirmed) – the invention must be literally novel (invention is unpatentable “if its contours are so traced by the existing technology in the field that the ‘improvement is the work of the skillful mechanic, not that of the inventor’” (inner quote from Hotchkiss v. Greenwood)) and also non-obvious (35 USC §103: unpatentable if “obvious at the time the invention was made to a person of ordinary skill in the art” – novelty and obviousness requirements codify the concept that patent system shouldn’t unfairly intrude on public domain) • Concealment: If inventor can keep his invention secret, he can bypass the patent system and use the device exclusively for as long as he can keep it secret – the patent system encourages disclosure of the invention for the public good by offering a 20-year monopoly (35 USC §154), as long as he can show that his invention is novel, nonobvious, and useful, and describe the “best mode” of performing the invention (35 USC §112) §1.3 Origins of the Patent System • First patent systems: No one nation is solely responsible for having created patent system – the origins of the U.S patent system arose in other countries, particularly England and Venice – earliest patent roots began with Germany’s “water mine” system in 1300: use of land in the Alps for mining ore was granted exclusively to the person who first “invented” the ore site – eventually became enacted in “Constitutiones Juris Metallici” by King Wenceslaus II – as ore close to the surface became exhausted, miners had to develop water-drainage systems, and these developers were granted exclusive use of these galleries • Venetian patent system: 1323: Johannes Teuthonicus promised to build sufficient grain mills to serve all of Venice; government promised to pay him if he built his mills – this is the first known privilege, although it was granted not for innovation, but for the utility of the mill, so it’s not quite a patent – the minority view of the antecedents of the Venetian patent system: First known patent granted in 1409 by Germany to Henricus von Heslingen, for exclusive privilege to mine ore – this type of grant was later generalized as German statute, which Venetians later copied – Venetians then expanded concept into a general patent code in 1474, and then granted 120 patents based on this code – the majority view of the antecedents of the Venetian patent system: arose from Mediterranean guild system, which created a system for controlling its arts and crafts – inventors of improvements to the art had to get a license from the guild to infringe inventions on which improvement was based – this system was later codified into general patent system by Venetian Act of 1474, based on successful patent grant in Florence in 1421 – this system of protection was more arbitrary than modern patent systems – also, its purpose was slightly different than ours: patents granted not for new inventions, but Page 2 of 138 Cases and Materials on Patent Law (Adelman, Rader, Thomas, Wegner) Reading notes compiled by David J. Stein, Esq. for exclusive use of existing inventions from foreign states, in order to facilitate import of technology into Venice – e.g.: John the German brought printing techniques to Venice in exchange for an exclusive right to print in Venice • French patent system: Descendant of Venetian system – evolved as a registration system: no examination of application on its merits occurs before patent is granted – instead, all such issues are resolved by judiciary in enforcement cases – however, examination did occasionally occur via a crude system of referrals to the Royal Academy of Science, which certified inventions it found useful – also, French used a first-to-file system of priority • Early English system: English crown used patent grants to grant exclusive licenses in certain areas (e.g., grant of monopoly to create playing cards) – however, judiciary and Parliament took this out of the Queen’s control with the Statute of Monopolies: monopolies were limited to 14 years, and only for domestically unknown inventions – by limiting monopolies in such a way, the statute affirmatively created a patent system and promoted the import of foreign technologies – although British system would evolve separately from American system, England later signed into the European Patent Convention (EPC), which is modeled closely on the American patent system • American colonial patents: First American patent granted in Massachusetts in 1641 to Samuel Winslow for manufacture of salt – many colonies offered rewards (not necessarily monopolies) for inventions – first American patent statute: Connecticut statute of 1672, forbidding monopolies except limited ones granted in exchange for new inventions – later South Carolina statute fixed term at 14 years – Maryland required all residents who built or used a spinning machine to pay Robert Lemmon a fixed sum, and later did the same for Oliver Evans’s grain elevator (these aren’t patents, more like a license system) – Evans later federally patented the elevator, and also obtained the first patent term extension by special act of Congress – Supreme Court later struck down a constitutional challenge to this congressional act (Evans v. Jordan), and then heard the first major patent case on this same invention (Evans v. Eaton) – finally, Pennsylvania allowed British patent holders to register their inventions here and then enforce them, and created a patent publication for this purpose • Constitution and early patent laws: During constitutional conventions, James Madison and Charles Pickney proposed congressional power to encourage innovation by either granting monopolies or subsidizing inventors (Pickney is credited with the proposal, and he served on