View metadata, citation and similar papers at core.ac.uk brought to you by CORE provided by Southern Methodist University PATENT REFORM, THEN AND NOW David O. Taylor* 2019 MICH. ST. L. REV. 431 ABSTRACT One of the most significant legislative reforms of the U.S. patent system occurred in 1952. Prior to 1952, the patent system found itself languishing, undermined by a confusing nonstatutory patentability requirement called the “invention” requirement. In 1952, Congress and the President eliminated it. Today we find ourselves in a situation surprisingly similar to the one prior to 1952. The patent system again finds itself languishing, undermined by a new confusing nonstatutory patentability requirement, this one called the “inventive concept” requirement. Today, just like in 1952, there are ongoing calls for Congress and the President to eliminate it. Given the striking parallels between these two eras—and the success of legislative reform efforts in 1952—I have studied the forces behind the reform of 1952: the problems with the law of the day, the people and groups of people involved in reform efforts, and the circumstances and strategies they used to their advantage to create change. This study has led me to identify various factors that led to the success of those efforts in 1952. In parallel with the study of the history behind the Patent Act of 1952, I highlight the problems with the law today, the people and groups of people involved today in reform efforts, and the circumstances and strategies they might use to their advantage to create change. Moreover, drawing from the factors that led to the success of legislative reform efforts in 1952, I analyze how those same factors may contribute to the success of current legislative reform efforts—or hinder it. TABLE OF CONTENTS ABSTRACT ...................................................................................... 431 INTRODUCTION ............................................................................... 433 * Associate Professor of Law and Co-Director of the Tsai Center for Law, Science and Innovation, SMU Dedman School of Law; J.D., 2003, Harvard Law School; B.S., 1999, Texas A&M University. Special thanks to Rachel, Caroline, Emily, and Joshua Taylor. The views and any errors in this Article are my own. 432 Michigan State Law Review 2019 I. PATENT REFORM—THEN ......................................................... 435 A. Clear Need for Legislative Intervention .......................... 435 1. Long-Felt Need for Improvement .............................. 436 2. Problems Emanating from the Supreme Court ......... 437 a. The Invention Requirement ................................ 437 b. The Patent Misuse Doctrine ................................ 439 3. Lower Court and Patent Office Confusion ................ 440 4. Identification of the Need for Reform ........................ 445 5. Sense of Urgency ....................................................... 447 B. Involvement of the Patent Bar ......................................... 449 1. Leadership ................................................................. 450 a. Henry Ashton ...................................................... 450 b. P.J. Federico........................................................ 451 c. Giles S. Rich ....................................................... 453 d. Paul Rose ............................................................ 456 e. Others .................................................................. 457 2. Scholarly Research .................................................... 458 3. Early Reform Proposals ............................................ 460 4. Organization and Consolidation ............................... 461 C. Good Drafting .................................................................. 463 1. Hard Work ................................................................. 463 2. Good Judgment ......................................................... 464 3. Clarity ....................................................................... 464 4. Flexibility and Willingness to Improve ..................... 465 5. Adoption of Prior Judicial Standard ......................... 467 6. Adoption of an Objective Standard ........................... 469 D. Legislative Stewardship ................................................... 470 1. Avoiding Political Intervention ................................. 471 2. Engaging in Political Intervention ............................ 472 E. Article and Speaking Campaign ...................................... 474 1. Federico, Zinn, and Harris ....................................... 475 2. Rich ........................................................................... 476 F. Judicial Recognition ........................................................ 479 1. Learned Hand ............................................................ 479 2. Graham v. John Deere Co. ........................................ 481 3. Anderson’s-Black Rock and Sakraida ...................... 483 G. Fortuity ............................................................................ 486 1. Timing of Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp. .................................. 486 2. Coincidence ............................................................... 487 3. Charles Reed ............................................................. 487 II. PATENT REFORM—NOW.......................................................... 497 Patent Reform, Then and Now 433 A. Clear Need for Legislative Intervention .......................... 498 B. Involvement of Patent Bar ............................................... 503 C. Good Drafting, Legislative Stewardship, Campaigning, Judicial Recognition, and Fortuity ........... 505 CONCLUSION .................................................................................. 509 INTRODUCTION One of the most significant legislative reforms of the U.S. patent system occurred in 1952. Prior to 1952, the patent system found itself languishing, undermined by a confusing nonstatutory “invention” requirement.1 In 1952, Congress and the President eliminated it, replacing it with what ultimately became known as the “nonobviousness” requirement.2 In 1966, the Supreme Court accepted what Congress and the President had done and applied the nonobviousness requirement rather than the invention requirement in a series of cases, providing the inventive community with a clear test for patentability.3 Today we find ourselves in a situation surprisingly similar to the one prior to 1952. The patent system again finds itself languishing, undermined by a new confusing nonstatutory “inventive concept” 1. See, e.g., NAT’L PATENT PLANNING COMM’N, THE AMERICAN PATENT SYSTEM, H.R. DOC. NO. 78-239, at 5 (1943) (“The most serious weakness in the present patent system is the lack of a uniform test or standard for determining whether the particular contribution of an inventor merits the award of the patent grant . Novelty alone is not sufficient, nor is utility, nor is the final accomplishment. There must also be present some mysterious ingredient connoted in the term ‘invented’ . The difficulty is that there is no accepted uniform standard among [the] several tribunals which can be applied in the same or similar cases . No other feature of our law is more destructive to the purpose of the patent system than this existing uncertainty as to the validity of a patent . The present confusion threatens the usefulness of the whole patent system and calls for an immediate and effective remedy.”). 2. See Patent Act of 1952, Pub. L. No. 82-593, 66 Stat. 792, 798 (codified as amended at 35 U.S.C. § 103 (2012)) (“A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.”). 3. See generally Graham v. John Deere Co., 383 U.S. 1, 3 (1966) (describing nonobviousness as a requirement of patentability); United States v. Adams, 383 U.S. 39, 48 (1966) (providing that nonobviousness is one of three tests of patentability that must be satisfied in a valid patent). 434 Michigan State Law Review 2019 requirement.4 Today, just like in 1952, there are ongoing calls for Congress and the President to eliminate it.5 Even if they do so, however, it is not certain whether the Supreme Court will accept the elimination of the inventive concept requirement and apply a new statutory requirement in its place, let alone whether a new statutory requirement will provide the inventive community with a clear test for patentability. Given the striking parallels between these two eras—and the success of legislative reform efforts in 1952—I have sought to understand exactly how the reform occurred in 1952, and therefore how similar reform might occur today. This effort required studying the forces behind the reform of 1952: the problems with the law of the day, the people and groups of people involved in reform efforts, and the circumstances and strategies they used to their advantage to create change. This study has led me to identify various factors that led to the success of those efforts in 1952, success in terms of the enactment of the