Origins & Underlying Concepts of Patent Law

Origins & Underlying Concepts of Patent Law


Protection provided by the law for the inventions or discoveries of a person or entity or for the procedures developed by such person or entity.

Public Domain:
Intellectual property enters the public domain when it is no longer protected from use by others. Public domain intellectual property may be used freely by anyone. This operates for patented inventions just as it does for copyrighted material.

Legislative Branch:
The United States Constitution is divided into the “Articles.” Article I: Legislative Department, grants Congress the power to pass federal laws (as well as other powers).

Patents v. Copyrights & Trademarks

The law of patents provides significant, broad protection for a limited period of time in order to provide an incentive for invention. In this sense, it might be viewed as more similar to copyright than to trademark, although ultimately the goals and ideas driving patent law are quite different from those driving these other major areas of intellectual property law.

In copyrights, we seek to encourage creation of original works, and the protection begins at creation, whether or not the work is ever displayed to the public. Nonetheless, once a copyrighted work is displayed to the public there remain no secrets about the work – it is there for all to see/hear etc.. Similarly, as part of the patent process, the technology is made public for all to see.  The hurdle necessary to receive copyright protection, however, is quite low; almost any original work which does not infringe on the work of another is protected by copyright law. Receiving a patent, however, is hard work, and often involves a lengthy back-and-forth process between the applicant and the PTO. In addition, statutory copyright protection can be renewed, while the initial term of patent protection is the full extent of protection provided and cannot be renewed (except as provided in Title 35 §155); once a patent expires, the invention becomes part of the public domain.

With trademarks, we want to protect intellectual property, which in and of itself, has no value. Patented inventions have a value based on their uniqueness and utility. Marks, on the other hand, must come to be identified with goods or services before they have any value to their owners. One similarity with trademarks, however, is the fact that patents go through a screening process before being granted statutory protection. Trademarks, however, must pass a relatively low level of scrutiny in order to be placed on the primary register, while the patent process is significantly more complex. Also, while trademark protection (as with copyright) can exist even without formal registration, there is no such thing as patent protection absent a patent grant by the PTO. Similar to both copyrights and trademarks, however, patents law finds its true beginnings hundreds of years ago in good old England.

EXAMPLE (1): Adder draws a picture of his sister and files it away in his drawer. This drawing is protected by copyright law as soon as it is made. No filing, registration, or governmental approval is required, although it may be helpful in establishing ownership.

EXAMPLE (2): Bert draws a picture of Adder’s sister and uses it on labels for the soup he sells. Once the mark is used in commerce it receives trademark protection, even if it is never placed on the primary or supplemental register. Of course, registration has its benefits.

EXAMPLE (3): Charlie invents a machine which will draw pictures of people’s sisters. Unless he applies for a patent through the PTO, his invention will not be protected by patent law. Even then, the invention is not protected until a patent is actually granted. (Note that the invention might be protected in other ways, to be discussed in Chapter 8, but not by patent law.)

Origins of Patent Law & The Incentive Theory

Although the idea of patent law might be traced back as far as ancient Greece, the 17th century English Statute of Monopolies is one of the most important pieces of legislation in patent history. See Intellectual Property: Patents, Trademarks, and Copyright in a Nutshell, Miller & Davis, at 4 (West Group 2000) ("Nutshell"); Intellectual Property: The Law of Copyrights, Patents and Trademarks, Schechter & Thomas, 283-284 (West Group 2003) ("Hornbook")

Recall that copyright protection began with the protection granted to the Stationers’ Company (See Chapter 1), which ultimately gave the King power over the dissemination of information. The Statute of Monopolies, approximately 100 years later, was intended to do just the opposite; the statute was passed by Parliament in order to put an end to competition-stifling monopolies. The Statute did provide for limited monopolies, for a period of 14 years, by way of the issuance of “letters patent.”

Granting monopolies in certain cases, for a short term, is a way of balancing the general distaste for monopolies with the desire to provide incentives for innovation, which ultimately benefits society. Monopolies, by stifling competition, tend not to produce these same innovative benefits. Then again, unless inventors are able to benefit in some way from their efforts, they are unlikely to invent at all.

EXAMPLE (1): Deborah and Matthew are smart, creative, and hard-working souls. They decide to lock themselves   in a basement for several months (good thing they get along!) to focus on the development of their new invention, the Marlinator. They eventually perfect this machine, which distributes cookie dough from a tub onto cookie sheets automatically, thus preventing cookie-makers from eating the dough prior to cooking. When they emerge from the basement, Mr. Trigiant, a government representative, awaits them. He takes the blueprints and the prototype and uses them to make thousands of the machines which a government approved manufacturer sells at a profit, none of which is returned to the young inventors. After this experience, Deborah and Matthew are unlikely to put their skills to such use again.

EXAMPLE (2): In a slightly different scenario, when the inventors emerge from their basement, Mr. Trigiant is there to take the blueprints and make them available as a free download online. Manufacturers are then free to use the blueprints to produce their own Marlinators for public sale. Although the inventors here might benefit from their own sales of Marlinators, the same benefit is bestowed upon people who put no time, effort, or funding into the invention. Under this scheme most people are likely to wait for others to invent. Again, Deborah and Matthew are unlikely to make optimal use of their skills in the future.

Modern Patent Law

As the American Colonies were developed, patent law became common among the states, and was enough of an issue to warrant attention at the Constitutional Convention in 1787. The result of this attention was Article I, § 8 , Clause 8 of the Constitution, which grants Congress 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 (Note that this clause is also the basis for federal copyright law.)

Congress almost immediately passed patent legislation, and the Act of April 10, 1790 set us on the course on which we find ourselves today. In the 200-plus years since that first patent statute, there have been only four major revisions. The first two revisions, in 1836 and 1870, created the Patent Office and addressed the manner in which patents were obtained.

The effects of the major revision to the Patent Act in 1952, and the many minor revisions since that time, can be found in Title 35 of the United States Code (so Title 17 is Copyright, Title 15 Chapter 22 is Trademarks, and Title 35 is Patents). Some changes which might be not-so-minor include the Federal Courts Improvement Act of 1982, which created the Federal Circuit Court. This court was granted jurisdiction over a variety of cases, including appeals from patent disputes heard by federal district courts and appeals from decisions by the Patent and Trademark Office (“PTO”).  Since the Federal Circuit’s inception, it has consistently expanded the range of material which is patentable under Title 35, which has sparked a debate as to whether patent law has benefited or suffered as a result of this change. See Hornbook at 286.

More recently, in 1999, the American Inventors Protection Act was passed, and various international developments have also affected American patent law, including the TRIPS Agreement (The Agreement on Trade-Related Aspects of Intellectual Property Rights). Changes here include the term of protection under Title 35 §154(a)(2), which begins the day the patent is issued but ends 20 years after the date of application.

In 2011, Congress passed and President Obama signed into law the Leahy-Smith America Invents Act (AIA).  This law is by far the most significant change in United States patent laws since the Patent Act of 1952.  The major change in the AIA is changing the US from a “first to invent” system to a “first inventor to file” system (for applications filed on or after March 16, 2013).  In other words, priority (and hence who gets a patent) is no longer determined by invention date but rather by filing date.  The AIA also modified the prior art definitions that may bar patentability.

As with copyrights and trademarks, we will use a simplified form of reference to the federal laws. All sections discussed in these materials refer to sections found in Title 35 of the United States Code.