Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
the year 1602, the case of Darcy v. Allin, 11 Coke 846 (King’s Bench 1602), came before the court of England, called the “King’s Bench,” challenging the right of the Crown to grant monopolies to items, in this case, playing cards, which the citizens of London claimed a free right to trade in. Apparently, in this case, it was decided that the monopoly was not valid.
In another case before the English courts in 1614 which involved the weaving art, entitled The Cloth Workers of Ipswich, Godbolt, tit. 351, p. 252, 254 (1614), it was held that the king could not create a monopoly that would take away free trade, which is the birthright of every subject. However, the court held that, if one brings a new invention or a new trade into the kingdom, or has made “a new discovery, in such cases, the king, of his grace and favor, may grant by charter that only he the inventor shall use such a trade or traffic for a certain time, because at first the people of the kingdom are ignorant and do not have the knowledge or use of the new invention or trade.” The court went on to hold that, when the patent right is expired, the king cannot make a new grant, for when the trade has become common and others have bound apprentices to the same trade, there is no reason that such use should be forbidden.
About 10 years after the Cloth Workers decision, the English Statute of Monopolies was passed in 1623 during the reign of James I. This law invalidated the prior grants of patent rights given by the Crown, and declared that “any patent granted shall be maintained for a fourteen‐year period or under, if the patents were directed to new manufactures within the realm, to the true and first inventor and inventors of such manufactures, which others, at the time of making such Letters Patent and grant, shall not use so as also they be not contrary to the law.” The key point of this statute was that the granting of an exclusive right by way of Letters Patent was taken away as a prerogative of the Crown, and given as an inherent right to any inventor, and at that time, one who brought new inventions into the realm, as a right that could not be deprived by the Crown. This subtle but important difference is embodied in all of the patent laws of the world today. Note also that the Statue of Monopolies, as did the early Venetian statute, referred to “new” manufactures within the realm, setting up the universally accepted requirement of novelty as a prerequisite to the grant of patent protection.
Although the patent custom originated in other European countries prior to adoption in Britain, the patent custom began to flourish in Britain during the reign of Elizabeth I. But it was not until the Statute of Monopolies was enacted in 1623 that the custom was given a statutory foothold in England. This law arose from a particular exemption to the general ban on monopolies, and Letters Patent were granted for a limited term of 14 years. This statutory language, together with the few common law judicial opinions that interpreted patent law in England, provided the legal basis for the English patent law that existed in 1787 when the American Constitution was being drafted.
However, there was a virtual dearth of reported common law cases in England relating to patents. For example, during the seventeenth century, there were only three reported common law cases on patents, and two of those had occurred prior to 1623. By the time of the American Constitution, there was considerable uncertainty in England as to the nature of what the patent law was because of the lack of court decisions interpreting the statutory provision. That uncertainty was compounded in the United States.
The framers of the U.S. Constitution also based their provision regarding patents and copyrights on the patent custom that was practiced during the colonial period, and later by the states right after the Revolutionary War.
The early English patent custom arose out of a desire to create new industry in the realm, primarily by importation and only secondarily by what would now be termed invention by entrepreneurs. As a consequence, novelty, which is the sine qua non for patentability throughout the world today, was predicated on whether the subject matter of the grant was presently being worked in England. It mattered not whether the art or manufacture was known and practiced elsewhere or even whether it had previously been practiced or worked in England. Originality was only peripherally involved, and the inventive subject matter was considered new if it had not been worked in England within recent memory. The seminal belief was that the Statute of Monopolies of 1623 did not change this.
3.1.3 The U.S. Constitution and the Development of the Present U.S. Patent Examination System
3.1.3.1 Origin and Early Development of Patent Law in the United States
The development of the U.S. patent law extends from 1787 at the Constitutional Convention, to the enactment of the Patent Act of 1836, which is the foundation for the modern patent system in use today. During this time frame, the U.S. system changed from a patent custom to an established patent system.
Prior to the Constitutional Convention of 1787, many of the American colonies and states of the Confederation preceding the U.S. Constitution had enacted legislation forbidding monopolies, except as for such new inventions that were profitable to the colony, and those grants would only be for a short time. Massachusetts had such a law in 1641, and Connecticut in 1672. By the time of the Declaration of Independence in 1776, many colonies had been issuing patents, and they continued to do so between the time of the Declaration of Independence and the Constitutional Convention in 1787. The granting of patents by individual states even continued to some degree after the adoption of the Federal Constitution in 1789 and the passage of the first patent act of 1790. However, the granting of individual state patents eventually ceased.
The members of the Constitutional Convention were aware of the activities of inventors and authors, and of the efforts to aid them in the individual state legislatures and in the Continental Congress that preceded the Constitutional Convention. James Madison and Charles Pinckney, the latter from South Carolina, each submitted proposed clauses to the Constitutional Convention in August of 1787, which stated as follows:
“The Congress shall have 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.”
The Constitutional Convention, which gave rise to the U.S. Constitution in effect today, took place in hot and humid Philadelphia from May until September 1787. Little is written on how the patent and copyright clause was placed into the Constitution. What is known is that, after discussing and debating the more important issues in the Constitution, on August 31, 1787, the delegates to the convention agreed to refer portions of the Constitution that had been postponed up to that time to a committee made up of a member from each state. Since Rhode Island had never been asked to attend the constitutional convention, and the New York delegation had left the convention in the middle to go back to their farming, this became the Committee of Eleven. On September 5, 1787, the Committee of Eleven reported out five unresolved matters pertaining to the powers to be granted to Congress, and the fifth of these became the Intellectual Property Clause of the U.S. Constitution, “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.” On September 12, 1787, a committee of the convention reported a draft of the entire Constitution that left the Intellectual Property Clause intact. The final draft of the Constitution was approved on September 17, 1787, including the Intellectual Property Clause.
Apparently, the provision was uncontroversial, as there is no record of any debate on this matter. James Madison, writing in Federalist No. 43, stated that an author’s copyright has long been adjudged in Great Britain to be a right held by the author at common law. The right to useful inventions seems with equal reason to belong to inventors. Thus, this statement, by one of the leading founders of our nation, supports the right of inventors to exclusive rights in their inventions, as distinguished from prerogative writs granted at will and fiat by the government.
It should be noted that an inventor does not have an exclusive right to his invention at common law, as that statement is strictly read. In 1850, the U.S. Supreme Court, in the case of Gayler et al. v. Wilder, 51 U.S. (10 How.) 477 (1850), held that the inventor of a new and useful improvement has no exclusive right to the invention until he obtains a patent grant. This right is created by the patent,