Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
infringer before the patent is issued. The Court went on to hold that this exclusive right did not exist at common law, but was created by the Act of Congress in enacting the patent statutes. Again, in 1913, the U.S. Supreme Court, in the case of Bawer & Cie. v. O’Donnell, 229 U.S. 1 (1913), stated that the right to make, use, and sell an invented article is not derived from the patent law. The patent law secures to the inventor the exclusive right to make, use, and sell the patented item, and to prevent others from exercising like privileges without the consent of the patentee. The Court stated that the patent law was passed for the purpose of encouraging useful inventions and promoting new and useful improvements by the stimulation of exclusive rights awarded to inventive genius, and was intended to secure to the public, after the lapse of the exclusive privileges granted, the full benefit of such inventions and improvements.
3.1.3.2 Initial U.S. Patent Laws
The first patent law established by the Congress of the United States was the Patent Act of 1790, which created an examination system that was way ahead of its time. This examination system and law lasted only 3 years, and was repealed by the Patent Act of 1793, which, in turn, established a registration system rather than the prior short‐lived examination system, which registration system was somewhat similar to the English system at that time. Apparently, the time and expense of running a patent examination system in 1790 was too much for the young government, and delays and frustration eventually occurred. In the next 43 years, five additional patent acts were passed, but all for the purpose of correcting some perceived deficiency in the existing legislation.
Under the Act of 1793, inventors would be required merely to submit written statements describing their invention, and the government would register those statements. The flaw in this system was that the courts were left to interpret what exactly was covered by the statements submitted by inventors and developers in view of infringements that may or may not have exactly corresponded to the material submitted and covered by the letters patent. It was also difficult to determine from the inventor’s statement what was new about an invention in comparison to what was previously known and in the public domain.
After many years of having courts wrestle with trying to determine what the actual invention was, based upon the inventor’s description of the invention covered by the certificate of registration, with no examination by the government to define the limits of the grant, the modern Patent Act was enacted in 1836, which set up a Patent Office charged with responsibility for the examination of the novelty, utility, and importance of an invention, and established the office of the Commissioner of Patents to oversee the new examination system. This law also embodied the prior court‐established rules for submitting specifications setting forth the invention, stating precisely what it was that the inventor saw as the “novelty” or “invention” covered by the patent grant. The requirements of a written specification, and a statement or statements defining the scope of the invention, and its novel features, were created from the previous court decisions and enacted in the Patent Act of 1836. In a subsequently enacted patent statute, a patent application was required to specifically “claim” or state the subject matter of the invention in separate claims forming part of the patent application. The difference between the former registration system and the new examination system of 1836 was that, under the registration system, the courts developed the entire body of patent law in the United States, without any assistance or guidance from Congress. Beginning in 1836, with the enactment of a comprehensive legislative act, Congress set forth the standards of patentability and patentable subject matter to guide the courts, as well as inventors. It is this examination system, with the established law guiding the courts, that is in existence today and comprises the U.S. patent system with various amendments over the years.
3.1.3.3 Inventions, Not Discoveries
It is important to note that, although the Constitutional mandate uses the word “discoveries,” there is a strong distinction in patent law as to whether patents can be obtained on “inventions” and “discoveries.” An invention, or creation of a work of art or authorship under the copyright law, is a creation by a human being of something new, and something that is not found before, either manmade or in nature. This is the substance of what can be covered under the Intellectual Property Laws. To the contrary, if someone “discovers” something that already exists in nature, or exists because of someone else’s creation, such “discovery” is not rewarded by exclusive rights under the Intellectual Property Laws. It is possible that early use of the term “discovery” referred to inventions or novel things that were novel to a particular country, and, when someone discovered them overseas and then brought them into the realm, they were awarded exclusive rights under the patent laws. However, that provision has been written out of every patent law in the world, and today, universally, a patent can only be granted on something developed by an inventor or inventors. You cannot obtain exclusive rights on something found overseas and then brought into your home country.
This, in my mind, raises interesting issues involving the patenting of genomes and DNA strains, where most of the public is of the understanding that scientists are discovering something that is in all of our bodies. And, therefore, how can someone obtain a patent on something that already exists? The quick answer is that patents today may be granted on new living organisms, such as recombinant DNA, which is modified from its form found in nature. For a more thorough discussion of recombinant DNA patent protection, see Chapter 14.
3.1.3.4 Importance of Disclosure of the Invention
Disclosure of one’s invention to the public is the primary object of patent systems everywhere, with exclusive rights granted to those inventors to commercialize the invention for a limited period being their reward for publicly disclosing their invention. Prior to the existence of patent laws, inventors were operating their inventions in secret, trying to maintain such secrecy as long as possible so as not to have their invention stolen from them. As early as 1623 in England, it was decided that, to urge these inventors to disclose their inventions to the public and make such inventions available for the public good, a limited exclusive right should be granted to those inventors for the commercialization of their inventions. In exchange for that limited exclusive right, the law required that the inventors make full disclosure of their inventions to the public, so that once the patent grant expired, the public would have the full benefit of using that particular invention. Today’s patent law requires, for example, that the specification in a patent contain a full, clear, exact, and concise description of the invention so as to enable one skilled in the art to practice the invention upon the expiration of the patent without undue experimentation. The U.S. patent law also requires that the inventor must place in the specification the “best mode” of practicing the invention as of the date of filing the patent application. This prevents an inventor from setting forth in any patent specification a less than perfect embodiment of the invention, while exploiting a more perfect version of the invention.
Therefore, the laws of the United States and many countries are quite specific as to the depth of description that must be placed in the patent application, including drawings where necessary to inform one skilled in the related art of the structure and operation of the invention. In the case of software inventions, some inventors place the source code in the patent specification. Others do not, and use flow diagrams to fully describe the invention. I have been looking for court decisions that may indicate that, if a patent issues without a source code on software, the invention has not been fully disclosed. So far, I have not seen such a decision. It is my understanding, being a mechanical engineer, that possibly one can duplicate an algorithm or a computer program without information supplied from the source code. See Chapter 13 for the existing law regarding obtaining patent protection for computer‐related inventions.
3.1.3.5 Present Patent Law, Rules, and Guides
In 1952, the Patent Act,