CRS Annotated Constitution

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Patentable Discoveries

The protection traditionally afforded by acts of Congress under this clause has been limited to new and useful inventions,1338 and while a patentable invention is a mental achievement,1339 for an idea to be patentable it must have first taken physical form.1340 Despite the fact that the Constitution uses the term “discovery” rather than “invention,” a patent may not be issued for the discovery of a hitherto unknown phenomenon of nature. “If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.”1341 As for the mental processes which have been traditionally required, the Court has held in the past that an invention must display “more ingenuity . . . than the work of a mechanic skilled in the art;”1342 and while combination patents have been at times sustained,1343 the accumulation of old devices is patentable “only when the whole in some way exceeds the sum of its parts.”1344 Though “inventive genius”[p.296]and slightly varying language have been appearing in judicial decisions for almost a century,1345 “novelty” and “utility” has been the primary statutory test since the Patent Act of 1793.1346 With Congress’ enactment of the Patent Act of 1952, however, Sec. 103 of the Act required that an innovation be of a “nonobvious” nature, that is, it must not be an improvement that would be obvious to a person having ordinary skill in the pertinent art.1347 This alteration of the standard of patentability was perceived by some as overruling previous Supreme Court cases requiring perhaps a higher standard for obtaining a patent,1348 but the Court itself interpreted the provision as codifying its earlier holding in Hotchkiss v. Greenwood,1349 in Graham v. John Deere Co.1350 The Court in this case said: “Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must ‘promote the Progress of . . . useful Arts.’ This is the standard expressed in the Constitution and it may not be ignored.”1351 Congressional requirements on patentability, then, are conditions and tests that must fall within the constitutional standard. Underlying the constitutional tests and[p.297]congressional conditions for patentability is the balancing of two interests—the interest of the public in being protected against monopolies and in having ready access to and use of new items versus the interest of the country, as a whole, in encouraging invention by rewarding creative persons for their innovations. By declaring a constitutional standard of patentability, however, the Court, rather than Congress, will be doing the ultimate weighing. As for the clarity of the patentability standard, the three–fold test of utility, novelty and advancement seems to have been made less clear by the Supreme Court’s recent rejuvenation of “invention” as a standard of patentability.1352

Procedure in Issuing Patents

The standard of patentability is a constitutional standard, and the question of the validity of a patent is a question of law.1353 Congress may authorize the issuance of a patent for an invention by a special, as well as by general, law, provided the question as to whether the patentees device is in truth an invention is left open to investigation under the general law.1354 The function of the Commissioner of Patents in issuing letters patent is deemed to be quasi– judicial in character. Hence an act granting a right of appeal from the Commission to the Court of Appeals for the District of Columbia is not unconstitutional as conferring executive power upon a judicial body.1355 The primary responsibility, however, for weeding out unpatentable devices rests in the Patent Office.1356 The present system of “de novo” hearings before the Court of Appeals allows the applicant to present new evidence which the Patent Office has not heard,1357 thus making somewhat amorphous the central responsibility.


1338 Seymour v. Osborne, 11 Wall. (78 U.S.) 516, 549 (1871). Cf. Collar Company v. Van Dusen, 23 Wall. (90 U.S.) 530, 563 (1875); Reckendorfer v. Faber, 92 U.S. 347, 356 (1876).
1339 Smith v. Nichols, 21 Wall. (89 U.S.) 112, 118 (1875).
1340 Rubber–Tip Pencil Company v. Howard, 20 Wall. (87 U.S.) 498, 507 (1874); Clark Thread Co. v. Willimantic Linen Co., 140 U.S. 481, 489 (1891).
1341 Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948). Cf. Dow Co. v. Halliburton Co., 324 U.S. 320 (1945); Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84, 89 (1941).
1342 Sinclair Co. v. Interchemical Corp., 325 U.S. 327, 330 (1945); Marconi Wireless Co. v. United States, 320 U.S. 1 (1943).
1343 Keystone Manufacturing Co. v. Adams, 151 U.S. 139 (1894); Diamond Rubber Co. v. Consol. Tire Co., 220 U.S. 428 (1911).
1344 A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950). An interesting concurring opinion was filed by Justice Douglas for himself and Justice Black: “It is not enough,” says Justice Douglas, “that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end— the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.” Id., 154–155. He then quotes the following from an opinion of Justice Bradley’s given 70 years ago:
“It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufacturers. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith. ( Atlantic Works v. Brady, 107 U.S. 192, 200 (1882)).” Id., 155.
The opinion concludes: “The attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent. The Patent Office, like most administrative agencies, has looked with favor on the opportunity which the exercise of discretion affords to expand its own jurisdiction. And so it has placed a host of gadgets under the armour of patents—gadgets that obviously have had no place in the constitutional scheme of advancing scientific knowledge. A few that have reached this Court show the pressure to extend monopoly to the simplest of devices: [listing instances].” Id., 156–158.
1345 “Inventive genius”—Justice Hunt in Reckendorfer v. Faber, 92 U.S. 347, 357 (1875); “Genius or invention”—Chief Justice Fuller in Smith v. Whitman Saddle Co., 148 U.S. 674, 681 (1893); “Intuitive genius”—Justice Brown in Potts v. Creager, 155 U.S. 597, 607 (1895); “Inventive genius”—Justice Stone in Concrete Appliances Co. v. Gomery, 269 U.S. 177, 185 (1925); “Inventive genius”—Justice Roberts in Mantle Lamp Co. v. Aluminum Co., 301 U.S. 544, 546 (1937); “the flash of creative genius, not merely the skill of the calling”— Justice Douglas in Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84, 91 (1941).
1346 Act of February 21, 1793, c. 11, 1 Stat. 318 . See Graham v. John Deere Co., 383 U.S. 1, 3–4, 10 (1966).
1347 35 U.S.C. Sec. 103 .
1348 E.g., A. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147 (1950); Jungerson v. Ostby & Barton Co., 335 U.S. 560 (1949); and Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941).
1349 11 How. (52 U.S.) 248 (1850).
1350 383 U.S. 1 (1966).
1351 Id., 6(first emphasis added, second emphasis by Court). For a thorough discussion, see Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146–152 (1989).
1352 Anderson’s–Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969). “The question of invention must turn on whether the combination supplied the key requirement.” Id., 60. But the Court also appeared to apply the test of nonobviousness in the same decision: “We conclude that the combination was reasonably obvious to one with ordinary skill in the art.” Ibid. See also McClain v. Ortmayer, 141 U.S. 419, 427 (1891), where, speaking of the use of “invention” as a standard of patentability the Court said: “The truth is the word cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not.”
1353 A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950); Mahn v. Harwood, 112 U.S. 354, 358 (1884).

Supplement: [P. 297, add to n.1353:]

In Markman v. Westview Instruments, Inc., 517 U.S. 348 (1996) , the Court held that the interpretation of terms in a patent claim is a matter of law reserved entirely for the court. The Seventh Amendment does not require that such issues be tried to a jury.

1354 Evans v. Eaton, 3 Wheat. (16 U.S.) 454, 512 (1818).
1355 United States v. Duell, 172 U.S. 576, 586–589 (1899). See also Butterworth v. United States ex rel. Hoe, 112 U.S. 50 (1884).
1356 Graham v. John Deere Co., 383 U.S. 1, 18 (1966).
1357 In Jennings v. Brenner, 255 F. Supp. 410, 412 (D.D.C. 1966), District Judge Holtzoff suggested that a system of remand be adopted.
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