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.1545 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 patentee’s device is in truth an invention is left open to investigation under the general law.1546 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.1547 The primary responsibility, however, for weeding out unpatentable devices rests in the Patent Office.1548 The present system of “de novo” hearings before the Court of Appeals allows the applicant to present new evidence that the Patent Office has not heard,1549 thus making somewhat amorphous the central responsibility.


A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950); Mahn v. Harwood, 112 U.S. 354, 358 (1884). 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 courts. The Seventh Amendment does not require that such issues be tried to a jury. back
Evans v. Eaton, 16 U.S. (3 Wheat.) 454, 512 (1818). back
United States v. Duell, 172 U.S. 576, 586–89 (1899). See also Butterworth v. United States ex rel. Hoe, 112 U.S. 50 (1884). back
Graham v. John Deere Co., 383 U.S. 1, 18 (1966). back
In Jennings v. Brenner, 255 F. Supp. 410, 412 (D.D.C. 1966), District Judge Holtzoff suggested that a system of remand be adopted. back