The Constitutional Underpinnings of Patent Law

A patent is a proprietary right granted by the Federal government to an inventor. There are three types of patents available in the United States: (1) a utility patent, which covers the functional aspects of products and processes; (2) a design patent, which covers the ornamental design of useful objects; and (3) a plant patent, which covers a new variety of living plant. Each type of patent confers “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. It is important to note, however, that patents do not protect ideas, but rather protect inventions and methods that exhibit patentable subject matter.

The United States Constitution grants to the Congress the power to grant patents; this power residing in the Congress is found in Article I, Section 8, Clause 8. Unlike most of the enumerated powers granted to Congress in the Constitution, the Intellectual Property Clause is a qualified grant of power, which does limit Congressional discretion in significant ways. The Congress does not have free reign to decide that patents should be easily or freely given, but rather must limit their exercise of power to the dictates of the clause itself.   See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989).  See also Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 5 (1966) (“The clause is both a grant of power and a limitation. This qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of advances in the ‘useful arts.’”).

In this regard, Congress may not simply create patent terms of unlimited duration, and it is unlikely that Congress could do away with the novelty and non-obviousness requirements.  It perhaps even more unlikely that Congress could authorize the issuance of a patent when the ramifications of such issuance are to remove an existing invention from the public domain.  See Graham, 383 U.S. at 6 (Congress may not “enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby.”).  See also Great A. & P Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 154-55 (Douglas, J. concurring) (“It is not enough that an article is new and useful.  Rather, the Constitution permits Congress to award an inventor a patent if and only if an “invention” does indeed exist.  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 is has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.”).

Today there are few questions with respect to patentable subject matter.  The legislative history of the 1952 Patent Act informs us that Congress intended the patentable subject matter referred to in § 101 to “include anything under the sun that is made by man.”  S. Rep. No. 1979, 82d Cong., 2d Sess., § 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess., § 6 (1952).  See also Diamond v. Chakrabarty, 447 U.S. 303 (1980).  As a result of Chakrabartyliving matter genetically engineered is patentable, as a result of Bilski v. Kappos software and business methods remain patentable, and despite the popular controversy surrounding gene patents those are patentable as well, with the Patent Office having issued over 40,000 gene patents and the Federal Circuit soon to reverse the district court decision in AMP v. United States Patent and Trademark Office, more frequently referred to as either “the ACLU case” or “the Myriad case.”  Of course, there is the troubling decision of the Federal Circuit that held a signal to be unpatentable because they are transitory, despite the fact that everyone agreed that signals are physical forms of signal transmission such as radio broadcasts, electrical signals through a wire, and light pulses through a fiber-optic cable.  See In re Nuijten.  Notwithstanding Nuijten, virtually everything is patentable subject matter in the United States.

Given that Congress intended everything made by man, except apparently signals, to be patentable it is sometimes more helpful when discussing patentable subject matter to search for that which cannot be patented.  In this regard the United States Supreme Court has repeatedly and consistently stated that there are only three categories of subject matter for which one may not obtain patent protection: (1) laws of nature; (2) natural phenomena; and (3) abstract ideas.  From time to time the United States Patent Office does attempt to breathe new life into rejections for want of patentable subject matter, but ultimately the legislative history and the guidance of the Supreme Court is clear.

In determining whether an invention worthy of patent protection does exist, the Constitution requires the invention proffered by the applicant to be new, useful and the embodiment of a scientific advance.  See Hotchkiss v. Greenwood, 52 U.S. 248, 267 (1851) which states: “[U]nless more ingenuity and skill . . . were required . . . than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that decree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor.”  See also Atlantic Works v. Brady, 107 U.S. 192, 200 (1883) which states: “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 manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention.”

This last requirement, the embodiment of a scientific advance, is what we have come to know as the non-obviousness requirement. Although this concept did not appear in the Patent Act itself until the 1952 revisions, it seems clear that it has always been considered a constitutional prerequisite to patentability.  Indeed, the case law prior to the enactment of the 1952 Patent Act required a flash of inventive genius to be present before a patent could issue.  See Reckendorfer v. Faber, 92 U.S. 347, 357 (1875); Smith v. Whitman Saddle Co., 148 U.S. 674, 681 (1893); C & A Potts & Co. v. Creager, 155 U.S. 597, 607 (1895); Concrete Appliances Co. v. Gomery, 269 U.S. 177, 185 (1925); Mantle Lamp Co. v. Aluminum Products Co., 301 U.S. 544, 546 (1937); Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91(1941).  The “flash of genius” requirement was specifically rejected by Congress with the enactment of 35 U.S.C. § 103(a), which in relevant part states: “Patentability shall not be negatived by the manner in which the invention was made.”  35 U.S.C. § 103(a) (2000).  Congress may statutorily make this change because they are not doing away with the obviousness requirement, but rather, codifying the meaning of the Constitutional obviousness requirement, which is certainly within the scope of their authority pursuant to the Intellectual Property Clause.

The constitutional reward of a patent, together with the constitutional requirements of utility, novelty and non-obviousness, represent a delicate balance struck between the need to encourage innovation and the avoidance of exclusive rights that stifle competition without any concomitant advantage to society. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989).  In implementing the permissive Constitutional authority, Congress is free to place requirements upon the acquisition of a patent that further the goals of the clause, while at the same time not compromising the specific dictates of the grant of power.  This is true because Congress may only enact laws pursuant to one of its enumerated constitutional powers.  See United States v. Morrison, 529 U.S. 598, 607 (2000) (“”Every law enacted by Congress must be based on one or more of its powers enumerated in the Constitution.”); Marbury v. Madison, 5 U.S. 137 (1803).  Cf. Railway Labor Executives’ Ass’n v. Gibbons, 455 U.S. 457, 468-69 (1982) (a determination that Congress had the power to enact nonuniform bankruptcy laws pursuant to the Commerce Clause would eradicate from the Constitution a clear and present limitation on the power of Congress to enact bankruptcy laws).

In so fashioning the patent laws to enhance the quid pro quo envisioned by the founding fathers (i.e., exclusive rights in exchange for disclosure) Congress has enacted certain description requirements that certainly further the goals of the Patent Clause, but which are not constitutional requirements in and of themselves. This is true because while an adequate description is required, the Patent Clause itself does not discuss the particular requirements of the adequate description. For this reason, the metes and bounds of the final requirement for patentability, namely that the patent invention is adequately described, is within the province of Congress to determine.

It is worth noting that so many of those who challenge the Patent Act and rail against the patentability of things such as software and genes fundamentally do not understand patent law.  The argument that patents are unconstitutional is simply ridiculous and easy to debunk with any understanding of U.S. history, nevertheless that argument continues to have at least some traction in some circles.  More insidious, however, is the fact that many in the popular-press and many average citizens mistakenly collapse the entirety of the patent inquiry into the first, threshold question relating to patent eligible subject matter.  The fact that something is patentable subject matter, or in patent speak “patentable,” does not mean that a patent must, should or even could issue.

There are at least five separate requirements for an invention to warrant a patent.  In order for a patent to be issued that which is claimed must be patentable subject matter, it must be useful, it must also be novel and non-obvious, and the innovation must be adequately described to satisfy the sometimes peculiar U.S. disclosure requirements.  So the fact that the law says that a class of invention is “patentable” that merely means the initial threshold has been satisfied and if the invention as articulated is useful, new, non-obvious and adequately described then a patent should issue.  To collapse the entirety of the patent inquiry into a single inquiry makes for sensational headlines, allows for enraging 60 Minutes segments and is simple enough even for the masses to understand.

Sadly, those reporters and advocates who devolve the patent inquiry into the first, threshold matter of patent eligible subject matter are either intentionally misleading to forward their agenda or they are ignorant relative to patent laws.  Failure to understand the intricacies of the Patent Clause of the U.S. Constitution and the many Supreme Court cases that have interpreted that clause allows some rather naive and wholly incorrect understandings to percolate.  Those who refuse to allow facts to influence their otherwise predetermined opinion are the enemies of innovation and why so much energy is spent fighting needless battles rather than focusing on society embracing advances in innovation and allowing risk taking businesses and individuals to have certainty of rights — settled ownership rights — that justify the massive investments necessary to build companies, grow industries and organically create jobs.


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7 comments so far.

  • [Avatar for Blind Dogma]
    Blind Dogma
    May 12, 2011 12:05 pm

    Quoting old Justice Douglas

    Your first mistake – any quotes geared to patent law from the recognized Jurist most hateful and destructive of patents in the first place is not only suspect, but ruins the credibility of the one advancing those ideas.

    If you are going to wade into the constitutional discussion of patent law, you need to beter understand the players that you seek to quote.

  • [Avatar for JD]
    May 12, 2011 10:49 am

    Thanks for the post. I always find it interesting to see where we originally started and where we have come. I think the Court has gone far into the legislative field and has ignored the text of the clause itself. Since your article is entitled “Constitutional Underpinnings…” and since I love our Constitution – since you did not include it, please humor me and let’s back up a second here to recall the literal text:

    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.

    Most of your post describes judicial precedent (not the Constitution) – which is our current reality. There is no explicit mention in the Constitution of patents, novelty, doctrine of equivalents, machine, genes, etc…. only that it be an exclusive right and a writing or discovery. Of course our founding fathers never considered whether software or genes were patentable. But I do believe they were wise enough to provide for it.

    We currently have the luxury of the statutes, legislative history and judicial precedent to give us the system we enjoy today. Because our legislation has not addressed most of the issues, our courts have legislated for them to define most of the things we battle with on a regular basis – but it is typically not a constitutional issue, and often not a statutory issue – it is either judicial precedent or a new question of law.

    That said, I believe if we could rewind all of this – focusing on the constitution and DISCOVERIES – the original intent appears to be broad – to promote science and useful arts. Realistically speaking, most “discoveries” are pretty small – but cumulatively they truly advance the science. Practically speaking, if I am able to protect a small “discovery” and it is trivial – then any patent issued is worthless. Why would someone wish to infringe something that is trivial, when they can practice the prior art – if it does not advance science or the useful arts? Either it is useful and valuable, or it is not – I believe the marketplace will prove this out.

    But the scope of protection must be reasonable – if I have a truly small discovery, I should get exclusive rights in that small discovery for a limited time – and anyone else may practice the prior art, or perform a design around. Think for example about the discovery of the State Street system. Assuming it is novel, clearly it would advance the science of trading systems (otherwise people would use other systems – i.e. what did they do before computers?)

    It need not be a revolutionary discovery to advance science – think how basic the science was in the 1700’s. Look at USP#1 – it was not rocket science (that came much later, in a large number of very incremental steps). I think we often fall back to the “flash of genius” concept of invention. Realistically speaking, that is usually not the case – at least not 7,000,000 plus times.

    You cited Bonita Boats in your statement “The Congress does not have free reign to decide that patents should be easily or freely given, but rather must limit their exercise of power to the dictates of the clause itself.” I appreciate that this written in the statute and that is the judicial interpretation – but I agree with EG – that the Constitution does not REQUIRE unobviousness (as it is currently interpreted). I do agree that the constitution requires something like novelty (so that the discovery actually advances science or useful arts). And I think some of the judicial interpretations may be reasonable standards to put in place to ensure we have advanced science – but are not required by the Constitution – but I do think that 103 has been tortured by our courts.

    Our Courts have opined a number of times in this regard… And the well-founded fear of the corrupt English system does not require us to set up rules like we currently encounter – but there are other ways to accomplish this through legislature – even the Brits currently enjoy an opposition system which enables the checks and balances to avoid that from happening (and we have reexam). But I believe it would not frustrate the constitution to have a protection system based on absolute novelty (although I think that is extreme and unwarranted).

    But I think the obviousness requirement should be a fairly low threshold – to promote the progress of science. If I make a relatively small discovery that is novel, I believe I should be able to patent it. If it is a minor advancement, my competition can continue to make the prior art – and if the advancement is trivial, then the patent should be worthless (as in this instance, consumers will not buy my embodiment if it has no advantage). But if there is truly an advantage, no matter how small, I should be able to benefit from the small contribution I have made to the advancement of science. If I cannot get some sort of protection, I will not make a large capital investment and disclose my idea to have it immediately copied. Therefore, the potential progress is lost. Where there is no capital investment (eg software), this may be less of a risk – but I still think there should be some limited (scope and term) form of protection. Perhaps something like a “petty patent” with a 5 year term (unexamined unless a request is made)?

    While I know KSR is contrary to this due to the statutory and judicial doctrines – if they were able to sustain that patent, every competitor could continue to mount the hardware as shown in the prior art. It the discovery was truly not an advance of science, then it would not make a difference if it were patented, as the systems would be equivalent to a consumer. But I believe that because they did in fact advance science to improve the system, their competitors copied their discovery. I believe an idea like this deserves Constitutional protection as a discovery – but of course, that is not where we currently live.

    Keep up the good work.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    May 12, 2011 09:57 am

    Here is a copy of the entire copyright and patent provision of the Constitution:
    Article 1, Section 8:
    “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.”

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    May 12, 2011 09:49 am

    Quoting old Justice Douglas Sup. Ct. decision statements on the Constitutional language basis of patent law can be misleading, because he notoriously misunderstood the old meaning at the time the Constitution was written of the word “science” in the subject Constitutional words: “..To promote the progress of science and the useful arts .. to authors and inventors”
    [There is, as I recall, even a famous old legal article by the great PTO patent law expert Pat Federico on this subject.]

  • [Avatar for Mike]
    May 12, 2011 08:04 am

    Thanks Gene – an elegant and useful distillation of the basis of patent law. I’m sure bits of this (like many other pieces of your blog) will be cropping up in my explanations to non-patent-literate acquaintances from time to time.

    I think your last paragraph is a universal, however, that isn’t strictly related to patents. People thoroughly knowledgeable in finances have the same opinion about public views on reforms to our financial system, chemists certainly have the same opinion about public views on the dangers of chemicals, drug companies have the same opinion about public views on the costs of new pharmaceuticals, and the list goes on and on. Nobody can be an expert in all fields, and in the absence of the time, willingness, or training to research a field, people tend to accept ths simplest explanation presented by somebody they trust. Whether the trust is based on personal contacts, political leanings, religious convictions, or simply repetition, it lends far more weight to the opinion than reams of unread, albeit accurate, analysis do to any counter-argument.

  • [Avatar for Alan McDonald]
    Alan McDonald
    May 11, 2011 03:00 pm

    Looking at the constitutional basis for the patent law, it says Congress shall have the power to…

    There is no requirement that Congress exercise that power or use the power in limited ways. As I understand the clause, Congress could eliminate patents all together should it choose to do so.

    Also, Congress could declare classes of invention, i.e. software, unpatentable per se.

    I’m not saying this is a good idea, but it would be constitutional in my opinion.

  • [Avatar for EG]
    May 11, 2011 01:33 pm

    “it is unlikely that Congress could do away with the novelty and non-obviousness requirements.”


    I would be careful in saying that Congress couldn’t require simply novelty, without any requirement that the invention be non-obvious. The quote you take from Graham is utter obiter dicta (of the worse sort), and based on dubious historical support (including accepting the historical fiction of the “Jeffersonian story of patent law”). SCOTUS may be under the illusion that more than novelty is constitutionally required, but, in my opinion, Congress could say otherwise (but likely won’t).