On Presidents Day, many will spend a moment or two remembering President George Washington, if only because his likeness is used this time of year in a never ending stream of commercial advertisements. But did you know that President George Washington was a champion of the U.S. patent system? Indeed, Washington, who presided over the Constitutional Convention in Philadelphia, helped ensure inclusion of the now famous patent clause into the Constitution.
Washington’s interest in a patent system did not cease with activities in Philadelphia. President George Washington devoted an unusual amount of time talking about patents in his inaugural address, and also again in the first ever State of the Union address. He implored Congress to take action on a Patent Act, the importance of which he believed to be rather self-evident. Furthermore, as a merchant and entrepreneur in Virginia, President Washington became the first licensee of an issued U.S. patent, licensing a patent from an inventor for his gristmill.
James Madison, the force behind patents in the Federalist Papers, the father of the Constitution, and later President of the United States, also believed the importance of Congressional authority to grant patents to be self-evident. Madison would correspond with Thomas Jefferson, who was initially skeptical of patents, eventually winning out and convincing Jefferson of the merits of a patent system for the fledgling America.
The vision of George Washington and James Madison for a U.S. patent system would take unexpected turns. It seems that, while Jefferson eventually acquiesced, he did not go quietly into the night.
From Examination to Registration
When Washington was President he gave the patent office to Jefferson, who was then Secretary of State, thereby making Jefferson one of the first U.S. patent examiners. Washington put Jefferson in charge of bringing peace to the heated competition between Jefferson and Alexander Hamilton, a very loyal protégé to Washington during the war. Hamilton, who became Secretary of Treasury for Washington, had a very different view of the role of the national government in finance than Jefferson. Hamilton wanted the patent office responsibilities, but Washington gave it to Jefferson because he was a tinkerer and inventor.
Given his large library, Jefferson was able to read about inventions from others from overseas before word got to the U.S., so he had a time advantage. Perhaps that is why Jefferson really hated examining applications and instead spent his first three years in office and the first three years of the patent system lobbying Congress relentlessly until they changed the system from examination to registration in 1793.
Jefferson’s move from an examination system to a registration system was unfortunate for at least several reasons. With a registration system, races favor those with resources who can afford to purchase and import books. Such a system was contrary to the purpose of the discoveries or patent clause, which was a trade between the inventor and the government so that she would share her secret with society earlier and diffuse innovation more broadly into what was an agrarian and illiterate community that had nothing but grit and rebellion. It should be noted that the Founders in Philadelphia specifically rejected the English patent system, which rewarded those with resources to manufacture an invention with winning the race to obtain a patent. Despite Jefferson not being present in Philadelphia, it seemed that he would get his way on patents.
Registration shunted Yankee ingenuity and entrenched elitism. So people worked around it by going overseas to copy looms and other early industrial age inventions and bought them back to the U.S. via financial syndicates.
The System Gets Rebooted
It was not until President Andrew Jackson brought his friends from the insurance industry from New York City to Washington, D.C. to design a new patent office that would be fireproof (the office with the patents and models had burned a few times) and a new patent statute that restored examination. On July 4, 1836, the U.S. patent laws were amended, this time to directly and specifically take into consideration the possibility that more than one inventor or inventive entity might apply for a patent on the same invention and that the patent should go to the first and true inventor. See The Patent Act of 1836.
Under President Jackson, in July 1836, America rebooted the patent system and started numbering patents from 01. The prior patents under the Jeffersonian registration system were re-designated with the letter X. U.S. Patent No. 1 issued on July 13, 1836, and covered a locomotive steam engine.
Are We Back at “Y”?
Since the American Invents Act (AIA) in 2011, we now have a Patent Trial and Appeal Board (PTAB) within the United States Patent and Trademark Office (USPTO). This PTAB has the authority to hold administrative trials for the purpose of stripping property rights from patent owners. By far the most common PTAB proceeding is inter partes review (IPR). Sold to the public as a cheaper, faster means for resolving district court validity disputes, PTAB proceedings have proven to be anything but cheap, costing upwards of $1 million for a patent owner. The Patent Office refuses to presume challenged patents to be valid, which on its face seems to directly conflict with 35 U.S.C. 282. In short, procedural safeguards for patent property right owners that are ensured in federal district court are simply not present at the PTAB.
Perhaps we should once again re-designate all issued patents, this time with the letter “Y” after they survive what is essentially a de novo redo by the USPTO. Why “Y”? “Y bother to patent anymore”? Or perhaps “Y bother to spend the time and money for a lengthy and onerous examination process that seems to mean nothing”?
It is time for us to ask an uncomfortable question: Has examination today just reverted to de facto registration? The answer for patent owners caught up in post grant proceedings at the PTAB is a resounding YES. We have a registration system, albeit it an extremely costly registration system. You simply cannot rely on the patent granted unless and until the PTAB ratifies the claims in a post grant challenge. Only PTAB super litigated patents are to be deemed legitimate and enforceable. No other patents are even entitled to the presumption of validity, not even by the agency that granted the right in the first place.
The sad reality is that, to obtain a commercially viable patent that is entitled to any kind of a presumption of validity, you will need to spend years in a byzantine examination process and tens of thousands of dollars. Then you will need to spend years in the post grant procedure and appeal process, and upward of $1 million. Such a ridiculously expensive sum puts the U.S. patent system out of reach of the average person and small business, which is precisely what Washington and Madison opposed. They did not want a patent system only for the elite, as was the case in Britain.
So on this Presidents Day, it may be time to start asking whether the United States has a “Y” patent system, that, like the British system from so long ago, only benefits the elite class.
Join the Discussion
34 comments so far.
Night WriterFebruary 18, 2016 10:54 am
At the end of the day, the problem you have is that the federal courts don’t want all that litigated in the federal courts. Policy considerations rule in this case.
Edward HellerFebruary 17, 2016 06:30 am
1. I beg to differ on reexamination. New or amended claims are not issued claims. They have no vested rights. In contrast issued claims do; and the constitutional issues involved with cancelling issued claims from an issued patent, with vested rights involved, for invalidity are the same as they are for IPRs.
2. In England, the reservation clause allowed the Privy Counsel – the Executive – to cancel patents for invalidity, for lack of working or for abuse. It very much was there to overrule the otherwise common law right patent owners had to a trial in the common law courts for invalidity before their patents were revoked. The lack of any such clause in the US patent grant may be significant.
Gene QuinnFebruary 16, 2016 06:45 pm
You say: “Patent owner’s take a patent subject to the condition that they be revocable.”
That may well be true, but not revocable by an Article II administrative tribunal. The law from the Supreme Court is pretty clear on that point. That isn’t to say that they won’t ignore the volumes of cases where they have said that the Patent Office invalidate a patent, but they would have to turn their back on an impressive list of cases. See:
The problem with post grant review is that it is adjudicative in nature. The Statute does not give the right to amend. As the PTAB and Federal Circuit have clearly pointed out the Statute only gives the patent owner the right to file an amendment, but no right to amend. In practice we know that the PTAB does not grant motions to amend. Thus, post grant proceedings are not patent examination like a reissue where the applicant goes back voluntarily, or even a reexamination where the applicant is pulled back into an examination process where they can still obtain patent claims on the disclosure even if the claims challenged are deemed too broad.
So there is simply no authority under Supreme Court precedent for the patent office invalidating a patent. Quite the opposite actually.
AnonFebruary 16, 2016 06:40 pm
Your post at 30 is unclear.
I think that you are mixing discussions and different arguments. Right here and now the point is the opposite of what you would hold: that the US system follows exactly the system of England.
It is abundantly clear that such was never the case. Sure, there were elements brought over. But make no mistake, the US patent system was expressly built to be different.
As to the constitutionality of IPRs in their current form, well, I have plainly made statements showing the explicit constitutional infirmity of exactly how Congress wrote that law. And your final sentence is simply out of place on that discussion as well.
Edward HellerFebruary 16, 2016 06:13 pm
Anon, not really. To me it is simple: if Congress can grant revocable rights even without such a notice that was included in English patents, then there is absolutely nothing wrong with IPRs constitutionally. Patent owner’s take a patent subject to the condition that they be revocable. End of discussion.
AnonFebruary 16, 2016 06:04 pm
Your own words “Does the lack of a revocation clause in US patents mean anything?” may prove a lot of things, but chief among them is the case here by Gene and others AGAINST your views.
Your tendency to over read and under-understand differences is at play once again. Perhaps you are so afflicted because you approach cases looking only for quotes that support your views, instead of a more balanced mindset to pick up both the pros and cons of any particular decision (and the attached subtleties).
Edward HellerFebruary 16, 2016 04:29 pm
Gene, did you know that all British patents ’til 1902 had a revocation clause whereby it could be revoked for “inconvenience?” Bracha, Oren. Owning ideas: A history of Anglo-American intellectual property. Diss. Harvard Law School Cambridge, Massachusetts, 2005. https://www.google.com/url?sa=t&rct=j&q=&esrc=s&source=web&cd=4&ved=0ahUKEwiGn9iEl_3KAhVCKGMKHa-4C70QFgguMAM&url=https%3A%2F%2Flaw.utexas.edu%2Ffaculty%2Fobracha%2Fdissertation%2Fpdf%2Fchapter1.pdf&usg=AFQjCNFziDVrLTNh4meHqwp7sdCFIcGmRg&sig2=XAnwp4WTgpmYNNKM_XcRlA&bvm=bv.114195076,d.cGc&cad=rja
At page 21: By the second half of the seventeenth century
revocation clauses “became a fixed feature of all patents for invention and
remained as such down to modern times.”35 A revocation clause was a
general escape clause. It usually stated that the crown or its arm- the Privy
Council- had power to revoke a patent upon proof of “inconveniency.”
Davies described the standard revocation clause as providing that “if on
examination of the patent before the Privy Council, or a specified number of
its members, before whom the patentee had been called, the grant was
certified to be inconvenient or prejudicial to the realm, then on the
signification of the pleasure of the Crown in that respect… or upon a
certificate to that effect made by the Privy Council… the patent immediately,
or at the end of a specified period of notice, was to be void and frustrate.”36
The term “inconveniency” covered issues like novelty and priority of
invention (in the sense given to these terms in the period’s common law as
discussed below). Yet it also included “any failure to introduce an invention
within a reasonable time”37 and many other specific “abuses.”
Note 129: “The last Privy Council revocation application found by Hulme (who
searched the records up to 1810) and Davies took place in 1794. Davies
reports that the last record of actual revocation by the council is from 1779.
See: Hulme “Privy Council Law,” supra note 3, at 193.; Davies, supra note
3, at 103. As mentioned before, the practice of incorporating in the patent
grants revocation clauses empowering the Privy Council persisted up to 1902.”
Does the lack of a revocation clause in US patents mean anything?
Edward HellerFebruary 16, 2016 04:16 pm
Gene, “For example, the cost of the English patent system meant that only the richest could apply for a patent, while the cost of the US patent system allowed virtually anyone to save up the funds to apply.”
No doubt this went to the procedures involved in obtaining and enforcing a patent, not what it was and what it protected.
English law provided that the loser paid the winners attorney fees. That by itself gamed the system in favor of the rich.
English law, after 1753, provided for revocation actions by writ scire facias that could be used to harass a patent owner. But English law required a petition to the Attorney General and a bond of £1000 to prevent harassment. See, Mowry v. Whitney. The US law originally provided an action to cancel US patents for invalidity but did not provide that the petition first be approved by the Atty. Gen., nor did it require a large bond. On its face the US law was prone to abuse, and probably was abused, which led to its abrogation in 1836.
English law did not provide for any examination for validity prior to the patent issuing – just a long and arcane series of approvals through the British bureaucracy that was very expensive. I think Dickens spoke eloquently on this in what, the Tale of Two Cities? That the US system was designed to avoid this expense was entirely understandable.
Edward HellerFebruary 16, 2016 03:52 pm
Night, on information processing, it is clear that you never state my views accurately. Let us leave it that I oppose business method patents — computing the improved price, the reduced risk, the better contract, is not the stuff of patent laws.
Edward HellerFebruary 16, 2016 03:49 pm
@15, EP Attorney. The we are talking here about historical practices in England. That the Euro’s are doing something to cap litigation costs is laudable; but any system, any system that routinely awards the winning party his attorney’s fees is heavily biased against enforcement at all.
Moreover, contingency fee lawyers do not exist in Europe, AFAIK. This is another bias in favor of the big firm against the small. If one has to pay his lawyers out of pocket, one has to be a multimillionaire to play in the patent system at all.
step backFebruary 16, 2016 03:20 pm
Night Writer @23,
I am shocked, shocked I say.
Do you mean to tell me that a re-entrant shift register is not preemptive of an abstract mathematical law of nature and fundamental to all progress in science and the rhetorical arts? O-M-G-!
Night WriterFebruary 16, 2016 01:07 pm
The sad part about this is if the PTO would just invest in the systems and procedures to insure the best prior art was used, then almost none of this would be necessary. (Benson is worst than the AIA, and anyone that thinks there is any sense to Benson should is not worthy to be a patent attorney.)
Night WriterFebruary 16, 2016 01:05 pm
Edward: it is hard to take anything you say seriously given you views on information processing patents (and EE since there is no distinction other than in the mind of the beholder.) I am seriously Edward anyone that praises Benson has no understanding of technology or patent law.
But, the fact that the PTO has become a registration system is something I said back when the AIA was being enacted. The key—I think–is prior art. The problem with the IPRs is that they are bringing up new prior art that wasn’t in examination. To my mind, the key is to say if your patent is invalidated under new prior art that they PTO didn’t find then you automatically by right get to go back to examination and/or get to amend your claims.
Gene QuinnFebruary 16, 2016 11:51 am
You write: “Creating a system which can detect and correct its’ errors is far more productive.”
I think you, and most others, look at the problem incorrectly. The problem is not whether an error should be corrected after the fact by stripping what is supposed to be a property right, but rather whether property rights actually vest. If patents are property, which the Statute says they are and dozens of Supreme Court cases say, then the rights must vest. There are now processes in place for those interested in alerting the Patent Office to prior art. These procedures are hardly ever used. Challengers say they cannot be bothered to notify the Patent Office, they allow the property rights to be created and then cause the property right owner to need to spend 7 digits to defend the right that is supposed to by case law and Statute be vested.
On the trademark side the longer you wait to challenge a right the more difficult or ultimately impossible it becomes. That should also be true on the patent side as well.
If you don’t want to submit prior art to the Patent Office during examination that is fine. It is a choice. But that choice MUST have consequences.
Gene QuinnFebruary 16, 2016 11:46 am
Regarding the English patent system. There is a book about to be published that goes into great detail that compares the choices made by the founders with respect to the U.S. patent system, so more on that soon. The U.S. patent system was most certainly NOT directly modeled on the English patent system. It is fair to say that the English patent system provided the inspiration for the U.S. patent system, but there were many differences. For example, the cost of the English patent system meant that only the richest could apply for a patent, while the cost of the US patent system allowed virtually anyone to save up the funds to apply. That was a purposeful decision to make patents attainable by the average person and leverage the creativity and ingenuity of all classes of people. So it is simply inaccurate to say that the US patent system was modeled directly on the English system.
Gene QuinnFebruary 16, 2016 11:42 am
Thanks for the comment. Would you or anyone at your firm have any interest in drafting an op-ed for publication that discusses the small claim process you mention in your comment? You can contact me here: http://ipwatchdog.com/about/contact/#F
It would be wonderful to have a small claims process in the U.S. Unfortunately, the U.S. Constitution prohibits such a process.
Paul MorinvilleFebruary 16, 2016 11:07 am
Edward, There are similar fundamentals, however you are not apply enough significance to the differences. The English system worked for the wealthy and powerful. It was intended to keep out paupers. The US system was opposite. It was intended to include them and greased the skids to include them. You could mail your invention postage free. The cost of getting a patent was affordable to just about anyone. While small, these changes were highly significant.
You are talking about the legal constructs of a patent and with that I mostly agree. You are not talking about, or granting any significance to, the operation of getting a patent and enforcing a patent. One cannot exist in the same system without the other.
These rejections of the English system’s nature of class and hierarchy are among the primary reasons the US system was successful and the English system was not.
This is not leading anyone astray. I mostly agree with you on the construction of a patent, however, you seem to ignore the rest of the system.
Paul MorinvilleFebruary 16, 2016 10:53 am
Paul, The percentage of patents issued to patents asserted in less that 2%. Many patents are asserted against multiple companies, which means that each company is an individual lawsuit for the same patent.
Do you know how often a patent is asserted against multiple companies or how many companies on average? That information will change your analysis.
A Rational PersonFebruary 16, 2016 10:39 am
So, anyone think any of the claims of U.S. Patent No. 1 (1836) would survive the Alice-Mayo test today?
EP attorneyFebruary 16, 2016 10:33 am
“What makes the U. S. patent system affordable for little guys is that the U. S. court system allows anyone to sue without having to pay the litigation costs of the other side if they lose, and to bring cases only when they are winnable such that one can take the risk of loss as one’s investment in one’s own fees, such that others might invest in the lawsuit particularly the form of contingency fee lawyers.
The effort by the big infringer lobby is to make things here more like in Europe where the little guy has no chance to the extent he or she is utterly ruined by a loss, even a close loss.”
This entire comment is beyond laughable. I’m a European Patent Attorney. For relatively small claims (damages under $100,000) my client can bring infringement proceedings against a large firm without spending more than $15,000. In that case the big firm’s defence fees will also be capped at $15,000. If they win they could be awarded $115,000: the damages plus their own costs. If they lose the maximum they will be liable for would be $15,000: the costs cap of the big firm. The client would never be “utterly ruined” by a loss. This is very unlike the US where litigation of the exact same matter could well run into hundreds of thousands, if not millions, of dollars.
Edward HellerFebruary 16, 2016 10:24 am
Paul, I think you miss the point that we are effectively in a registration now because we cannot actually enforce a patent without going through a postgrant examination of some kind.
Edward HellerFebruary 16, 2016 10:22 am
Paul, you are talking about the arcane procedure the Brits used to obtain a patent. The “system” we have is exactly the same legally as the British system — both are based squarely The Statute of Monopolies – the first inventor who makes new manufacture not known or used by others has a right to a patent for a limited time. U. S. patent statues originally subdivided manufacturer according to the case law that had developed in England to extend manufacture to new machines and compositions, and to Arts, which were interpreted to be ways of making things as opposed to the things themselves.
Let us not confuse everybody about the fundamentals of the U. S. system as being somehow different from that of England. The fundamentals were the same.
Paul F. MorganFebruary 16, 2016 10:16 am
The suggestion is amusing, but hyperbole. If I calculated correctly, the number of IPRs initiated per year is running at only about three tenths of one percent of the number of patents issued each year. The number of IPRs initiated per year is also still a relatively small percentage of the total number of patent infringement suits. And the number of new patent suits increased last year. Yes, IPRs are painful for the pockets of the vocal few no longer always able to obtain large patent suit settlements from defendants before any validity test over patent or publication prior art never cited by examiners in the few hours examiners have to search and apply prior art.
Paul MorinvilleFebruary 16, 2016 10:12 am
Edward, The English system was too expensive and required political work (bribery, trading favors) to get a patent. Only the wealthy or politically connected were able to get patent protection. The sentence in this article is written broadly so its interpretation could be too broad on technical terms, but it is correct that the US system was a rejection on the English system.
The US patent system was priced at a point that anyone could get a patent. A US patent only costed about $3. Also, the Patent Act of 1790 said that “he, she or they” were entitled to a patent. That meant women and blacks could get a patent even though in many cases they could own no other property. The US patent system was designed for paupers not kings. And this rejection of class, which drove the English system, was just one of the many reasons our patent system was successful.
Importantly, the US patent system for these reasons changed the way people viewed countries and world politics. For the first time in human history, a country was no longer measured on it military and political power, but instead was measured for its innovation and economy.
While the author’s statement may be written too broadly in technical terms, it is not too broad in the actual effect.
Edward HellerFebruary 16, 2016 10:00 am
What makes the U. S. patent system affordable for little guys is that the U. S. court system allows anyone to sue without having to pay the litigation costs of the other side if they lose, and to bring cases only when they are winnable such that one can take the risk of loss as one’s investment in one’s own fees, such that others might invest in the lawsuit particularly the form of contingency fee lawyers.
The effort by the big infringer lobby is to make things here more like in Europe where the little guy has no chance to the extent he or she is utterly ruined by a loss, even a close loss.
Edward HellerFebruary 16, 2016 09:52 am
“It should be noted that the Founders in Philadelphia specifically rejected the English patent system, which rewarded those with resources to manufacture an invention with winning the race to obtain a patent. Despite Jefferson not being present in Philadelphia it seemed that he would get his way on patents.”
Where did this come from? It is a given that the United States patent system is modeled directly on the English patents system. Directly. See Pennock v. Dialogue, 27 US 1 (2 Peters) (1829) at 18, and 20.
BennyFebruary 16, 2016 09:02 am
No, haven’t seen it. Since you mention Teheran, I might point out that Iranian protesters often call for my immediate demise, and show scant respect for my home. (They go so far as to chant as much in rhyme).
My problem is not with bona fide inventors, but with granted claims which do not meet the standards for novelty or obviousness as set down in law.
Paul, I called for error correction, not error reduction. Not same thing.
step backFebruary 16, 2016 08:51 am
Have you seen the new Save the American Inventor ad on TV yet?
Do you agree with its message?
Or do you belong to that group that marches through the streets of Tehran shouting Death to America, Death to the American Inventor?
Herb WamsleyFebruary 16, 2016 08:39 am
The history of the early U.S. patent system is fascinating. A great deal has been written about the design of the Patent Office building that was authorized by Congress in 1836 and first occupied in 1840. While President Jackson favored another architect, William Parker Eliot, son of a Patent Office clerk, is often credited as the main designer. Government officials in Washington at the time were concerned about making buildings fireproof, but the first of the two great Patent Office fires did not occur until after construction of the new Patent Office building had begun in 1836. For an interesting account, see the book “The Patent Office Pony” by Kenneth W. Dobyns.
Paul MorinvilleFebruary 16, 2016 08:31 am
Benny, If you want to completely eliminate lead or arsenic in drinking water, your system will be so expensive that it cannot be built or operated. Likewise, perfect patent system will produce no patents. Error reduction and management is what is needed, not perfection. The courts clean up the errors.
I admire your goal, it is just that it is not possible.
BennyFebruary 16, 2016 08:22 am
Merely reducing errors to a tolerable level is a defeatist attitude. Creating a system which can detect and correct its’ errors is far more productive. I don’t think you could point to any other system in which you would tolerate rather than correct mistakes – especially those which could affect you financially to the tune of 7 digits.
Paul MorinvilleFebruary 16, 2016 08:12 am
Benny, The new system is the old system. It’s called an Article III court and it worked just fine for over 200 years. The Administrative branch creates a property right. Once it is created, they’re done with it.
Every system has deficiencies and inconsistencies. It is a fact of human created systems. The object is to reduce errors to a tolerable level. Those who wish to eliminate all error, while I applaud their enthusiasm, will eliminate patent protection completely to reach that unrealistic goal.
BennyFebruary 16, 2016 07:05 am
If you dismantle the PTAB, you will have to put in place a new system for correcting the deficiencies and inconsistencies of the US patent office. I don’t think that anyone here would like to accept the decisions of every under qualified, overworked USPTO examiner as binding and irrevocable. Not to besmirch all examiners, but the quality of their work crosses the spectrum from professional to unacceptable.
Paul MorinvilleFebruary 15, 2016 07:01 pm
As I remember the story… Eli Whitney handed his cotton gin to Jefferson personally. Jefferson did not examine it because examination was eliminated right after that. Whitney’s cotton gin became widely infringed within just a few months and was massively commercialized within just a year or two.
Whitney sued somewhere around 80 infringers mostly in GA. His patent was not presumed valid because it was not examined – it was registered. He lost all the cases, not because of validity, that was proven in court in each case. He lost because infringers paraded out people who said they were in England or Scotland years or decades before Whitney invented the cotton gin and they testified that they had seen the cotton gin in use there.
Finally Whitney ran across an honest judge who reasoned that since the cotton gin became massively commercialized in a very short period here, if it had been invented in England or Scotland years before Whitney invented it, it would certainly have become massively commercialized there – and it wasn’t. Therefore he questioned if those who were testifying were being honest and concluded it was not invented before Whitney.
Whitney’s case also illustrates the need for a presumption of validity. There was no presumption of validity for the cotton gin so nobody believed they could not just take the invention for themselves. They knew that Whitney would have to prove it in court and that would be difficult and expensive.
It’s also worth noting that Whitney had an investor funding the litigation. If HR9 goes through, the investor’s personal assets would be joined to pay the winner’s costs. There were around 80 winners before Whitney won the first case. I suspect Whitney would have lost the first case and there would have been no more investors willing to take on the second. We would not even know he existed and we would not have the story of Eli Whitney and the cotton gin to tell our kids in front of the fireplace.