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. The relevant portion of the Constitution, Article I, Section 8, clause 8 reads:

“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….”

Of particular note is the use of the word “Right” in this clause. This is the only place in the Constitution the Founding Fathers actually used the word “Right.” Yet today the Supreme Court is poised to determine whether this most fundamental of all rights, a right deemed so important that it was the only right specifically mentioned in the Constitution itself, is a private right or a public right that can be stripped with proceeding in an Article III federal court. Previously, the Supreme Court has said only a federal court can take a patent away because it is a property right, but that case was over 100 years ago. We will soon learn whether the “exclusive Right” mentioned in the Constitution does, in fact, remain a property right or something more akin to a fishing or hunting license that can be revoked by a government agency.

In any event, this power residing in the Congress found in Article I, Section 8, Clause 8, is unlike most of the enumerated powers granted to Congress in the Constitution. This clause, known to patent attorneys at the Patent Clause and known to others in the intellectual property community as the Intellectual Property Clause, is a qualified grant of power, which does limit Congressional discretion in at least some ways. For example, 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 is perhaps even more unlikely that Congress could authorize the issuance of a patent when the ramifications of such issuance would be 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.”).

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 degree 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). 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 Patent 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. at 146.  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 patented invention be 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 even the most basic understanding of U.S. history. Nevertheless that argument that patents violate some fundamental tenant of U.S. law 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 issuance of 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” or patent eligible 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, as the Supreme Court did to a very large extent in Mayo v. Prometheus, makes for sensational headlines, allows for enraging 60 Minutes segments and is simple enough even for the masses to understand. Such an understanding of a single question patentability inquiry ignores the Patent Act and at least two centuries of cases, includes scores of decisions from the Supreme Court.

Indeed, Mayo directly contradicts and categorically overrules Diamond v. Diehr. There is just no way that the Supreme Court’s pronouncement of the new legal standard in Mayo does anything other than overrule Section III of Diehr, which explicitly says that the question of novelty plays no role in the determination of patent eligibility.

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, including among those on the Supreme Court.  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.



Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

19 comments so far.

  • [Avatar for The Time Is Now To Act]
    The Time Is Now To Act
    November 16, 2017 11:47 pm

    September 17, 1787, must have been quite a day for those that were there to witness it. Fall in the air, and Thanksgiving around the corner.

    A great day of accomplishment for all involved in the process of framing our Constitution. A great day for America. No doubt on that day, a prayer was said in honor of those loved ones lost in the Revolutionary War. Tears both of joy and sadness shed. The memories of sons, daughters, fathers and mothers lost still fresh in the minds of families and communities. Flowers still brought to graves.

    All that sacrifice. Families separated, generations truncated and marriages that never were to be. Those people laid in all on the line. The Framers knew that they were entrusted with laying the framework.

    ‘In order to form a more perfect union’, is a call to action; a statement of accountability.

    Those sacrifices made worthwhile by finally having access to a land and way of government to call their own. On their own terms. With their own Constitution. Thanks to their sacrifice and vision, and those of generations, we are the beneficiaries; and the stewards,

    As the Framers looked upon the generation before them, they saw sons and daughters, just come of age, who must carry on their name often without their parents. Farmers who could do well for themselves. Former aristocrats who could help build society. Children with bright minds and a world of potential.

    All citizens, thanks to our Constitution, were guaranteed certain rights and filled with the hope of one thing in America. A future prosperity through respect of ones own private property and achievements.

    In today’s educated society, #smart.

    But if we have *actually* come to the conclusion that the Framers envisioned the grand property right bargain between Inventors and their America, enshrined in the Constitution just 4 short years after the war ended, as anything other than a sacred property right, then we have become more FOOL than the TYRANTS we fled and defeated to WIN THE RIGHT TO FREEDOM.

    If anything, our Framers envisioned a MORE sanct, MORE secure, MORE precious PROPERTY right for our new, and future, Americans to fuel an amazing society.

    They ignited the vision of Americans to Invent and be certain they would be rewarded for doing so. We *must* do the same again.

  • [Avatar for Mike Archbold]
    Mike Archbold
    November 16, 2017 08:58 pm

    tenant — sb tenet

  • [Avatar for Ned Heller]
    Ned Heller
    November 16, 2017 06:12 pm

    American Bell II (1897) described the difference between land patents and invention patents. The one takes it from the public and gives to the individual. The other takes from the individual and gives to the public – in exchange for exclusive rights for a limited time.

    The idea that one can take from the individual his property and give it to the public and then renege on the benefit of the bargain, the exclusive right part, is the basic problem with the government position.

  • [Avatar for J. C. Cooper]
    J. C. Cooper
    November 16, 2017 04:47 pm

    I believe the Constitution clearly recognizes, if not outright defines, the creators as the owners. Congress is given the power to secure, this power pertaining to Authors and Inventors and their respective Writings and Discoveries. In my view this wording clearly recognizes that the Authors and Inventors own the respective Writings and Discoveries before the ownership is secured. This has the added support of being logical because the Writings and Discoveries did not exist until they were created by those Authors and Inventors, and could very well elect to keep them secret.That property could be protected from theft in perpetuity by keeping it secret, to the detriment of society, just as with any other private personal property can be protected in perpetuity by one means or another.

    I believe if the framers thought all writings and discoveries were public property, as in the Curious @ 1 China example, and intended for Congress to grant something akin to a hunting license, they surely would have mentioned something about that public ownership.

    This all supports The Time Is Now To Act @ 6 logic for the Grand Bargain.

  • [Avatar for Edward Heller]
    Edward Heller
    November 15, 2017 12:54 pm

    Gene, and fellow posters above, all great comments.

    An essential point regarding “securing,” it does require that an invention exists in the law requires that the invention be disclosed in exchange for exclusive rights for a limited time. For the government to revoke a patent before the limited time has expired, the government will be breaching its contract with the inventor. The inventor has vested rights in the patent because of his reliance interests.

    A second point, the government, and almost all of its amici, have adopted the view of Oren Bracha that patents are not property rights but instruments of government policy discretionarily granted by the “Crown” in order to advance the public interest. Thus the word “prerogative” is bandied about.

    While this may have been true during the time of Elizabeth and before, after the Statute Monopolies, such prerogative patents were completely outlawed in England. Thereafter, (monopoly) patents could only be issued on inventions involving new manufactures. Later, the courts required specifications that described and enabled the invention as a condition for receiving a patent that the public may practice the invention after the patent expired. This is the quid pro quo. This innovation is what makes the patent on new inventions disclosing new manufactures a matter of right of the inventor, his property for the limited time authorized by statute. These are not prerogative rights at all.

  • [Avatar for Curious]
    November 15, 2017 10:53 am

    And, Lost in Norway, I think our Congress is signed, sealed, and delivered to Google.
    Certainly not all — but there are some (on both sides of the aisle) that owe allegiance to Google, and they have enough power to direct legislation in a way that best suits Google.

  • [Avatar for RespectPatents]
    November 15, 2017 09:34 am

    Great piece of writing Gene. Thank you for all you do for our community. You are a great American.

  • [Avatar for Night Writer]
    Night Writer
    November 15, 2017 08:23 am

    @9 EG: thanks. That was very interesting.

    And, Lost in Norway, I think our Congress is signed, sealed, and delivered to Google.

  • [Avatar for Anon]
    November 15, 2017 08:16 am

    The public good fully coincides in both cases with the claims of individuals.”

    This is the counter to the rampant spin that “patents are bad” that exists today.

  • [Avatar for EG]
    November 15, 2017 08:09 am

    Great point Anon about the importance of understanding Locke and its great relevance to the Patent Clause. Professor Adam Mossoff explained that point best in his law review article “WHO CARES WHAT THOMAS JEFFERSON THOUGHT ABOUT PATENTS? REEVALUATING THE PATENT “PRIVILEGE” IN HISTORICAL CONTEXT. SCOTUS, as unfortunately shown in Graham, relies too much upon statements made by Jefferson (who was not a Framer of the Constitutional Convention and was frankly opposed to enactment of our Constitution) for what the Patent Clause means. Instead, SCOTUS should have been citing Jefferson’s protégé, James Madison (who was a Framer), who authored Federalist Paper No. 43 which explains what the Patent and Copyright Clause means. And as Madison clearly says in Federalist Paper No. 43 , patent rights, in the Lockean context, were viewed as important rights of the individual in justifying inclusion of the Patent Clause in the Constitution: “The copyright of authors has been solemnly adjudged in Great Britain to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals.” For others to say now Oil States that patent rights are essentially the equivalent of a “hunting license” is an absurdity.

  • [Avatar for Lost In Norway]
    Lost In Norway
    November 15, 2017 05:10 am

    Thank you Gene. This was an excellent article. One that I am spreading far and wide to those in my circle that need to get it.

    Curious @1,2 – thank you for your contribution.

  • [Avatar for The Time Is Now To Act]
    The Time Is Now To Act
    November 14, 2017 11:18 pm

    Last paragraph of my post- where it incorrectly reads ‘Congress’ and should read ‘SCOTUS’. Apologies for the typo.

  • [Avatar for Night Writer]
    Night Writer
    November 14, 2017 08:48 pm

    I wish I had the link, but I read an article about venture capital about a week ago that said the great search is for inventions that cannot be discerned from their use. I.e., those that can be trade secrets and not taken by the giants.

  • [Avatar for The Time Is Now To Act]
    The Time Is Now To Act
    November 14, 2017 06:31 pm

    Curious @1,2- chilling.

    On a parallel line, this notion in the PTO brief and supportive amici that ‘valuable pre-existent innovations are removed from the public for a limited time’ is outright lie and is Marxist. Truly, Communism is the Administrative State doctrine defined and enshrined.

    Inventions are not existent unless invented and are not disclosed but for the grand bargain of the patent disclosure; which then GIVES the benefit to the public immediately and ultimately IN PERPETUITY after a limited term.

    As Anon notes, clearly the Framers saw something powerful in partnering with and NAMING BY NAME the person and class called the Inventor. No small mention constitutionally speaking.

    Thus, the Grand Bargain works perfectly when harnessing and rewarding the disclosure and use of privately discovered property (inventions) held in secret (for fear of theft).

    Truly, this is an opportunity for Congress to say something profound about the growth of the Administrative state in America. Certainly about, but not in the least way limited to, patents.

  • [Avatar for Anon]
    November 14, 2017 03:27 pm

    Curious @ 1,

    The right “already existing” is a known item. This is formally recognized as the pre-existing inchoate right. The inchoate right becomes a recognized personal property right upon processing by the USPTO and this full legal property aspect inures at the point of grant.

    Granted [pun intended], the use of the word ‘grant’ does apply, but applies to the point in time that the inchoate right becomes a fully “protected” legal right.

    At that point – a critical point – protections afforded property that come from the rest of the Constitution kick in.

    Whether people want to recognize the historical contexts or not (think Locke), the US sovereign from the very start placed a special property aspect to the inventor. This is also reflected in a proper view of Quid Pro Quo: any type of “license” view that does not recognize that TWO parties are making an exchange simply is not in accord with foundational aspects of the US patent law system.

  • [Avatar for Night Writer]
    Night Writer
    November 14, 2017 02:06 pm

    @1, 2 Great comments as usual Curious.

  • [Avatar for David Cohen]
    David Cohen
    November 14, 2017 01:16 pm

    It’s a tenet, not a tenant, that has misguided traction in some circles.

  • [Avatar for Curious]
    November 14, 2017 11:43 am

    To follow up on my previous post, the US Constitution recognizes a difference between a “grant” (by the US Government) and the securing of a right.

    For example, Article I, Section 8, clause 8 reads: “To declare War, grant Letters of Marque and Reprisal ….”
    As another example, Article 1, Section 8, clause 8 reads “No Title of Nobility shall be granted by the United States”
    Regarding the powers of the President, Article 1, Section 2, clause 1, reads “he shall have Power to grant Reprieves and Pardons for Offences against the United States” and clause 3 reads “The President shall have Power to fill up all Vacancies … by granting Commissions.”

  • [Avatar for Curious]
    November 14, 2017 11:19 am

    One of the Oil States briefs pointed out that the Patent Clause of the US Constitution reads “securing … the exclusive Right” with the emphasis on “securing.” The point being (and I’m paraphrasing) is that an inventor’s right to his/her invention already exists, and Congress is empowered to secure that right.

    Importantly, patent rights are NOT a result of “the government …grant[ing] a limited franchise whose scope and contours are wholly defined by the government itself” as argued by the USPTO in their brief in Oil States. The Patent Clause reads “Congress … securing … to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” NOT “Congress … [granting] to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

    Under the Government’s theory, ownership of all intellectual property is largesse from the Government that can be given (or taken away) based upon the whims of the Government. One might think that such an argument was made by someone who admired the works of Marx and Engels — not by the Solicitor of the United States.

    BTW, the following is from this article found on a website associated with Stanford University (

    Karl Marx and Frederick Engels argue in the Communist Manifesto that intellectual property also is always a product of society: “Even when I carry out scientific work, etc., and activity which I can seldom conduct in direct association with other men, I perform a social, because human, act.” From this perspective, all of the theories that reference views on physical property can be appropriately shifted to refer to intellectual property as well.

    In discussing how China once handled Intellectual Property, the article states:
    It instituted a key statement, that “All inventions are the property of the state, and no person or unit may claim monopoly over them. All units throughout the country (including collectively owned units) may make the use of inventions essential to them.”(Collection of Laws and Regulations of the Peole’s [sic] Republic of China) This was to further justify patent law in the idea that all property was collectively owned by the government.

    Compare that last sentence with the USPTO’s brief in Oil States that states “Governmentally conferred franchises designed to serve such purposes create ‘public rights,’ whose scope and continuing effectiveness may be resolved by non-Article III tribunals.”

    Perhaps the Government should have wrote, after the signature line, that “Marx, Engels, and Mao approves of this Brief.”