Table of Contents:

Introduction to the online version


Preface to the printed version

Copyright Overview

Software Copyright

Digital Copyright

Patent Overview

- History

- Why Patents?

- What Can Be Patented

- Getting A Utility Patent

- Novelty

- Anticipation And Obviousness

- Nature Of A Patent

- Infringement

Software Patents

Full treatise table of contents

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Chapter 4: An Overview of Patents

I. History

Patents as a way for government to promote innovation by rewarding an inventor with a monopoly on his or her invention for a limited term predate the founding of the United States. The English Statute of Monopolies of 1623 provided an exception to its general condemnation of monopolies by providing the “true and first inventor” of a new manufacture up to fourteen years of exclusivity as long as “they be not contrary to the law nor mischievous to the state by raising prices of commodities at home, or hurt of trade, or generally inconvenient.”

With the new Constitution, the Congress was given the power “to promote the Progress of Science and the useful Arts, by securing, for limited Times, to Authors and Inventors, the exclusive Right to their respective Writings and Discoveries.” {FN1: U.S. Const., Article I, §8} the “Patent and Copyright Clause.” As the terms were used at that time, “science” referred to knowledge, and the “useful arts” are what we now call technology. One can see that there are two parallel themes running through the clause: science-authors-writings and useful arts-inventors-discoveries.

I.A. The Patent Act of 1790

The First Congress passed the first United States patent law during its second session, and President Washington signed it into law on April 10, 1790 (49 days before Rhode Island ratified the Constitution and became the thirteenth state). It authorized the granting of a patent for “any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used.” The invention also had to be “sufficiently useful and important.” The term for a patent was fourteen years, following the lead of the English Statute of Monopolies.

The decision to grant a patent resided with three cabinet members: the Secretary of State (Thomas Jefferson), the Secretary of War (Henry Knox), and the Attorney General (Edmund Randolph), collectively referred to as the Commissioners for the Promotion of the Useful Arts. The first patent, for a method for producing potash, was issued on July 31, 1790.

I.B. The Patent Act of 1793

It was difficult for the three cabinet members to find time in their busy schedules to decide whether a patent should be issued. In 1793, Congress passed a new patent law that went to the other extreme – no examination of an application was performed before a patent was issued. That does not mean that all requirements for a patent were abolished. Patents were limited to “any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter.” (The same language continues today as Section 101, {FN2: 35 U.S.C. §101} with the more contemporary term “process” replacing “art” in a 1952 recodification.) While the requirement that the patented invention had to be useful continued, it was no longer necessary that it be “important,” a difficult thing to decide at the time when something has just been invented.

Instead of examining a patent application to determine whether the invention met the requirements of the Act, it was up to the courts to declare a patent invalid if it lacked novelty or was not properly described in the application. As more patents were issued, this became a burden on the courts.

I.C. The Patent Act of 1836

The Patent Act of 1836 restored examination of applications before a patent was granted, but this time placed the responsibility with a Patent Office that was not charged with other responsibilities. It required that the applicant not only describe his or her invention, but include claim language to determine the scope of the patent. It required that the invention not be on sale or in public use at the time of the application, although in 1839 Congress amended the law to provide a two-year grace period before filing an application (shortened to the current one year in 1939).

The patent term of fourteen years could also be extended up to seven more years upon application to the Commissioner of the Patent Office. If there were objections to an extension, a board consisting of the Secretary of State, the Commissioner of the Patent Office, and the Solicitor of the Treasury would decide if an extension would be granted and the length of any extension. This was changed in 1861 to a fixed term of seventeen years.

I.D. Later Recodifications

In 1870 and again in 1952, Congress recodified the patent laws. These recodifications did not make major changes to the patent system established by the Patent Act of 1936 but clarified many of the Patent Office procedures (such as establishing a formal interference procedure when two applications attempt to claim the same invention) and incorporated (or, in some cases, altered) the various court decisions regarding the patentability of an invention and the requirements for receiving a patent.

In 1995, the patent term was changed from seventeen years from the issuance of the patent to twenty years from the filing date of the first application leading to the patent. Since the average pendency of a patent application at that time was under two years, this generally provided for an increased patent term. However, delays caused by the Patent Office could increase the pendency of an application to more than three years, resulting in a patent term of less than seventeen years. In 1999, Congress enacted the American Inventors Protection Act {FN3: Pub. L. 106-113, 113 Stat. 1501A-552} which guaranteed a patent term of seventeen years for diligent applicants.

Next section: Why Patents?

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