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The Constitutional Underpinnings of Patent Law

Gene Quinn
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
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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
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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.