Ius et Iustitium is happy to present this guest post by Jake Neu. Mr. Neu is a partner at Bradley Arant Boult Cummings, LLP. This is part one of a two part series. The second part is here.
Adrian Vermeule’s opening post at Ius & Iustitium began with the assertion that “the common good has a much longer and more impressive pedigree within our law than does originalism itself.” He calls this an “obviously large claim[], which I cannot fully substantiate here.” But if Vermeule’s claim is true, then common good jurisprudence should be visible at or just underneath the surface of various fields of American law, even those that do not seem to admit of common good considerations at first glance. One such example to help pay down Vermeule’s debt is patent law.
Patents, which concern innovations and business, would seem to be far removed from considerations of the common good. However, the idea of reserving to inventors rights in their inventions that have “no small utility and benefit to our State” originated in the Venetian Patent Statute of 1474. This system eventually spread throughout Europe. The United States Constitution authorized Congress to establish a patent system “to promote the progress of … useful arts.”[1] This “utility” requirement is codified in Section 101 of the Patent Act, which grants a patent to whoever “invents or discovers any new and useful process, machine, manufacture, or composition of matter.”
Mere invention is not enough, however. Rather, patent law rests on a foundational quid pro quo. The limited-time monopoly is only granted to an inventor who sufficiently discloses the nature of the invention to the public. This disclosure requirement “ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent,” such that the patent grant “helps to foster and enhance the development and disclosure of new ideas and the advancement of scientific knowledge.”[2]
Translated into classical legal doctrine, patent law promotes the common good by acting as an incentive for individuals to disclose their inventions to benefit the general welfare. Therefore, the common good acts as a source—in fact, the primary source—for patent law. Yet this observation is banal and abstract. It does not seemingly animate individual applications of the patent law in routine decisions.
What is more controversial, and yet was also undoubtedly a feature of American patent law from its founding until 1960, was that the utility requirement acted as a substantive limit within patent law to deny rights to inventions injurious to the common good. Return to the Constitution and statute—what does it mean for an invention to be “useful?” In 1817, Justice Joseph Story, sitting as a trial judge in a Massachusetts patent dispute, charged the jury in Lowell v. Lewis:
All that the law requires is, that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. The word ‘useful,’ therefore, is incorporated into the act in contradistinction to mischievous or immoral. For instance, a new invention to poison people, to promote debauchery, or to facilitate private assassination, is not a patentable invention.
This is no mealy-mouthed statement relating patents to some abstract common good. Justice Story sets out a defined limit—if the purpose of a patent is to promote the progress of the useful arts for the common welfare, then it must have some benefit for the common good, or at least not be “mischievous or immoral.” This doctrine came to be known as “beneficial utility.” An invention must have some non-injurious benefit to be patentable. On this basis, two primary groups of inventions, illegal gambling devices and devices primarily useful for deception or fraud, were deemed unpatentable as not “useful” as late as the Great Depression.[3]
The doctrine of beneficial utility is not, as many have supposed, some moralistic graft of external “public policy” onto the body of patent law. Rather, as Justice Story understood, the logic that patents are supposed to benefit the general welfare creates a limit internal to patent law on patentable inventions. Much focus is given to technical novelty and inventiveness, the quid of the quid pro quo underlying patent law. To Justice Story, beneficial utility joined with disclosure rules to ensure the public received the quo.
Nevertheless, the passage of the 1952 Patent Act provided judges opposed to such limits an opportunity to reinterpret the statute to exclude morality, ethics, and illegality from patent jurisprudence. Section 101 of the 1952 Patent Act uses practically the same formulation of “new and useful” inventions that goes back to 1793, and which Justice Story interpreted in Lowell. But in Brenner v. Manson in 1960, the Supreme Court stated a new definition of “minimum practical utility” and expressly renounced Story’s “beneficial utility.” Brenner concerned the usefulness of a new man-made chemical compound that had no known practical use. In the course of determining that such a chemical was not useful (as it lacked some minimum practical use), the Court raised and then threw out Justice Story’s definition of utility:
Justice Story’s language sheds little light on our subject. Narrowly read, it does no more than compel us to decide whether the intention in question is ‘frivolous or insignificant’—a query no easier of application than the one built into the statute. Read more broadly, so as to allow the patenting of any invention not positively harmful to society, it places such a special meaning on the word ‘useful’ that we cannot accept it in the absence of evidence that Congress so intended.
Notably, the Court went out of its way to dismiss Story. Beneficial utility is a different concept altogether from practical utility. One need not address the moral effects of the invention to consider its minimum practical use. These two standards could reasonably coexist.
In any case, Brenner set the course for reading the 1952 Patent Act in a manner that eschewed all considerations of morality, ethics, or social benefit as merely external “public policy” questions irrelevant to the patent law per se. For example, twenty years later in Diamond v. Chakrabarty, a divided Court held that a new, man-made bacteria was a “new and useful … composition of matter” and therefore patentable subject matter. In his textualist majority opinion Chief Justice Burger wrote for the conservative justices, “We have also cautioned that courts should not read into the patent laws limitations and conditions which the legislature has not expressed.” Writing for the liberal justices in dissent, Justice Brennan complained that the 1952 Patent Act was merely a continuation of the patent laws dating back to 1793. Brennan stressed that particularly in matters of “public concern” (i.e., ethical considerations), there had been no intent to discard the judicially developed body of jurisprudence surrounding Section 101 (which includes both patentable subject matter and utility).
Though Chakrabarty did not consider utility at all, the Court’s textualist jurisprudence all but cabined considerations of beneficial utility. Following the lead of Brenner and Chakrabarty, the Federal Circuit finally nailed the door completely shut in Juicy Whip, Inc. v. Orange Bang, Inc. In Juicy Whip, the claimed invention operated in a manner that deceived the user as to how it operated in order to look like (and compete with) another product. The court upheld the patent, holding that regardless of the meaning “useful” may have carried prior to 1952, the “correct view” was that altering a product to look like another was “a specific benefit sufficient to satisfy the statutory requirement of utility.” Since Congress was aware of how to exclude specific inventions from patentability as a matter of public policy, the broad text of the statute, as interpreted by Brenner, should apply. Note here that deception of the user, which in 1900 may have been a basis to invalidate the patent, is here used as the basis to validate the patent. Any injury to the common welfare arising from such deception is deemed a mere “public policy” consideration, not something inherent in the logic of the patent law. Today, it is generally acknowledged that unless Congress expressly removes patent protection for a class of inventions, patentability will not be denied on moral or ethical concerns or illegality.[4]
This brief sketch of the common good as a historical internal limit of patent law raises both a connection to broader concerns regarding textualism and a hypothetical question. First, Justice Story’s own understanding of utility raises an important textualist question—what did “useful” mean at the end of the 18th century? I suspect the jurisprudential meaning of “useful” was reframed to adopt a colloquial meaning stripped of moral valence under the cover of “interpreting” the 1952 codification of patent law. In this sense, Brenner and Juicy Whip are examples of the modern trend to use textualism to achieve a positivist result that severs the law from its original connection to the common good.
Second, suppose that the beneficial utility doctrine were reinvigorated today. After all, the Patent and Copyright Clause expressly limits a patent grant to “the useful arts.” Adopting Justice Story’s original understanding of “useful” could make beneficial utility a constitutional requirement of patent law, and the European Patent Convention even today prohibits patenting of inventions “contrary to ‘ordre public’ or morality.” With that in mind, what could a revived beneficial utility doctrine mean for controversial biotech inventions such as cloning or gene editing? I hope to explore this question in a future post.
Jake Neu
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The Patent and Copyright Clause is often misunderstood. Congress is granted power “[t]o 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.” The parallelism in this clause is intentional. Patents are granted to “inventors” for their “discoveries” to promote the “useful arts”—not “science” (i.e., scientia, or general knowledge, protected by copyrights). This distinction is relevant for the discussion of utility that follows. ↑
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Some exemplary decisions include National Automatic Device Co. v. Lloyd, 40 F. 89 (N.D. Ill. 1889); Reliance Novelty v. Dworzek, 80 F. 902 (N.D. Cal. 1897); Rickard v. Du Bon, 103 F. 868 (2d Cir. 1900); Brewer v. Lichtenstein, 278 F. 512 (7th Cir 1922); and Meyer v. Buckley Mfg., 15 F. Supp. 640 (N.D. Ill. 1936). ↑
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Congress has legislatively excluded two areas of subject matter: inventions related to nuclear energy or weaponry, and inventions that claim a human person. ↑