Public Policies Limiting Patents

  • Patents Are Qualified Public Franchises That Take Rights From The Public: “By ‘issuing patents,’ the PTO ‘take[s] from the public rights of immense value, and bestow[s] them upon the patentee.'” The “statutory requirements prevent the ‘issuance of patents whose effects are to remove existent knowledge from the public domain.’ [S]o, like the PTO’s initial review, the Board’s inter partes review protects ‘the public’s paramount interest in seeing that patent monopolies are kept within their ligitimate scope.” Oil States (U.S. 04/24/2018) (7-2) (Thomas, J.).
  • Imitation Is Necessary To Invention: “Patent law reflects ‘a careful balance between the need to promote innovation’ through patent protection, and the importance of facilitat­ing the ‘imitation and refinement through imitation’ that are ‘necessary to invention itself and the very lifeblood of a competitive economy.’” Halo (U.S. 06/13/2016).
  • Must Carefully Guard The Public’s Right To Use Unpatentable And Formerly Patented Inventions: “This Court has carefully guarded that [patent-expiration] cut-off date, just as it has the patent laws’ subject-matter limits: In case after case, the Court has construed those laws to preclude measures that restrict free access to formerly patented, as well as unpatentable, inventions.” Kimble (U.S. 06/22/2015) (6-3).
  • Public Interest In Limiting Patents To Legitimate Scope: “The public interest, of course, favors the maintenance of a well-functioning patent system. But the ‘public’ also has a ‘paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.’ Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806, 816 (1945). A patentee ‘should not be . . . allowed to exact royalties for the use of an idea . . . that is beyond the scope of the patent monopoly granted.’ Blonder-Tongue Laboratories, Inc. v. University of Ill. Foundation, 402 U.S. 313, 349–350 (1971).” Medtronic (U.S. 01/22/2014) (patent owner has burden of persuasion in a licensee’s DJ action seeking to avoid royalty payments on certain products), rev’g, Medtronic (Fed. Cir. 09/18/12).
  • Patents Are A “Two-Edged Sword”: “Patent protection is, after all, a two-edged sword. On the one hand, the promise of exclusive rights provides monetary incentives that lead to creation, invention, and discovery. On the other hand, that very exclusivity can impede the flow of information that might permit, indeed spur, invention, by, for example, raising the price of using the patented ideas once created, requiring potential users to conduct costly and time-consuming searches of existing patents and pending patent applications, and requiring the negotiation of complex licensing arrangements.” Mayo Collaborative Serv. v. Prometheus Labs. (U.S. 03/20/2012) (unanimous).
  • Patents On Obvious Combinations Harm Public: “For over a half century, the Court has held that a ‘patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.’ Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152 (1950). This is a principal reason for declining to allow patents for what is obvious. … Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.” KSR (U.S. 04/30/2007) (unanimous).
  • Clear Claiming Is Essential: “The patent laws ‘promote the Progress of Science and useful Arts’ by rewarding innovation with a temporary monopoly. U.S. Const., Art. I, § 8, cl. 8. The monopoly is a property right; and like any property right, its boundaries should be clear. This clarity is essential to promote progress, because it enables efficient investment in innovation. A patent holder should know what he owns, and the public should know what he does not. For this reason, the patent laws require inventors to describe their work in ‘full, clear, concise, and exact terms,’ 35 U.S.C. § 112, as part of the delicate balance the law attempts to maintain between inventors, who rely on the promise of the law to bring the invention forth, and the public, which should be encouraged to pursue innovations, creations, and new ideas beyond the inventor’s exclusive rights. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150 (1989).” Festo (U.S. 05/28/2002) (unanimous) (but also noting shortcomings of language creates need for doctrine of equivalents).
  • A Carefully Crafted Bargain: “. . . the patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time. The balance between the interest in motivating innovation and enlightenment by rewarding invention with patent protection on the one hand, and the interest in avoiding monopolies that unnecessarily stifle competition on the other, has been a feature of the federal patent laws since their inception.” Pfaff (U.S. 11/10/1998) (unanimous).
  • Patent System Has Three Purposes: “[W]e reviewed the purposes of the federal patent system. First, patent law seeks to foster and reward invention; second, it promotes disclosure of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires; third, the stringent requirements for patent protection seek to assure that ideas in the public domain remain there for the free use of the public.” Aronson (U.S. 02/28/1979) (patent law does not preclude contract requiring indefinite royalties on product incorporating invention that is subject of pending patent application, if a patent is not granted.)
  • Patents Are Monopolies Which Must Be Kept Within Their Legitimate Scope: “Although recognizing the patent system’s desirable stimulus to invention, we have also viewed the patent as a monopoly which, although sanctioned by law, has the economic consequences attending other monopolies. A patent yielding returns for a device that fails to meet the congressionally imposed criteria of patentability is anomalous. This Court has observed: ‘A patent by its very nature is affected with a public interest. . . . [It] is an exception to the general rule against monopolies and to the right to access to a free and open market. The far-reaching social and economic consequences of a patent, therefore, give the public a paramount interest in seeing that patent monopolies spring from backgrounds free from fraud or other inequitable conduct and that such monopolies are kept within their legitimate scope.’” Blonder Tongue (U.S. 05/03/1971) (unanimous) (citations and fns omitted).
  • Public Policy Encourages Challenges To Patents: “[T]he equities of the licensor do not weigh very heavily when they are balanced against the important public interest in permitting full and free competition in the use of ideas which are in reality a part of the public domain. Licensees may often be the only individuals with enough economic incentive to challenge the patentability of an inventor’s discovery. If they are muzzled, the public may continually be required to pay tribute to would-be monopolists without need or justification.” Lear (U.S. 06/16/1969); see MCM Portfolio (Fed. Cir. 12/02/15) (IPR statute constitutional; Congress “saw powerful reasons to utilize the expertise of the PTO for an important public purpose—to correct the agency’s own errors in issuing patents in the first place.”); Pope Mfg. (U.S. 04/04/1892) (“It is as important to the public that competition should not be repressed by worthless patents, as that the patentee of a really valuable invention should be protected in his monopoly.”)
  • Prerequisites And Limitations On Patents Are “Strictly” Observed And Enforced: “But in rewarding useful invention, the ‘rights and welfare of the community must be fairly dealt with and effectually guarded.’ To that end the prerequisites to obtaining a patent are strictly observed, and when the patent has issued the limitations on its exercise are equally strictly enforced. To begin with, a genuine ‘invention’ or ‘discovery’ must be demonstrated ‘lest in the constant demand for new appliances the heavy hand of tribute be laid on each slight technological advance in an art.’ Once the patent issues, it is strictly construed, it cannot be used to secure any monopoly beyond that contained in the patent, the patentee’s control over the product when it leaves his hands is sharply limited, and the patent monopoly may not be used in disregard of the antitrust laws.” Sears, Roebuck & Co. (U.S. 03/09/1964) (citations omitted).
  • Balancing Inducement To Invention Vs. Embarrassment Of A Private Monopoly: According to Thomas Jefferson, “the patent monopoly was not designed to secure to the inventor his natural right in his discoveries. Rather, it was a reward, an inducement, to bring forth new knowledge. The grant of an exclusive right to an invention was the creation of society—at odds with the inherent free nature of disclosed ideas—and was not to be freely given. Only inventions and discoveries which furthered human knowledge, and were new and useful, justified the special inducement of a limited private monopoly. Jefferson did not believe in granting patents for small details, obvious improvements, or frivolous devices. His writings evidence his insistence upon a high level of patentability. As a member of the patent board for several years, Jefferson saw clearly the difficulty in ‘drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not.’ … The inherent problem was to develop some means of weeding out those inventions which would not be disclosed or devised but for the inducement of a patent.” Graham (U.S. 02/21/1966).
  • Functional Patent Claims And Unclear Claims Impede Progress: “The statutory requirement of particularity and distinctness in claims is met only when they clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise. A zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims would discourage invention only a little less than unequivocal foreclosure of the field.” United Carbon (U.S. 12/07/1942) (unanimous); accord Halliburton Oil (U.S. 11/18/1946) (“unless frightened from the course of experimentation by broad functional claims like these, inventive genius may evolve many more devices to accomplish the same purpose.” “A patentee cannot obtain greater coverage by failing to describe his invention than by describing it as the statute commands.”)
  • Patents Can Create A “Class Of Speculative Schemers”: “The design of the patent laws is to reward those who make some substantial discovery or invention, which adds to our knowledge and makes a step in advance in the useful arts. Such inventors are worthy of all favor. 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. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith.” Atlantic Works (U.S. 1883) (unanimous).
  • TIPS: