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Thomas M. Meshbesher*

The Role of History in Comparative Patent Law

Journal of the Patent & Trademark Office, 78,

September 1996, 594-614

Compiler Press



Civilian law vs. Common Law Mentality

The Origins of European Patent Law

The Public Policy-Driven Origins of Patent Law on the European

   Continent, in England, and in the United States

Economic Policy, Custom, and Patent Practice

From Custom and Practice to Law

The Role of Public Policy Considerations in Comparative Patent



HHC – Index and intro title added


Suppose for a moment that you are a comparatist, steeped in two legal traditions: the common law of England and the civilian tradition of Continental Europe.  You are asked to study a body of law which, unlike common law, did not develop on a case-by-case basis, with stare decisis as its center of gravity, but rather as a patchwork quilt of statutes, each having been enacted by a small state sharing a common language and culture with small neighboring states.  Thus, the gradualist, inductive method of the common law, with its great respect for judicial precedent was hardly in evidence during the early days of the development of this field of law.  Moreover, fundamental public policy issues and balancing of public policy and private rights were confronted head-on during this development; public policy was not some interstitial factor, filling the gaps between precedent, but a major focus of the development.  At some point, the relatively small states were welded into one large nation, and the patchwork quilt of laws was swept away with a single, comprehensive code.  The drafters of the code were not writing on a blank slate, however.  They drew upon their legal traditions and from the statutory experimentation that had preceded their efforts, including a statute which they regarded as the real pioneering effort in this field, a statute which had been drafted in a different country altogether.

Is the foregoing description intended to be a capsule history of the Biirgerliches Recht, the German Civil Code of 1896, which went into effect in 1900 and has been continuously in force ever since?  True, the German Civil Code took its inspiration from the great French Civil Code of 1804, and like its illustrious French predecessor, it swept away a confusing array of laws, replacing these laws with a single, national code. [1]

*Connoly, Bove, Ledge & Hutz, Wilmington, Delaware.

1. F. Deak and M. Rheinstein, “The Development of French and German Law”, 24 Geo. L.J. 551 (1936).


But the intent here was not to describe the history of the German Civil Code, but rather the history of the Patent Act of 1790, [2]  passed in the second session of the First Congress of the United States of America by legislators steeped in the common law tradition.  Although the First Congress met more than three centuries after the world's first patent statute had been enacted, [3] the 1790 Act was probably the most comprehensive attempt at patent law codification that had been seen up to that date.

The point of this little diversion was to illustrate as emphatically as possible that - from the standpoint of what could be called the common law mentality and the civilian mentality - the origins and in some respects the early practice and development of patent law were the product of neither of these ways of thinking, and even today, as in the First Congress, the substantive patent laws of major industrialized countries maintain at least some degree of independence from these ways of thinking.  Even English patent practice did not grow smoothly out of an English common law of patents but arose initially outside of the English court system, and a very early legislative intervention [4] was needed to keep this practice from being drowned in an ocean of royal abuse.

If patent law did not originate because civilian legal draftsmen understood the need for it and legislated accordingly, or because judges, allegedly applying common law in particular cases and controversies, created it, how did it arise?  And why is it important in comparative studies to have some understanding of the origins of patent law?  It is proposed that these questions can be answered this way: the practice of granting patents for inventions in several European countries began

2. Act of April 10, 1790, c. 7, 1 Stat. 109.

3. The identification of the exact beginnings of the granting of some form of privilege to inventors is a debatable subject; it has been suggested that the first patent law in history might date back to 600 B.C., in the Republic of Sibari, in southern Italy, but it would be reasonable to disregard isolated legal experiments of this sort, if they indeed existed, since they made no traceable contribution to the history of patent law as we know it today.  Forman, H.I., “Two Hundred Years of American Patent Law”, in TWO HUNDRED YEARS OF ENGLISH AND AMERICAN PATENT, TRADEMARK AND COPYRIGHT LAW, American Bar Center, Chicago, 21-34, at 24 (1977); by contrast, the impact of fifteenth century Venetian patent law and practice on the history of patent law has been studied by several authors and is well-recognized, hence the first patent statute is usually considered to be the one was enacted in the Republic of Venice in 1474; G. Mandich, Venetian Patents (1450-1550), 30 J.P.O.S. 166 (1948) (translated by F.D. Prager).  Other examples of relatively early patent statutes include the Statute of Monopolies, 21 Jac. 1, Ch. 3, §§5 and 6, and a statute passed in France in 1699, the text of which is set forth in E.C. Walterscheid, “The Early Evolution of the United States Patent Law: Antecedents (Part 1)”, 76 J.P.T.O.S. 697, 712 (1994).

4. 21 Jac. 1, Ch. 3, best known to patent attorneys by its short title, the Statute of Monopolies.


almost entirely outside of “law” (even in the broadest civilian sense of ius or Recht or droit); this practice seems to have grown directly out of the nationalistic economic policymaking of the governments of emerging European nation-states.  Patent practice eventually evolved into a body of “law”, both in the broad sense of ius and the narrow sense of Gesetz or loi, but when history takes us back toward the roots of patent law, we find ourselves entangled in mercantilist economic theory, not the ingenious, case-by-case development of common law or the bold draftsmanship of the civilian codifier.  Today, more than two centuries after the burial of mercantilism under a mountain of scholarly criticism, we cannot ignore the connection between patent law and economic policy issues and other public policy issues, [5] and it is suggested that comparative studies should be sensitive to the historical development of these issues.

Is patent law, because of its unique origins, a field that comparatists can safely set aside as too anomalous, too atypical to be worthy of careful study?  One might get that impression when surveying the holdings of some American law libraries in the field of comparative patent law.  But fortunately, some comparatists have concluded that intellectual property law in general and patent law in particular are especially fertile and important fields for comparative studies.  In Europe, pioneering work has been done by the Max Planck Institute for Foreign and International Patent, Copyright, and Competition Law in Munich, Germany.  In the United States, the Center for Advanced Study and Research on Intellectual Property at the University of Washington School of Law in Seattle, Washington is very active in the field of comparative patent law studies, [6] and one would hope that this trend will expand as well as continue.

In this era of multi-national corporations with large international patent portfolios, it should not be necessary to emphasize the importance of comparative patent law studies.  Today's national patent laws and regional patent conventions and the related jurisprudence can diverge from each other as profoundly as in any other field of law, even though the reasons for this divergence may owe considerably more to different approaches to the public-policy underpinnings of patent law than to differences in the character of legal thought of judges and leg-

5. See generally, Hilton Davis Chemical Co. v. Warner-Jenkinson Company, Inc., 62 F.3d 1512, 1519-1536 (Fed. Cir. 1995), concurring opinion of NEWMAN, Circuit Judge.

6. See, for example, the Ph.D. dissertation of Toshiko Takenaka, University of Washington, “Comparative Study of Patent Claim Interpretation in the United States, Germany, and Japan” (1992).


islators operating under different legal systems.  In any event, each such approach has its own unique history.

To explain the basis for these proposed answers, we begin by reviewing the nature of the thinking that went into the two great legal traditions referred to above, common law and civilian law.



There are vast regions of the world where national legal systems have been heavily influenced by either the civil codes of Continental Europe or by some form of common law directly or ultimately traceable to the common law of England - or by both of these legal traditions.  These regions extend all around the globe and include, for example, the North and South American continents and a large number of Asian countries.  Japan's Civil Code attained its final form in 1896, in parallel with the German Civil Code, and the pre-Communist Chinese Civil Code was influenced by several European civil codes, including the Swiss Civil Code and the Franco-Italian Code of Obligations and Contracts of 1927. [7] The Japanese Civil Code was partially revised during the period of American occupation after World War II, and American legal influence was pervasive during that period. [8] The Hindu law of India has been influenced by the common law and by principles of equity as well. [9] The Philippine legal system is a complicated blend of common law and civilian law, [10] and many more such examples could be cited.  Given this extensive world-wide development of influences and cross-influences, it is risky - perhaps even folly - to try to formulate a simply-stated, comprehensive test for what constitutes either the common law or the civilian mentality.  But since a major point of this discussion is to characterize the uniqueness of the legal thinking which created and developed patent law - uniqueness vis-a-vis both common law and civilian law mentality - some sort of generalizations must be attempted.

For purposes of this discussion, the following generalizations are proposed.  First, with regard to the common law: the common law of England began as a set of customs, but evolved into a settled body of principles or rules of law, universal in application throughout the realm

7. R. Pound, “The Chinese Civil Code in Action”, 29 Tulane L. Rev. 277, 279 (1955).

8. A.C. Oppler, “The Reform of Japan's Legal and Judicial System Under Allied Occupation”, 24 Wash. L. Rev. 290, 317-324 (1949).

9. A. Gledhill, “The Influence of Common Law and Equity on Hindu Law Since 1800”, 3 Int. & Comp. L.Q. 576, 603 (1954).

10. See, for example, In re Shoop, 41 Phil. 213 (Supreme Court of the Philippine Islands, 1920).


and independent of custom, which were “justiciable in the royal courts of England.” [11] From time to time, portions of the common law could become subject to legislative codification or modification, but the mentality of legislators steeped in common law typically imposed two characteristic limitations on such codifications: the resulting codes did not purport to be comprehensive (that is, they did not normally purport to replace completely the body of law that was subject to codification), and they were not usually intended to provide new, original solutions to legal problems. [12]

An extreme example of the common law mentality as applied to codification of pre-existing law can be found in the “definition” of law and equity jurisdiction in a section of the New York Civil Practice Act of 1920. [13] This section does not really set forth a definition but rather an incorporation by reference of earlier law, including some rather antique (by American standards) case law.  No attempt was made by the framers of the Act to lift the heavy hand of the past, and the definition of jurisdiction adopted by the framers is truly devoid of originality:

The general jurisdiction in law and equity which the supreme court of the state possesses under the provisions of the constitution includes all the jurisdiction which was possessed and exercised by the supreme court of the colony of New York at any time, and by the court of chancery in England on the 4th day of July, 1776;... (emphasis added).  [14]

The mentality of continental lawyers can be characterized, very roughly of course, as almost the opposite of what has been described above: the objectives of the first civil codes were to provide a comprehensive, relatively original body of law that supplanted the prior law.  Admittedly, this generalization may be oversimplified.  It has been said that the drafters of the French Civil Code did not completely disregard prior French legal custom, nor did they completely cut themselves off from their “Roman” roots. [15]

11. A.R. Hogue, ORIGINS OF THE COMMON LAW, 5, 186-190 (Liberty Press, Indianapolis 1966).

12. Hogue, op. cit., 186-187; cf. H.C. Gutteridge, COMPARATIVE LAW, 2nd Ed., 77 (Cambridge University Press, 1949)

13. Laws (New York), 1920, ch. 925; the Act became effective on October I, 1921.

14. New York Civil Practice Act of 1920, §64.  The Civil Practice Act was superseded by the New York Civil Practice Law and Rules, Laws 1962, ch. 308, and this 1962 law was amended on March 8, 1990, but the light of the past still burns brightly; the definition of jurisdiction in the Civil Practice Law and Rules, §301, now reads as follows: “A court may exercise such jurisdiction over persons, property, or status as might have been exercised heretofore” [emphasis added].

15. Deak and Rheinstein, op. cit., at 555- 559.


The roots of civilian law can be traced back to the modernus juris Romani; that is, “the law of the Byzantine Empire, as interpreted, and to some extent refashioned, by the Glossators and Post-Glossators, and at a later date by the Pandectists.” [16] In addition to this “Roman” background (the word Roman here refers not to ancient or classical Roman law, but rather to Justinian's Corpus Juris Civilis) continental nation-states such as France had extensive bodies of binding legal customs, which generally lacked force beyond the particular province, district, or even city or village in which they were in effect.  The French sovereigns had their own legislative powers, implemented in the form of royal ordinances which were usually nation-wide in effect.  For example, with the ordinance of Montils-les-Tours of 1453, King Charles VII initiated the compilation and reduction to writing of all “customary” French law, a task which took more than a century to complete.  The Parlement of Paris and the thirteen provincial Parlements had judicial or quasi-judicial functions and served to provide still further sources of law. [17]

The French Revolution brought about broad, sweeping transformations, which, in addition to various administrative and political reforms, began the process of creating a comprehensive new approach to private law. [18] (The distinction between “private” and “public” law can be traced back to the Justinian code; one of the few things that the revolutionary changes in the period from 1789 to the early 1800's did not abolish or transform was this Justinian principle; if anything, the great civil codes which came in the wake of the French Revolution had the effect of intensifying and solidifying the distinction.) [19] A new concept of codification was born during the era which began in 1789: a concept that inherently compelled French codifiers to create new solutions to old problems and to anticipate future developments.  The prevailing contemporary view was that these creative, original efforts should be essentially independent of pre-existing bodies of law. [20] (Again, we must insert a caveat: we must assume that the past continued to exercise some degree of influence on the thinking of the codifiers. [21]) To lawyers educated in the common law tradition, it is natural

16. H.C. Gutteridge, COMPARATIVE LAW, 2nd Ed., 75 (Cambridge University Press, 1949).

17. Deak and Rheinstein, op. cit., at 553-554.

18. Id., at 552.

19. R.B. Schlesinger, COMPARATIVE LAW, 2nd Ed., at 183 (Brooklyn, The Foundation Press, Inc., 1959).

20. Gutteridge, op. cit., at 77.

21. See supra, note 15.


to ask: how were these new rules derived?  Where can one find the guidelines?  According to one professor of comparative law, the creation of these new rules “rest[ed] on the sanguine 18th century belief in the ability of the human mind by its reason to project the solution of future controversies, and to do so in a systematic and comprehensive manner… This technique is still part of the civilian mentality… (emphasis in the original). [22]

However fuzzy at the edges these generalizations may turn out to be, the stark contrast between §64 of the New York Civil Practice Act of 1920, discussed above, and Article 7 of the French Civil Code, as re-promulgated on March 21, 1804, cannot be denied.  Article 7 provides:

From the day when these laws [constituting the Code] become effective, the Roman laws, the ordinances, the general and local customs, the charters and the regulations all cease to have the force either of general or of special law concerning the subjects covered by the present code (emphasis added).

It would be difficult, if not impossible, to find any parallel to the watershed effect of the French Revolution and the drafting of the French Civil Code in the history of the common law, from the reign of England's Henry II down to the present moment, notwithstanding the steadily increasing use of codification in common law countries in relatively recent times. [23] For example, in the case of Bank of England v. Vagliano Brothers, [24] the court did indeed express the opinion that the law of bills, checks, and notes was to be determined by the applicable statute (then the English Bills of Exchange Act of 1882), not the case law which it replaced; however, the statute itself was based upon a digest of some 2,500 decided cases (including leading cases, already a century old at that time, decided by Lord Mansfield) and 17 previous statutes. [25]

More to the point, most of the early English patent legislation (including the Statute of Monopolies and the acts passed in the nineteenth and early twentieth centuries) was intended to solve relatively specific problems.  Insofar as these enactments went beyond a codification of existing case law or well-established administrative practice,

22. Schlesinger, op. cit., at 182.

23. Because of this watershed effect, see generally Deak and Rheinstein, op. cit., and because new rules of law were contemplated by the codifiers, “[t]he history a rule of continental law is…  not a matter of very great importance save in exceptional cases.” Gutteridge, op. cit., 77.

24. [1891] A.C. 107, 60 L.J. 2 B 145, 64 L.T. 353, 55 J.P. 676, 39 W.R. 657, 7 T.L.R. 333.

25 Chalmers, BILLS OF EXCHANGE, 8th Ed., XLI.


they utterly lacked the boldness of civilian-style draftsmanship.  Examples of these rather timid efforts include the patent acts of 1835, [26] 1852, [27] 1883[28] and 1902. [29] Even the Patents and Designs Act of 1907, [30] the first relatively comprehensive legislative version of a truly substantive patent law effective throughout Great Britain, added to but did not replace the Statute of Monopolies, nor did it replace completely the considerable body of judicial interpretation of that statute (which included some rules of patent law which English judges had “no difficulty in finding… were just what the framers of the Statute had in mind in 1624”, despite the Statute's laconic text and failure to address major legal issues that were hardly even recognized, much less litigated, until 150 years later). [31]

To summarize the proposed test for a common law vs. a civilian approach: common law systems tend to prefer codifications which are relatively unoriginal and non-comprehensive or even merely additive, while civil law systems tend to prefer exactly the opposite: original, forward-looking, comprehensive enactments which supplant rather than supplement entire bodies of pre-existing law.



By the test outlined above, one could argue that the first legislative effort (the first effort of historical significance, at least) in the field of patent law owes more to the civilian type of thinking than to the common law mentality, even though this early patent statute was enacted roughly three centuries before the French Revolution.  The statute was enacted in the Venetian Republic in the year 1474 and, as pointed out by E.C. Walterscheid, “it sets forth certain elements that are well recognizable in modern patent law” [32].  The statute took the place of a relatively rudimentary “patent custom” which had probably existed in Venice for several decades. [33] It could therefore said that the 1474 statute

26. 5 & 6 Will. 4, c. 83.

27. 15 & 16 Vict., c. 83.

28. 46 & 47 Vict., c. 57.

29. 2 Edw. 7, c. 34.

30. 7 Edw. 7, c. 29.

31. E. Armitage, “Two Hundred Years of English Patent Law” in TWO HUNDRED YEARS OF ENGLISH AND AMERICAN PATENT, TRADEMARK AND COPYRIGHT LAW, 3-20, at 5-9 (American Bar Center, Chicago 1977).

32. Walterscheid, 76 J.P.T.O.S. at 708; see also Forman, op. cit., at 24.

33. Walterscheid, 76 J.P.T.O.S. at 704-708.  The term “patent custom” was coined by F.D. Prager, “Historic Background and Foundation of American Patent Law”, 5 Am.J.Leg.Hist. 309, 310-311 (1961) and is discussed by Walterscheid in 76 J.P.T.O.S. at 698, f.n. 8.


was forward-looking and sufficiently creative and original to represent a significant (if not revolutionary) departure from the existing body of law or custom.

On the other hand, this bold Venetian legal experiment did not usher in a new era of patent legislation in Europe, nor did it inspire the English to develop a common law of patents.  What other European countries such as Germany, France, the Netherlands, and England derived from the Venetian experience was the need for a “patent custom”; that is, a system, generally in the hands of the sovereign, in which rewards were granted to inventors or importers of inventions in the form of temporary and exclusive rights to exploit the subject matter of the grant.  Even prior to the development of the patent custom in Europe, the introduction or importation of a new industry was viewed as a valuable service to the realm and was encouraged with various inducements.  The inducement might take the form of financial incentives, favorable tax treatment, sovereign protection, or the right to practice the new trade or industry. [34] The patent custom itself had more legal substance than this earlier system of inducements.  In Germany, for example, the patent custom became legally binding, and novelty and operability were considered. [35] However, the granting of patents under the patent customs of Europe continued to be subject to royal discretion, especially in France [36] and England. [37]

England was among the countries influenced by Venetian patent practice, and here the exercise of royal discretion was blatant enough to become controversial.  Grants of letters patent to petitioners for the English Crown's favor took the form of monopolies, and the monopoly power was not necessarily limited to patents on new or imported inventions.  Also included were special licenses dispensing with statutes forbidding the import, export, and transportation of certain commodities, the supervision over a pre-existing trade or industry, and to the right to engage in such pre-existing trades or industries.  Abuses of this immense range of discretionary royal power could and did become rampant.  Moreover, throughout most of the reign of Elizabeth I, the validity of these monopolies was essentially immune from review by England's powerful, independent judiciary.  It was not until the beginning of the seventeenth century that Queen Elizabeth agreed to submit her patent grants to the

34. Walterscheid, 76 J.P.T.O.S. at 705-707 and 711 to 715.

35. Walterscheid, 76 J.P.T.O.S. at 711.

36. Walterscheid, 76 J.P.T.O.S. at 712-713.

37. E.C. Walterscheid, “The Early Evolution of the United States Patent Law: Antecedents (Part 2)”, 76 J.P.T.O.S. 849, at 858-859 (1994).


scrutiny of the English court system, an important step in the transformation of the English patent custom into English patent law.[38]

The concern for private property and individual rights which permeated the great continental civil codes drafted in the nineteenth century was not a factor in the patent customs which arose in sixteenth-century Europe in response to the Venetian experience.  Nowhere in the Europe of that day was it fully understood that the interests of the realm could be advanced through the grant of private property rights. [39]

Thus, the analogies that might be drawn between modern civilian codification concepts and fifteenth century Venetian patent law, however reasonable they might appear, are purely academic.  The Venetian statute did not become a model for widespread adoption as the French, Austrian, and German Civil Codes did centuries later; it was only the patent custom which became the model, and no reasonable analogy can be drawn between the patent customs of the sixteenth century (particularly outside of Italy) and modern civilian concepts.  And a common law of patents in England was not even a possibility until Queen Elizabeth I opened the door to English patent litigation at the beginning of the seventeenth century.

Queen Elizabeth's agreement to let the English court system enter into the field of patents [40] did not, however, put an end to abuses of the sovereign's power to grant patents.  Elizabeth's successor, James I, continued the policy of permitting patent litigation which could test the validity of patent grants, but the abuses also continued.  After two decades of abuse and an increasing outcry against “odious monopolies”, Parliament intervened with legislation.  The result, in 1623-1624 (King James' twenty-first regnal year) was the Statute of Monopolies. [41] Sections 5 and 6 of that famous Statute, which apply to patents of invention, have been variously characterized as nothing more than a codification of the existing common law of patents (which had begun to develop in 1602) or as reaching somewhat beyond the existing common law, but if there be anything more in the Statute than codification of existing law the reach is certainly not far.  The words of the Statute are sparse, and extensive judicial interpretation was required to breathe life into them.

38. Ibid. 849-869.

39. Walterscheid, 76 J.P.T.O.S. at 715.

40. See Darcy v. Allin, 72 Eng. Rep. 830 (Moore 671), 74 Eng. Rep. 1131 (Noy 173), 11 Coke Rep. 86, 1 Abbott's Patent Cases 1 (King's Bench 1602) and the dicta of The Clothworkers of Ipswitch, Godbolt, 252, 1 Abbott's Patent Cases 6, 78 Eng. Rep. 147 (King's Bench 1615).

41. Supra, note 4.


Surprisingly, that breath of life took a long time to arrive.  The Statute seemed to discourage more patent litigation than it encouraged.  There was one seventeenth century case which clarified the scope and content of the Statute by holding that a patent may be granted “if the invention be new in England… though the thing was practiced beyond the sea before…”, [42] but most of the patent cases decided after 1700 and before the late 1770's placed very little meat on the bones of the statutory skeleton.  It was not until the last quarter of the eighteenth century that the common law technique of “statutory construction” (with respect to construction of the Statute of Monopolies, judicial legislation might be a more appropriate term) began to make a major impact upon English patent law. [43]

To American lawyers, this 150-year dearth of important decisions may seem inexplicable, but we can turn for an especially concise explanation to Edward Armitage, a former Comptroller-General of Patents, Designs and Trade Marks who began his service to the British Patent Office in 1939.

This seems to have been a consequence of patents having their origin in the royal prerogative, for the royal grant contained a proviso that it could be revoked by the Privy Council and a practical outcome of this was that questions of validity continued to be decided by the Privy Council notwithstanding the words of the Statute [of Monopolies].  Moreover the courts were recognized to be unsympathetic towards patents and there was therefore a reluctance to litigate them. [44]

So: if the patent custom was really the foundation for the origins of both Continental and English patent law, it is reasonable to say that the effects of common law or civilian thinking upon it would have to wait for a later time, whereas - as we shall see - the effects of nationalistic economic policymaking were immediate and fundamental.



Economic Policy, Custom, and Patent Practice

According to Walterscheid, the impetus for the development of a Venetian patent law as far back as the fifteenth century originated with

42. Edgeberry v. Stephens, Abbott's Patent Cases 8 (1691).

43. E.C. Walterscheid, “The Early Evolution of United States Patent Law: Antecedents (Part 3)”, 77 J.P.T.O.S. 771, at 771-776 (1995); Armitage, op. cit., at 5.

44. Armitage, op. cit., at 5.


the recognition that knowledge of a craft or a technology (the art of glassmaking was very advanced in Venice at that time) could have value in itself, apart from products produced by the craft or technology, and from the further recognition that persons having such knowledge had an individual interest (as opposed to a community-wide or collective guild interest) in guarding that knowledge. [45] The preamble of the Venetian patent statute of 1474 states a governmental policy: encouraging invention by making it unprofitable for infringers to copy the invention “and take the inventor's honor away”.  The concept expressed in the preamble of the Venetian patent statute struck a responsive chord in countries outside of Italy, where many rulers believed that, by attracting or stimulating more invention and innovation, they could “encourage the development of new industries within their realms. “ [46]

The concept of strengthening a nation's economy by creating new industries appears at first glance to be very modern, perhaps too modern for the era when European nation-states were still in their infancy.  But such governmental economic policymaking is nothing new.  Sixteenth-century economic policymakers were virtually obsessed with the desire to introduce, create, or promote new industries in their home countries.  The introduction of new industries were seen as advancing the cause of increasing exports.  The idea of enlisting the legal system in this cause certainly occurred to them, and the statute books became filled with laws whose purpose was to promote exports, prohibit certain imports, or otherwise improve the balance of trade. [47] Perhaps the most outstanding example of these legislative efforts was the enactment of England's so-called Navigation Laws. [48]

In the fifteenth century, economic policy of the emerging nations mostly emphasized bans on the export of coin and bullion (“bullionism”), [49] a policy sometimes viewed as the dark beginning of mercantilism.  By the middle of the sixteenth century, not only was economic nationalism guided and informed by mercantilism, it was possible to say that, intellectually, the policies of mercantilism were taking shape and becoming more coherent.  Because of the criticism of mercantilism by, inter alia, Adam Smith, it is tempting to view mercantilist econom-

45. Walterscheid, 76 J.P.T.O.S. at 704-705.

46. Walterscheid, 76 J.P.T.O.S. at 706; the Venetian statute is set forth on 708-709.

47. 4 THE CAMBRIDGE ECONOMIC HISTORY OF EUROPE, Editors, E.E. Rich and C.H. Wilson, 515 (Cambridge at the University Press, 1967).

48. Id., at 520.

49. Id., at 498.


ics as constructed from “fruitless cares[s]”, ignorance, and confusion, all centered around a doctrine that overemphasized the importance of currency or precious metal exchange.  But in reality, the central doctrine of mercantilism had to do with the balance of trade, not exchange.  Moreover, mercantilist thinking had its practical, empirical side; it was neither dogmatic nor doctrinaire. [50]

Because the goal of a favorable balance of trade was central to mercantilism, a principal objective of economic nationalism in the mercantilist era was to increase exports.  Some contemporary thinkers may have seen the chief benefit of realizing this objective as accumulation of bullion, but for others the benefit was seen to be national self-sufficiency, and an important route to national self-sufficiency was seen to lie with the creation or promotion of new and existing industries, the acquisition of technical expertise, and the protection of markets. [51]

A century or two after the emergence of mercantilism, by which time the economies of important European nations had matured considerably, it may have made far less economic sense to go to excessive lengths to develop a totally new production capability at home, at great expense, when the desired product could simply be purchased at far less expense from a foreign manufacturer.  But if that logic had been pursued too vigorously in the fifteenth and sixteenth centuries, the transition of European national economies from a primitive to an advanced stage might well have been held back for lack of the national resolve needed to climb the steep learning curves of the increasingly sophisticated crafts and technologies then emerging outside of any given nation-state.

For all its failures and absurdities, there was a dynamic element in mercantilist thought.  Faith in the potential ability to learn, develop and expand seemed to survive continual disappointment. [52]

It should therefore not surprise us that, at least as early as the sixteenth century, a ruler of a European nation-state would believe that the stimulation or importation of new inventions could fit nicely into an overall plan for creating new local industry and promoting national self-sufficiency.

Mercantilist thinking, whatever its “failures and absurdities”, was compatible with and probably a compelling argument for a strong pub-

50. Id., at 498-508.

51. Id., at 514-521.

52. Id., at 574.


lic policy in favor of invention and innovation.  The radical reorganization and growth of industry during the industrial revolution, built in part upon inventions such as Richard Arkwright's spinning machine, which he patented in 1769, and James Watt's discovery of a way to use superatmospheric pressure in steam engines (also patented) [53] provides some evidence that this strong public policy in favor of invention and innovation, even if conceptualized as a result of faulty economics, was infused with important elements of realism.

From Custom and Practice to Law

Initially, the patent custom led to the creation of new privileges (as opposed to legally-defined rights) for inventors, innovators, and importers of inventions, but the custom started an evolutionary process, still fueled by public policy and economic considerations, which took on more and more legal character.  This evolution culminated in the development of a rationale for the creation of private rights which were to provide the practical incentive for contributions to the implementation of the policy.

The public policy considerations themselves also continued to develop.  In the sixteenth, seventeenth, and eighteenth centuries, France and the Netherlands made significant contributions to patent practice and to the understanding of policies which could be advanced through the grant of patents to individuals. [54] In addition, the French Revolution engendered a desire to base French patent law upon a natural law, rights-of-man concept, resulting in a patent statute embodying this concept in 1791, but this idea acquired no supporters outside of France, [55] and even the French backed away from the idea four years later. [56] Nevertheless, this short-lived French experiment was valuable, since it appears to have been the first European attempt to create a true private right as the incentive for encouraging individuals to create new inventions. [57]

In England, the process of ruling on petitions or applications for patent, which underwent no major changes in substance for three hundred years—from about 1550 until 1852 - was first in the hands of the

53. See Walterscheid, 77 J.P.T.O.S. at 850-855. Walterscheid notes the connection between mercantilism and the acquisition of new technology at 855.

54. Walterscheid, 76 J.P.T.O.S. at 711-715.

55. Armitage, op. cit., at 4-5; for Thomas Jefferson's rejection of the natural rights theory, see Graham v. John Deere Co. of Kansas City, 383 U.S. 1,8, f.n. 2 (1966).

56. Walterscheid, 76 J.P.T.O.S. at 699, f.n. 10.

57. Walterscheid, 76 J.P.T.O.S. at 715.


Law Officers and later, after 1852, in the hands of the British Patent Office.  Thus, this process was beyond the reach of any English judge until 1932, when the appeal route to the Patent Appeals Tribunal was created. [58] Though the work of the Law Officers and the Patent Office could be characterized as administrative, important contributions to patent practice were made; circumstances that arose in the course of handling petitions and applications for patent were recognized as problematic, and the needs for legislative refinement of the British patent system became clearly recognized. [59]

English judges improvising new legal principles in the guise of statutory construction or application of common law to specific fact situations did not close their eyes to the evolving public-policy underpinnings of patent law.  The contributions of the English judiciary to substantive patent law, beginning in the 1770's, grew significantly throughout the nineteenth century and compensated for the timidity of English patent legislation. [60] Moreover, through litigation, ill-defined, implicit, or unexplained aspects of the patent practices of the Law Officers could be crystallized into explicit rules of law.  An outstanding example of such a transformation from ill-defined practice to rule of law occurred under the guiding hand of Lord Mansfield in the case of Liardet v. Johnson, [61] involving a patent on an important, widely-used coating or decorating composition.  Lord Mansfield instructed the jury that, to find for the patent owner, it must be satisfied that the specification of the patent provided sufficient instruction to enable others besides the patentee to make the composition. [62]  Once the door to this important insight into the public policy of patent law had been opened, there evolved the concept that the public should receive, as consideration for the grant of an exclusive right to an individual for his discovery of an invention, an adequate disclosure of that invention.  By the late eighteenth century, it was clear from English decisions that the patentee was charged with the obligation of teaching others how to practice his invention. [63]

58. Armitage, op. cit., 14-16; 22 & 23 Geo. 5, c. 32; the British Patent Office actually began operations in 1853,33 HALSBURY'S STATUTES OF ENGLAND AND WHALES, 4th Ed., 1 (London, 1993).

59. Armitage, op. cit., at 14-16.

60. Armitage, op. cit., at 5-6.

61. 1 W.P.C. 53; see the discussion and citations in Walterscheid, 77 J.P.T.O.S. at 793-797.

62. Walterscheid, 77 J.P.T.O.S. at 796-797.

63. Armitage, op. cit., at 11.


On the American continent, legislation and administrative practice - as opposed to royal discretion -dominated the development of patent law from the outset.  The Statute of Monopolies was in effect several years before any patent statute was enacted in any American colony, and the colonial patent statutes were, in any event, general laws of general availability to individuals.  In 1641, the Colony of Massachusetts adopted what many believe to be the first of these general patent statutes, and for the rest of the seventeenth and much of the eighteenth centuries, several other colonies followed the example set by Massachusetts.  By the time of the drafting of the Articles of Confederation in 1777, patents on new inventions were being granted by several of the state governments with some regularity. [64]

The colonial patent statutes provided very limited protection, since their scope of enforcement was colony-wide only.  The same was true of patents granted by state governments under the Articles of Confederation. [65] Needless to say, this limited scope of protection provided very little incentive for patentees to undergo the rigors of litigation, unless the patent was of extraordinary importance.  The low level of activity in the colonial courts was at least partially compensated for by legislative innovation and extensive development of administrative practice.  For example, the patent laws of the States of Pennsylvania and New York had requirements for a written description of the invention suitable for inclusion in the letters patent document. [66]

Upon adoption of the United States Constitution, the U.S. Congress was authorized to create a national patent law. [67] The First Congress turned its attention to the drafting of the first U.S. Patent Act not long thereafter, and the result was the Act of 1790. [68] The Act of 1790 was a major milestone in the history of patent law, generally.  It established important basic principles of patent law on a national level.

To an American patent lawyer used to dealing with Title 35 of the U.S. Code, which, even without annotations, is the size of a small book, the Act of 1790 looks very concise, to say the least.  But when the Act is viewed from a realistic historical perspective (cf. its English predecessor, the Statute of Monopolies!), its most striking feature becomes its comprehensiveness.  The following brief outline will serve to summarize the provisions of the 1790 Act:

64. Forman, op. cit., at 25-26.

65. Id., at 26.

66. Id., at 25-26.

67. U.S. Constitution, Article I, §8, clause 8.

68. Act of April 10, 1790, supra note 2.


First, there was no degree of governmental discretion comparable to the discretion exercised by the English sovereign or the Privy Council; anyone could obtain a patent upon petition to certain governmental officials if the invention met certain statutory criteria. [69] This concept of obtaining a patent as matter of right upon conformance to strictly legal requirements may in fact be constitutional as well as statutory.  Article I, §8 of the U.S. Constitution provides that the government shall “secure” the rights of authors and inventors - implying that the law simply provides the means for defining and protecting rights that already exist or ought to exist. [70]

Second, the grant of a patent was conditioned upon the delivery to the Secretary of State of “a specification in writing, containing a description” (accompanied, where appropriate, by “drafts or models”) of the invention to be patented.  The description had to be sufficiently “particular” so as “not only to distinguish the invention or discovery from other things before known and used, but also to enable a workman or other person skilled in the art… to make, construct, or use the same, to the end that the public may have the full benefit thereof, after the expiration of the patent term…”. [71] Moreover, a “copy of any such specification” had to be provided by the Secretary of State to any person requesting the same, at the requester's expense. [72]

Third, areas of patentable subject matter were defined and were said to encompass “any useful art, manufacture, engine, machine, or device, or any improvement therein”. [73]

Fourth, the term of the patent was set to match that of the Statute of Monopolies, section 6, i.e. fourteen years. [74]

Fifth, the standard of patentability was prescribed, i.e. “not before known or used”, and at least two of the designated governmental officials had to conclude that the invention was “sufficiently useful and important”. [75]

Sixth, statutory evidentiary presumptions favoring the patentee were created, and the patentee's rights and remedies were defined, as were the specific defenses made available to a defendant in an action for infringement. [76]

Finally, fees for filing the petition and obtaining issuance of the patent were fixed by statute. [77]

69 Id., §1.

70 But see supra note 55. It is interesting that Thomas Jefferson rejected the “natural rights” theory of patent law, since Jefferson used the term “secure” in the Declaration of Independence in much the same sense as the term is used in Article 1, §8, clause 8 of the Constitution; cf. Forman, op. cit., 27-28.

71. Act of April 10, 1790, §2.

72. Id., §3.

73. Id., § I.

74. Id., §1.

75. Id., §1.

76. Id., §§4 to 6.

77. Id., §7.


One could hardly characterize this comprehensive statutory scheme enacted by the First Congress in 1790 as a mere codification of a common law of patents, be it American common law, English common law, or some combination of the two.  For example, English patent law, both judge-made and statutory, had not attempted to define patentable subject matter in the same detail as the Act of 1790. [78] Moreover, the Americans responsible for the drafting of a national patent law were aware of contemporary French patent law concepts. [79]

The Act could be said to be fundamental, comprehensive, basic, and/or bold - anything but timid, incomplete, or housekeeping in nature. Though America's first national patent code was soon to be revised in 1793, one can see in it the framework or model for the nineteenth and twentieth century revisions, including the even more comprehensive and equally famous 1836, [80] 1870, [81] and 1952 [82] patent codes.

Without reviewing the entire history of colonial patent legislation and administration and the brief but important history of state patent legislation and administration under the Articles of Confederation, it is impossible to estimate with certainty the degree of influence that French legal thinking had upon the drafting of the Act of 1790, but a bit of the bold flavor of civilian draftsmanship seems to be reflected in the words of the Act.  Insofar as the delegates to the Constitutional Convention and the First Congress looked to the past, they could not help but find more to guide them in American history (almost 150 years of patent law and practice) than in English history. [83] This first American patent code represented a fresh start into the field, somewhat analogous to the fresh starts provided by the French and German Civil Codes vis-a-vis the confusing array of laws of pre-Revolutionary France and of the small German states that had an independent status prior to German unification.

Of course, no one can deny that common law played a role in the American experience with patents and patent law, but this experience demonstrates the difficulty of characterizing the substantive aspects of American patent law mentality as strictly and entirely common law (or English) in nature.  Some degree of American legal innovation, however characterized, should be acknowledged.  The economic and public pol-

78. Armitage, op. cit., at 8-9.

79. Walterscheid, 76 J.P.T.O.S. at 712; see also 698-699, In. 9.

80. Act of July 4, 1836, c. 357, 5 Stat. 117.

81. Act of July 8, 1870, c. 230, 16 Stat. 198.

82. Act of July 19, 1952, c. 950, 66 Stat. 792.

83. See Forman, op. cit., at 25-29.


icy theories and practices which recognized the benefits obtainable from encouraging invention had to play a role also, and these theories and policies were never exclusively English; indeed, as we have seen these policies arose first in the Venetian Republic and then spread rapidly to much of the Continent as well as to England.



The unique character of each of the various national patent systems becomes apparent when comparing the patent statutes and jurisprudence of Japan, Germany, and the United States.  Japanese patent law is German in origin but, since World War II, has been strongly influenced by U.S. law.  Moreover, a number of Japanese decisions place a uniquely high value upon legal certainty in claim interpretation. [84] By contrast, the traditional (pre-1981) German view was that a court charged with the task of deciding infringement questions had wide latitude in protecting the “general inventive idea” (allegemeiner Erfindungsgedanke) disclosed in a German patent. [85] Courts in the United States have taken a position which might be characterized as generally intermediate between the strictest of the Japanese decisions and the traditional German view.  Through the doctrine of equivalents, U.S. courts have found ways to liberate themselves from a strictly literal application of the claim language to an accused product or process.”

Encouragement of invention is central to U.S. patent law [87] and can be traced all the way back to the rationale for the patent custom on the European Continent and in England. [88] It is also central to German patent

84. Tanaka, op. cit., at 442 and cases cited, especially Lajance National de Parorisasion de la Ruchershe v. Funai Yakuhin K.K. (Osaka Hi. Ct., April 27, 1977) 9 MUTAISHU 406.

85. Under pre-1981 German law, if a “general inventive idea” can be gleaned from a patent, the normal range of subject matter which would be recognized as the “subject of the invention” (Gegenstand der Erfindung) can be expanded in scope to provide additional patent protection.  Krasser, R. (based on Bernhardt, W.), Lehrbuch des Patentrechts, 4th Ed., C.H. Beck'sche Verlagsbuchhandlung, Munich, at 512 (1986); see, for example, Judgment of the Reichsgericht of February 9, 1910, Entscheidungen des Reichsgerichls in Zivilsachen, Vol. 30, No. 13, 54-58 (1913); Alfred F. Crotti, “The Allegemeine Erfindungsgedanke in the German Patent”, 39 J.P.O.S. 477-501 (1957).

86. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 607-609, 85 USPQ 328, 330 (1950); Hilton-Davis Chemical Co. v. Warner-Jenkinson Company, Inc., 62 F.3d 1512, 35 USPQ2d 1641 (Fed. Cir. 1995).

87. See, for example, Mazer v. Stein, 347 U.S. 201, 219, 100 USPQ 325, 333 (1954); James Madison, Federalist Paper No. 43; cf. S.C. Oppenheim, “A New Approach to Evaluation of the American Patent System”, 33 J.P.O.S. 555, 564-565 (1951).

88. Walterscheid, 76 J.P.T.O.S. at 7041-715.


law. [89] But we have seen that the policy underpinnings of the various national patent laws have been under continuous development for centuries.  One of the more recent aspects of this development, common to U.S. and Japanese patent law and Article 69 of the European Patent Convention (which Article is now part of Germany's patent law and has been in effect since 1981 [90]) embodies the policy of providing a well-defined, legally certain notice to the public of the patentee's rights, reflecting a public policy favoring competition in invention itself in addition to competition in products and services.  (When a competitor has a good grasp of the scope of the patentee's rights, it facilitates research and development having the objective of further advancing the technology by “designing around” the patent.) [91] Both policies, encouragement of invention and stimulation of competition in invention, are laudable and partially reconcilable.  But the precise manner in which the two policies are reconciled and applied in any given case can be influenced greatly by prevailing national views of the relative importance of these policies, and hence the varying results of this reconciliation constitute a particularly important and fruitful area for comparative studies.

Five hundred years of legal history have not eliminated or even weakened the close ties between patents and economic policymaking, and these ties now extend to multilateral economic policymaking, as evidenced by the Agreement on Trade-Related Aspects of Intellectual Property Rights (resulting from the GATT Uruguay Round).  For example, Article 27 of that Agreement seeks to solve a trade-related problem stemming from discrimination in the grant or enforcement of patent rights based on the area of technology, place of invention, or whether the product is imported or locally made.  Enactment of U.S. legislation implementing the Agreement [92] has therefore necessitated, for example, substantial revision of the provisions of 35 U.S. Code § 104, so that inventors carrying out inventive activity outside of the United States will have the same opportunity to prove their date of invention (e.g. for interference purposes) as domestic inventors.

89. Tanaka, op. cit., 7.

90. Patentgesetz (patent law of the Federal Republic of Germany), § 14.

91. State Indust. Inc. v. AO Smith Corp, 751 F.2d 1226, 1236, 224 USPQ 418, 424 (Fed. Cir. 1985); for early American judicial expressions of the public policy of adequate notice to competitors or consumers regarding the scope of the patentee's rights, see Keystone Bridge Co. v. Phoenix Iron Co., 95 US (5 Otto) 274, 278 (1877); Merrill v. Yeomans, 94 US (4 Otto) 568, 573-574 (1876); Evans v. Eaton, 20 US (7 Wheat.) 356, 434-435 (1822).

92. P.L. 103-465, the GATT Uruguay Round-implementing legislation passed by the U.S. Congress and signed into law by President Clinton on December 8, 1994.



This brief sketch of the last five centuries of patent law and practice suggests that the perceived need for patents of invention was largely a product of the national economic policies of emerging nation-states. Most certainly the mercantilistic economic theories of these emerging nations were plagued by gross misconceptions, but there was a practical side to mercantilism that was in touch with genuine economic realities - such as the notion that new, technologically sophisticated industries would increase exports of value-added products and thereby strengthen the relatively primitive national economies of that era.  These realistic economic ideas evolved into practical legal theories of patent protection, because judges and legislatures came to realize that important public policies could be advanced through the grant of private rights to inventors . Too often laymen (and a good many general lawyers as well) tend to view all patent law questions as arcane, technical, legalistic, or even purely linguistic or lexical.  Given a view this narrow, comparative studies begin to look like an even more arcane exercise, about as useful in the modern industrial world as a medieval theological discussion.  Yet the truth is that virtually all patent law questions of practical significance are infused with the central public policy considerations which have been briefly referred to in this article. [93]

We have seen that civilian lawyers normally give little weight or consideration to the period of “ancient law” (l'ancien droit), the law of civilian jurisdictions prior to the codifications which came in the wake of the French Revolution, whereas common lawyers seem almost spellbound by a legal history that dates back to the twelfth or thirteenth century - a trait which must seem stuffy or excessively academic and impractical to civilian lawyers.  In the application of the comparative method to patent law, however, this peculiar trait of common lawyers has practical as well as academic significance.  Perhaps the most important role of history in the use of the comparative method is to keep the focus of the comparative study from wandering too far from the concerns of economics and public policy which gave this body of law its first and most enduring surge of vitality.

93. The delineation and application of the doctrine of equivalents is an excellent example; see generally, Hilton Davis, 62 F.3d 1519-1536 (Fed. Cir. 1995).