THE “PRIVILEGE” CUSTOM, 1400-1700

AT THE TIME OF FORMATION of the United States the patenting of inventions already was an age-old practice.  The legal forms of letters patent were not only time-honored but time-worn.  The American Revolution destroyed many of the ancient customs; it brought a sweeping reorientation of patent law, with new forms, new rules, new concepts, and new ideals.

The magnitude of the change becomes clear when we compare the patent law, newly written in and about 1787, with the earlier customs the evidence of which can still be found. [1] Parts of the picture, it is true, are missing.  Attempts have been made but rarely to write a history of patents. [2] It appears that some legal propositions were clear while others were controversial about 1787; the history of both deserves careful review.

Enough appears from extant documents to show that medieval rulers had generally used expedients other than monopoly patents to encourage industry but that monopoly patents became usual shortly after 1400 in mining regions of

* Patent attorney, Abington, Pennsylvania.

1. See mainly the English articles of E. W. HULME, L.Q.R. 12:141 (1896); 13:313 (1897); 16:44 (1900); 18:280 (1902); and 33:63 (1917); German articles of F. HOFFMANN in Z. F. Industrierecht 10:85 (1915) and H. POHLMANN in G.R.U.R. 1960: 272 (the latter about to be translated in J. Pat. Off. Soe'y.); Italian articles of G. MANDICH published in 1936 and 1957 and translated in J. Pat. Off. Soc'y. 30:166 (1948) and 42:378 (1960); French article of I. ISORE in Rev. Hist. De Droit Fr. et Etr. 1937:94; and the book of G. DOORMAN, Patents for Inventions in the Netherlands during the 16th, 17th and 18th Centuries (1942).

2. The principal attempts are those of A. A. GOMME, Patents of Invention, Origin and Growth of the Patent System in Britain (1946) and E. B. INLOW (Anglo-American History of) The Patent Grant (1950).

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eastern Germany and in maritime and mining districts of Venice.  Immigrant workers from Italy and elsewhere brought the patent custom to all major parts of Europe shortly after 1500. [3]

When the patent custom was relatively new, the crown usually abused it.  It then became necessary for a court or legislature to impose a restrictive rule.  Such a rule was imposed on the German Emperor in 1512 and on the English King in 1624. [4] By means of such rules and also by other amendments, the law developed during the ages preceding the foundation of American patent law, but basic characteristics of the customary patent law and practice remained substantially unchanged throughout this long era.

For instance, it was and remained customary that a so-called privilege was issued after some examination of models and tests.  The privilege purported to convey certain monopoly rights of limited duration and scope to the man who had first imported or invented a new manufacture; the usual term was about ten or twenty years and the scope was to be coextensive with the newly imported or newly invented manufacture.  The privilege was often sold, devised, or used as partnership stock; it was considered personal property as a. matter of course.  If it was found after the grant that the manufacture was not

3. About the medieval practice see, for instance, the well-known accounts of JOHN KEMPE, etc., Inlow 15 s or Walker on Patents (Deller's ed., 1937) 2 s.  About the earliest monopoly patents presently known see A. ZYCHA in Z. F. Rechtsgeschichte, Germ. Abt., 59:208 (1940); the research of Meldau, cited therein; and Mandich (1960).  The spreading of the system has been described by M. FRUMKIN, “The Origin of Patents,” etc., Chambers's J. 1943:21 (repr. in J. Pat. Off. Soc'y 27:143, 1945); Trans. Chart. Inst. Pat. Agents 1947-8:20; Arch. Int. D'Hist. des Sciences 1954:315; also by HULME (1896) and A. C. RENOUARD, Traite Des Brevets (1825).  Some parts of RENOTJARD'S account have been reported in English, for instance by Phillips on Patents, 1837.

4. About the act of 1512 see ZYCHA 228 ss.  Not enough has been published about it, even in German.  On the other hand a wealth of detail is usually copied and rewritten from the old accounts of the act of 1624 (21 Jac. I ch. 3, WALKER 1:18-21) and its local background; these details being derived from DAVID HUME, Hist. of England (1752), either directly or through Collier on. Patents (1803), Coryton on Patents (1855), etc.  This one-sided emphasis has produced very misleading accounts of patent history, for instance in Robinson on Patents (1890) 1:3-36; INLOW 17-32; H. G. Fox, Monopolies and Patents (1947).

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really newly imported or newly invented, courts were ready to void the privilege.  In addition there was authority, Lord Coke included, for holding an inventor's privilege invalid if the novelty in it merely amounted to a “light difference” or a “mere addition.”  [5]

When a patent was denied, the decision was beyond appeal, since it was customary for the petitioners to appear before officers reporting directly to the highest authority in the state.  If the report was favorable to the petitioner's claim, the sovereign usually signed letters patent purporting as mentioned to grant certain rights.  English patents said that the kings or queens by “special grace, certain knowledge, and mere motion… do give and grant full and sole license, power, privilege and authority unto the said [inventor], his executors, administrators, and assigns, that he and they only… shall and may… make… the said [invention].”  Similar expressions occurred in patents of other monarchies.  They go back to the very dark ages when inventors and mechanics had needed armed protection safely to ply their trade unless they had entered the king's own service or household.  The monarchs had obviously come to confuse their power to protect with a power to license.  The subjects, in turn, had come to accept this latter power - until the American Revolution.

Early settlers brought the patent custom to America.  In rural colonial times, patents were of course rare.  It is interesting to note that in America, their form was relatively modern.  Although the inventors employed the conventional  formula of “humbly beseeching” the sovereign, a colonial legislature or governor, this sovereign refrained from declaring

5. The typical course of patent examination is described by MANDICH (1948) 185-190; ISORE 120-125; POHLMANN 276; DOORMAN 33 s; as to England, some limited side lights may be noted in HULME {1917).  The property character of the privilege (denied by INLOW 60 without evidence) seems clear from MANDICH 182, 191; ZYCHA 230; ISORE 109 s; DOORMAN 22; and, in England, from the conventional form of the patent grant, cited in the next paragraph.  The legal requirement of novelty and inventive merit can be noted in MANDICH (1948) 177; !SORE 117-120; POHLMANN 275; HULME (1902) 283 and mainly Bireot's case, 3 Coke Inst. 183 s, Webster Pat. Case (1844) 31.  Also see the still earlier cases noted by ROBINSON 1:11.

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that any “special grace” was involved.  The colony simply “conceived it fit” to issue the patent.[6]

It is important to note that there was much uncertainty in the early patent practice, throughout its long existence and uniformly in all countries and colonies.  The reason for the uncertainty was that the custom failed to provide suitable procedures for determining the central question of patents - the question of novelty.

For instance, examination of patent proposals was not within the jurisdiction of any specified office.  No one was likely to know or to find the prior art. [7] The procedure was difficult; tribunals and counsel had to use the unfamiliar technique of examining and demonstrating models.  An opposition could arise at any odd moment.  The oppositions were principally the work of guilds surviving in some of the English and continental industries.  The guilds, with rare exceptions, were hostile to patents and even to inventions.  Only the colonies, being deprived of the alleged “skill” and “secrets” of the homeland guilds, were also free of guild stagnation. [8] This latter fact, whether then realized or not, must have contributed to the development of an independent, positive attitude of Americans with regard to inventions and patents.

Patent disclosures were just as coarse and unsatisfactory as were the patent procedures.  It is true that medieval courts and councils had been in the habit of examining models of

6. INLOW 39-42; P. L. FEDERICO, “Colonial Monopolies and Patents,” J. Pat. Off. Soc'y. 11:358 (1929); F. W. DAMN, “Colonial Patents,” ibid. 3:342 (1921); WALKER 28-32.  Also see WEEDEN, Ec. and Soc. Hist. of New England (1890) 1:63 on mill monopolies, etc.

7. MANDICH (1948) 186; ISORE 112-114; DOORMAN 21 and 33-36; A. A. GOMME, “Patent Practice in the 18th Century: The Diary of Samuel Taylor, 1722/3,” J. Pat. Off. Soc'y. 19:256 (1937).  Also see INLOW 25; POHLMANN 275, 280; and D. S. DAVIES, “Early History of the Patent Specification,” L.Q.R. 50:86 (1934).

8. It was widely felt in Europe, but sharply denied in America, that “improvements in mechanism” tend to “abridge employment.”  See T. G. FESSENDEN, Law of Patents (1810) IX-XII.  Also see WEEDEN 1:86, 175, 274, 309, etc. and INLOW 37 s. Cases of guild opposition to patents are noted in RENOUARD 102-109; ISORE 118-120; DOORMAN 13 s and HULME (1900) 45 and (1917) 65-70, 182-192.  Not enough is known about the taxation of patents and patented enterprises by both state and guilds; only minor details are noted by DAVIES 108; POHLMANN 278; DOORMAN 18.

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newly claimed inventions and that it gradually became usual, almost everywhere, also to examine written and illustrated specifications. [9] However, the written disclosures were not made available to industry.  They were only “enrolled” in dusty books of government.

It is also true that a full-scale working of a patented invention was more or less consistently required in most countries; but even such working, if it was effected, could not make it clear what was new or changed or improved in a machine or process.  Only one effective way of disclosing an invention has thus far been devised: prompt, official publication of a printed, illustrated specification.  Nothing such was provided, not even when applicants began to furnish written specifi­cations. [10]

The result of these conditions was that Europeans, in the seventeenth century, took no great pride in the old institution of patents, while Americans hardly knew about it.  Yet the people were fascinated with the achievements of science and industry.  A significant attitude toward patents was expressed by the British statute of 1624, which limited itself to the showing of an awareness that patents can be “lacking in novelty, or contrary to law, or mischievous to the state…, or hurt of trade, or generally inconvenient.”  In each of these cases, a patent was void.  The statute said nothing about meritorious functions of patents, nothing about patent disclosures, and nothing about patent procedures; it was only directed against patent abuses.  A similar attitude was reflected by statutory law in other countries, prior to the reorientation of patent thinking brought about by America. [11]

The customary law, however, recognized patents.  It indicated basic requirements for them and when these appeared to

9. POHLMANN 275; DAVIES.  Some apparent irregularities are noted by DOORMAN 22 s.

10. See POHLMANN, DAVIES and DOORMAN, ibid; also MANDICH (1948) 187-190; ISORE 110, 116; HOFFMANN 114 s.  The printing of patents or patent abstracts (initially limited in most countries to expired patents) began in France about 1735, in. America 1832; in England 1850; and in Germany 1877.

11. French law of 1762, see ISORE 96; German law of 1512, see note 4.  The only early statute truly regulating patents was that of Venice, 1474, published by MANDICH (1948) 176 s.

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be fulfilled, society tacitly recognized a claim of the inventor.  Some documents even said expressly that the issue of patents to inventors is “equitable.” [12]

 

OPINION AND CONTROVERSY ON “INTELLECTUAL PROPERTY,”

1700-1774

In the Anglo-American sphere the patent custom was classifiable as common law.  High courts of England held in 1602 and 1615 that under “common law,” as well as under “civil law,” the king had no general power to grant exclusive rights but that, by “prescription” (ancient custom), the king could issue monopoly patents to inventors.  The statute of 1624 repeated these rules; it was an act declaratory of this prior law.  Corresponding statutes which soon began to appear in New England can be interpreted in the same way. [13]

An important question, however, remained without full answer for some time: the question of whether the king had a common law duty, along with his common law power, to issue a patent when an invention was presented.  Another form of the question is whether the rights of inventors had their origin in the common law, in the statute, or perhaps in some residue of the asserted royal power.  The practical importance of the question is that a common law right is likely to be implemented and interpreted more liberally.

A variety of answers to the question were proposed or suggested during the interval between the English statute and the American Constitution.  For instance, as the early customs were still followed, at least in form, the kings continued to assert possession of “knowledge” and the exercise of “grace.”  The colonies, as mentioned, used legal formulas of less medieval tenor.

Another formula was used by state councils, courts and legislatures looking to the benefit of the country.  From their viewpoint, exclusive rights and exclusive grants appeared justifiable when they “encouraged” an activity such as research, which was then, as much as now, assumed to be in the public interest.  Legal expression was given to this idea, for

12 MANDICH (1948) 184; POHLMANN 274; HuLATE (1897) 315; DOORMAN 14, 18, 21.

13 WALKER 1:12-22; FEDERICO 358 s.

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instance, in the title of a British act of 1709 : “An Act for the Encouragement of Learning by vesting the Copies of printed Books in the Authors or Purchasers of such Copies, during the Times therein mentioned.” [14]

The inventors and authors themselves, together with some of their friends, represented still another viewpoint.  It was their influence which had brought forth the occasional recognition that patents are “equitable;” and it was only a short step from that recognition to the claim of “intellectual property.”  The man who makes a piece of furniture, a tool, a wagon or the like is almost universally recognized as being the owner of his product until he sells it or gives it away or allows it to be appropriated by other persons or by the public.  Why, then, should the creator of a new concept not own this concept until he sells it or gives it away or until he has exposed it to public cognizance for some considerable length of time?

In 1769 the majority of a high English court considered this view and held that an author has a common law property right in his work and that the statute passed in 1709 which regulated authors' rights merely implemented and supplemented this common law right.  The statute could have abridged the common law right but only by express language, which it did not contain. [15]

The decision became controversial due to another English case handed down five years later wherein the court majority either disagreed with the basic common law view or interpreted the statute differently; it is not clear which of these views the opinion really announced, although each view was expressed by at least some of the judges.  There was doubt and misunderstanding among them with respect to the nature of the intellectual property assumed in the former decision, about the creation of such property and mainly about the question of how such property is lost, by or after the publication of the work.  Some of this doubt, in fact, is still prevalent among

14. 8 Anne ch. 19; see H. RANSON, The First Copyright Statute (1956).

15. Millar v. Taylor, 1 Burr. 2303; INLOW 64 s.

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lawyers. [16] This, however, is not the place to discuss the question systematically.

This is merely the place to note that in various parts of the world, notably including for instance France, society gave increasing approval, during the eighteenth century, to the view that the rights of authors and inventors rest on customary law, the continental equivalent of common law - not basically on statutes or codes (a creation of later times), and certainly not on royal grants (in spite of surviving formalities).  Some writers also equated the customary law with so-called natural law. [17]

 

THE SYNTHESIS OF 1775-1788

The eighteenth century brought further important developments.  Majorities of the people began to see that human progress is possible and that it can be promoted.  This idea had been held but rarely in ancient and medieval times but had gained widespread acceptance by the influence of reformation and enlightment.  In the colonies, Franklin was foremost in promoting it. [18]

Thus it appears that two concepts grew simultaneously: a broader and deeper concept justifying the customary state action for the encouragement of invention, and an equitable concept of inventors' property claims.  In America the growth of these ideas was unhampered by guilds and royal formalities; and the nation was fortunate in having men such as Franklin, of clear thought, mechanical experience, and statesmanship.  In the period which brought the establishment of federal law, the direct and indirect influence of ideas so developed and matured became paramount.

16. Donaldson v. Becket, 4 Burr. 2408 (1774), quoted or misquoted in most copyright books and occasionally in the patent literature; a misleading quotation is given for instance by INLOW 65 s.  The extensive 18th century literature, discussing this case, is collected by TH. SOLBERG, Bibliography of Lit. Property.

17. For the history of this development until ca. 1550 see F. D. PRAGER, “The Early Growth and Influence of Intellectual Property,” J. Pat. Off. Soc'y. 34:106 (1952); for the next 200 years, ibid. 26:711 (1944); and for the time about 1787, ibid. 36:157 (1954).

18. J. B. BURY, The Idea of Progress (Dover ed., 1955) 1-176 and C. BEARD'S Introduction, ibid. XXXVII.

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The legislative influence of such ideas began, in fact, prior to the federal period.  Most of the states passed copyright acts in the early 1780's and one of them passed a combined copyright and patent act.  The preambles of the acts recited the public benefit derived from the encouragement of learning and the private equity lying in the recognition of intellectual property.  Simultaneously with the legal recognition came a great and sudden rise of popular interest in manufacture and invention. [19]

It was also recognized that federal rather than statewide legislation was needed in this field.  Therefore, when the federal convention of 1787 came to consider questions of such legislation, provision for patents and copyrights was urged by a number of interested persons.

Such provision was urged for instance by a man who operated a steamboat on the river a few blocks from Convention hall, and who claimed the basic invention of steamboats.  The same provision was urged by no one less than Washington on behalf of a rival of this man.  The debate of the steamboat builders was known to influential members of the Convention.  It appears that the debate found an echo in the wording adopted for the constitutional reference to creative men: in the securement to them of the right to their “respective” creations.  The word “respective,” which had not been used until then, seems to suggest that each new creation be considered individually and with precision and that it be distinguished from the work of contemporaries and predecessors. [20] The custom, as shown, had largely failed to do so.

Before the clause was enacted, Madison and others sub-

19. K. FENNING, “The Origin of the Patent and Copyright Clause,” J. Pat. Off. Soc'y. 11:438 (1929); TH. SOLBERG, Copyright Enactments (1906) ; P. J. FEDERICO, “State Patents,” J. Pat. Off. Soc'y. 13:166 (1931); INLOW 43-45.

20. F. D. PRAGER, “The Steamboat Pioneers before the Founding Fathers,” J. Pat. Off. Soc'y. 37:486 (1955).  The word “respective” may serve additionally, or instead, to correlate “writings” with “science” and “discoveries” with “useful arts,” a correlation which has been proposed by R. B. DEWOLFE, An Outline of Copyright Law (1925) 15; K. LUTZ, “Patents and Science,” J. Pat. Off. Soc'y. 32:83 (1950) and G. S. RICH, “Principles of Patentability,” ibid. 42:75 (1960).  In the present essay no attempt is made to review the evidence for or against this proposal.

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mitted drafts providing either separate or combined copyright and patent clauses.  Some of these drafts proposed to “secure copyrights” to authors and to “secure benefits” of discoveries to inventors; other drafts used the conventional terms “to grant” and “to encourage.” [21] The term “grant” was rejected by the founding fathers.  The other terms were modified; their ideas were synthesized into the new, historic formula giving power to Congress “to 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.”  [22]

This was the first announcement of any modern nation that patents for invention were going to be a means of progress.

This also was the first act which can be held to imply and confirm the decision that intellectual property attaches to intellectual creation according to preexisting right and law.  The clause can clearly be interpreted as saying that Congress will, by patent act, secure, confirm and implement the right already existing under the common law.

It was so interpreted at the time, as shown by The Federalist of 1788.  One of the authors of this paper, probably Madison, wrote about the copyright and patent clause: “The utility of this power will scarcely be questioned.  The copyright of authors has been solemnly adjudged in Great Britain to be a right at Common Law.  The right to useful inventions seems with equal reason to belong to the inventors.”  The Federalist has been recognized as a valid source of interpretation of the Constitution.  It seems proper to hold that its considerations were those of the founders, especially here, in a field where no other considerations appear on the convention record. [23] It can therefore be said, opposing views notwithstanding, that in the United States the common law right of inventors should be

21. Note that the meaning of “to secure” definitely was “to insure,” not “to provide,” in the phrase “to secure benefits.”

22. Art. I, sec. 8, par. 8.  Regarding interpretation of this clause, and related matters, see also, for instance, S. LICHTENSTEIN & al, The Meaning of “Writings” and W. STRAUSS, The Moral Right of the Author in Studies 1-4 on Copyright Revision, 86th Congress, 1. session (1960).

23. Cohen v. Virginia, 6 Wheat. (19 U. S.) 264 (1821).  The quoted statement occurs in No. 43 of The Federalist.

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recognized, prior to any statutory right, by constitutional sanction.

Common law had binding force in America in and before 1787. [24] In the field of writings and inventions, The Federalist supported the majority view of 1769 and the limited interpretation of the majority view of 1774, assuming a common law right.  This was very acceptable in view of the then recent history and law of this field.  The Federalist added brief reference to the idea of encouraging or promoting the arts: “The public good fully coincides in both cases (copyrights and rights to inventions) with the claims of individuals.”

The text of the Constitutional patent clause is consistent with these views of The Federalist and the legal and legislative history is consistent with both.  No known document of the convention period is to other effect.

It seems proper to conclude that the Constitutional clause was intended to give expression to several ideas suggested by proposals and controversies of the then recent past.  It endorsed the idea of progress and of state action to promote it, an idea not nearly so obvious then as it has become after and under the clause.  It agreed with basic ideas of former acts for the encouragement of learning.  It also agreed with the basic idea that authors and inventors have common law rights to the exclusive use of their creations; in this area it added a word of caution, most pertinent because of the then pending controversy about the nature, the extent, and the expiration of intellectual property: Congress should make sure that such property will not be of excessive duration.  The clause also added, apparently as a further caution, that such property of each author and inventor should be defined by the precise limits of his respective creation.  Fundamentally the clause approved the patent and copyright customs but it refrained from the use of some customary terms, such as “privilege” or “grant,” and it authorized Congress to change the customary

24. See W. W. CROSSKEY, Polities and the Constitution (1953), who demonstrates this fact as to patent law (1:421), copyright law (1:477­486) and general law (1:578-640).  In the 19th century the existence of a federal common law was often denied, for instance in Wheaton v. Peters, 8 Pet. (33 U. S.) 591 (1834), without adequate historic analysis and with questionable legal arguments.

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law in other ways.  These interpretations are suggested by the background history, although narrower views of the clause and of an inventor's right are frequently encountered. [25]

 

THE LEGISLATION OF 1789-90

Whatever may be the exact meaning of the patent clause, it was a new and hopeful beginning.  It became a historic achievement by the legislative effort which followed at once.

A number of inventors expected that the new Congress would secure their rights by passing private laws, one for each of their respective inventions.  The states had issued patents in such form.  However, general patent statutes were also known; the philosophy of the Constitution seemed to favor uniform securement of rights rather than the granting of individual favors; delegation of the congressional power to a suitable fact-finding organization was recommended; and such delegation was apparently known to be possible and proper. [26]

Thus it came about that a general bill, based on the clause, was ready in the early part of 1789, when Congress first assembled.  Noah Webster, who had long been active in matters of copyright legislation, wrote at this time the draft of a combined copyright and patent law. [27]

25. Views more or less similar to the present one have been stated in Story's Commentaries on the Constitution (1833) 3:48; Jones v. Sewall, 3 Cliff. 563 (1873), rev. on other grounds in Sewall v. Jones, 91 U. S. 171 (1875); ROBINSON 1:15, 2:469 ss, etc. Also note the patent act of 1861, 12 Stat. 130, WALKER 1:565, which refers to American statutes granting “or confirming” the exclusive rights of inventors.  Contra: Gaylor v. Wilder, 10 How. (51 U. S.) 476, 492-495 (1850) and subsequent cases; WALKER 2:1152 s, citing some of the cases.  Partly contra: INLOW 59-68.  It seems clear that the opponents of the common law patent right have overlooked large areas of the legal history of patents; in addition some of them, like WALKER 2:1152 have operated with untenable theories of general legal history, such as the assertion that “the common law was developing in England during the so-called middle ages” (only).

26. F. D. PRAGER, “The Steamboat Interference,” J. Pat. Off. Soc'y 40: 679 s (1958) ; also see the congressional abstract, ibid. 22:243 (1940).

27. F. D. PRAGER (1954) 157-159. Webster's bill was printed (C. EVANS, American Bibliography, 7:368) but no copy has been found to date.  The recent Bibliography of the Writings of Noah Webster (1958) does not mention either the manuscript or the print or the fact that Webster, as shown by his diary, wrote the bill.

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Within two weeks, this was followed by a congressional order that an official bill or bills be brought in by a committee of three representatives: Huntington, Cadwalader and Contee.  Within another two months this committee presented its combined patent and copyright bill, known as HR 10. [28]

This bill in turn was followed in the early part of 1790 by separate bills, the patent bill being known as HR 41 and being written by a modified House committee, including representative Burke instead of Contee.  It was debated, changed, and in its final form adopted by the House.  It then went to the Senate, where a committee consisting of Senators Carroll, Johnson, Few, Maclay and Paterson proposed a number of important changes.  In further proceedings the Congress agreed that several of these changes be adopted. [29]

Until recently these drafts and bills seemed lost.  A few years ago a citation of material from one such bill was discovered. [30] Then came the discovery of a substantially complete, unofficial copy of a combined copyright and patent bill. [31] Since only one such bill is known to have existed, the document seems to be a copy of HR 10.  The previous draft of Webster is still missing, but we have the subsequent HR 41, as approved by the House.  The legislative history of our first patent act has thus become fairly clear.  Its nature and effect in the creation of the American patent system can now be outlined.

The bill, identified with HR 10, started with copyright provisions, largely inspired by the English copyright statute of 1709; these were only slightly amended before they became sections 1 and 3 of the Copyright Act of 1790.  Then came the patent provisions of this bill.  They were as follows :

“And be it further enacted, That upon the petition of any person or persons to _____ setting forth that he, she, or they, hath or have invented or discovered any art, manufac-

28. J. Pat. Off. Soc'y 22:243, 246, 249, 356 (1940).  The book of INLOW, published ten years later, overlooks these documents and gives a very erroneous legislative history of the early American patent acts.  The writings of Huntington etc., if any, are unknown.

29. J. Pat. Off. Soc'y 22:256 s, 264, 269 s, 271-276, 356-368 (1940).

30. PRAGER (1954) 162.

31. By Miss Wilma Davis, then of the Congressional Library, who found it in a letterpress copy book of the late Th. Solberg, see L. C. info. Bull. 14:30:13 (1955).

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ture, engine, machine, invention or device, or any improvement upon, or in some art, manufacture, engine, machine, invention or device, not before known or used, it shall and may be lawful for the said _____ to direct an advertisement to be inserted, at the costs and charges of the petitioner in some two of the public papers for the term of weeks, one at least in each week, giving notice of such application, and containing a short and general definition of the invention or discovery, requiring all persons concerned to appear before the said _____ at a certain day and place in the said advertisement to be inserted, not less than _____ days, nor more than next _____ following, to shew cause why letters patent under the great seal of the United States, should not issue, granting to such petitioner or petitioners the sole and exclusive right, liberty and privilege, of making, constructing, using and vending to others, the inventions, discoveries, or improvements aforesaid … [32]

“And it is hereby further enacted, That the grantee or grantees of each patent shall within one calendar month, next after the sealing and delivery to him or them of each patent, deliver to the _____ a specification in writing, containing a perfect and exact description, accompanied with drafts and explanations (if the subject matter of such inventions and discoveries shall require the same in order to be understood) of the thing or things by him or them invented or discovered, and generally described as aforesaid in the said patents; which specifications shall be so particular as not only to distinguish the invention from other things before known, but also to enable a workman or other person skilled in the art, science or manufacture whereof it is a branch, or wherewith it may be nearest connected, 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 … [32]

32. Here followed a clause providing that “if sufficient cause shall not be shown to the contrary” the officer was required to cause a patent to be made out for the invention “so to be described.”

33. If the opposer showed such cause against a patent as appeared “reasonable” to the officer, the latter had to refer the parties to the Chief Justice and one other Justice of the Supreme Court for a hearing.  These [Justices were expected to issue a “certificate”, which was to be followed by the officer.  Next, the bill provided for patent enforcement and patent repeal.]

HHC: [bracketed] displayed on page 323 of original

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“And be it further enacted, That in all actions to be brought by such patentee or patentees . . . the said patents .. shall be prima fade evidence that the said patentee or patentees, was or were the first and true inventor or inventors, discoverer or discoverers of the thing so specified, and that the same is truly specified; but that nevertheless the defendant or defendants may plead the general issue…” etc.

Congress, as already mentioned, applied some modifications to this plan. [34]  It dealt with the problems of specifications and procedures.  The House of Representatives made it more explicit that it was to be the administrative officer, not the patent petitioner, who shall “make out” the advertisement giving a brief definition of the invention.  The entire opposition procedure was then eliminated by the Senate and it was provided that the administrative officer or board decide whether the petitioner's invention was “sufficiently useful and important” to deserve a patent.

Congress, however, retained the provision that a description of the invention was to be “made out” by government; and in the inventor's own final specification the invention had to be “described as aforesaid.”  Thus was established the first system wherein the scope of a patented invention is worked out between the petitioner and his government: the system which is now used by all major industrial nations.  In 1790 it was entirely new.  It was however in keeping with the rule of 1787 that different authors and inventors be secured in their “respective” rights.

Congress applied other amendments to the bill.  It changed the list of patentable subjects, clarifying it to some extent.  It also modified the disclosure concept.  The bill used the clause “person skilled in the art, science or manufacture” to identify the normal reader of a patent; Congress eliminated the word “Science.”  The House changed the phrase “distinguish the invention from other things before known”; it added “and used within the United States.”  The Senate then removed the

34 J. Pat. Off. Soc'y 22:243-288, 352-371 (1940).

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local limitation, so that the clause finally read: “distinguish the invention from other things before known and used.”

For the enforcement of patents the bill proposed an action of “debt, bill, plaint or information, wherein no protection or wager of law, nor more than one imparlance shall be allowed.”  Congress amended this to an action “on the case.”  The bill suggested a regulation of priority contests; it contemplated hearings before Supreme Court justices, the administrative officer, and a special jury.  The House tried to simplify this.  The Senate removed it entirely; it added this matter to certain others which, according to the bill, were to be considered in a possible suit for patent repeal.  In England [35] this system had been used for several centuries.

Finally, the Senate tried to add a provision for compulsory licenses, which had also been usual in England and elsewhere. [36] The House rejected it.

The resulting statute was enacted in 1790.[37] That year may accordingly be considered as marking the end of the period of mere common law in the regulation of patents.  A very new departure was made.  Patent petitions had always been examined but the system of 1787-1790 provided the first clearly regulated procedure for such examination.  It made the first serious attempt to secure to each inventor-applicant an exclusive right which accurately covered his own invention.  This, by itself, became a most powerful stimulus to conceive ideas and to perfect them.  Patents had long included specifications; the new system provided the first specifications developed by timely negotiation between inventor and government.  Thus it provided better specifications, documents more fair to inventors and to the public.  It surrounded them, for

35. HULME (1917).

36. English “declaration” of 1639 and practice from the middle ages to about 1711: DAVIES (1934) 101 etc.; French law of 1762: ISORE 96 etc.  Also see DOORMAN 26 s and MANDICH (1948) 189.  However, there was and is confusion between “working obligations” and “model requirements”; the history of these concepts is in need of detailed review.

37. 1 Stat. 109; WALKER 1:514.

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the first time, with a presumption of validity; this, too, was a powerful stimulus to invent and to patent.  The new system was not only the end of patents granted by royal favor - it was the beginning of a period of patents recognized as a means of progress.

The act of 1790 was not of course the last word in the history of patent law.  It failed to take a clear stand in the question of common law rights of inventors.  It contained remainders of obsolete systems.  In fact some such remainders are still with us; so for instance is the term “patent grant,” a medieval term which we are giving up only with difficulty. [38]

America has later on experimented with the more primitive procedures of the background period, she has, however, soon returned to the basic rules of 1790.  These rules, and their underlying concepts, have also been adopted by the other major nations of the world. [39] The amendment of patent law, brought about by America, has thus become worldwide.

38. See for instance 35 USC 151, 152 (1952) : “The patent shall issue…”; “Patents may be granted…”

39. French act of 1791 and German act of 1877, both of course influenced also by British law; British act of 1883, etc.

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