Monday, November 21, 2011

Peter S. Menell - The Common Law Development of the American Patent System: What History Can Teach Us

What is the judiciary’s role in developing and evolving patent law? Patent law is essentially a product of the legislature, yet throughout history, courts have been especially active in developing (not just interpreting) this body of law. In The Mixed Heritage of Federal Intellectual Property Law and Ramifications for Statutory Interpretation, Peter Menell, a professor at Stanford Law School and the University of California Berkeley School of Law, illustrates how patent and copyright laws have diverged from the conventional understanding of the Constitutional allocation of law-making authority, and instead have evolved as a mixture of judicial common law and legislative codification and supplementation. In this article, Professor Menell, leads a vastly informative journey from the constitutional beginning of patent law through the modern era, and even provides some insight for the future. According to Menell, this historical context is necessary to properly interpret and apply modern patent law. Professor Menell demonstrates that despite the congressional basis of patent law, the judiciary has always had a large role in developing patent law. As evidence, Menell points to several prominent features of patent law that cannot be found in the United States Code. He also tracks patent law through three distinct periods in history and reveals how the judiciary has played a significant role in shaping the law in each period.

Menell begins his historical analysis by pointing out how, in the formative period, the courts filled the gaps of the “lean” early patent statutes. Operating in a “common law-oriented mode” the courts developed many key patent law doctrines (e.g. non-obviousness, written description, and the doctrine of equivalents) following the Patent Act of 1836. Then, as antitrust concerns became more prominent toward the end of the 19th century, the courts responded by reining in patent law through the development of doctrines such as the exhaustion doctrine, the enablement doctrine, and the patent misuse doctrine. This was achieved because the courts did not tie their interpretation tightly to the “lean” statutory text, but rather used their own logic and experience to create a dynamic and workable system.

The analysis then picks up in the 20th century with the 1952 codification of patent law. Despite the codification, however, the Patent Act of 1952 left many significant patent law doctrines open to judicial tinkering.

In the modern era, patent law has been most affected by advances in digital technology and the establishment of the Federal Circuit. The specialized court has had profound effects on patent law including, as Menell points out, increasing the rate at which patents are upheld and “increasing the velocity of patent jurisprudence.” Under this scheme, modern courts have fine-tuned the standards for willful infringement, reasonably royalties, and non-obviousness. Thus, the court has stepped in to fill the gaps left by a Congress that rarely has patent law on the mind. This trend continues to play an important role the development of patent law today.

Menell concludes by discussing the ramifications of this “mixed heritage” of patent law. Because of the mix of statutory and common law development, Menell suggests that courts need to look beyond the statutes in most cases. This means that courts (and by extension, practitioners) should consider both the historical judicial treatment and the legislative history of patent doctrines to fully understand the contextual background. Only then can the proper interpretive lens be applied to these laws.

Not only does this article provide the reader with a rich account of patent law history (identifying many of the most influential names and cases along the way), but the article also offers a unique perspective with which to understand the nuances of modern patent law. In an era of heavy criticism of the PTO and rejuvenated congressional action, it is important to remember how we got to where we are. With this article, Professor Menell reminds us that patent law is more than just a collection of statutes, and that to fully appreciate it and properly apply it, we must understand the role courts have played in its evolution.

Professor Menell's most recent scholarship includes an article forthcoming in the Stanford Law Review about Infringement Conflation.

Posted by Craig Carpenter (, a third-year student at SMU Dedman School of Law and research assistant to Sarah Tran. His primary scholarship interests are intellectual property, biotechnology, and privacy. He has recently published a case note in the International Lawyer on European biotechnology patent law.

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