My New Book: Unfettered Invention - How the X Patents Sparked Early American Technology

 Alas, I haven't posted much lately. I hoped to regain the pace I had before becoming an administrator, but it has not happened yet. However, I figured the release of my new book was worthy of a post. 

Along with co-authors Scott Guthery and Julie Burke, we have published Unfettered Invention: How the X Patents Sparked Early American Technology.

Here is the description from the sales page, which is pretty complete:

Between 1790 and 1835, inventors simply described their ideas in an application form, sent with a $30 fee to Washington, DC. Almost 10,000 applications streamed into the newly created Patent Office, describing looms, water wheels, printing presses, pumps, bridges, and all the other technologies that powered early American industry. The ideas ranged from breakthroughs to small improvements to dead ends. Taken together, they offered an extraordinary window into the technological imagination of the founding era.

Then they were all destroyed in a catastrophic 1836 Patent Office fire. That same year, Congress passed a new patent act, setting more stringent requirements and restarting the patent numbering system. As a few thousand of the early applications were recreated over time, they were designated as “X Patents.”

The authors analyzed almost two hundred years of patent recovery attempts, and then went searching for more. They combed through scattered archival records, auction catalogs, courthouse filings, local museums, private collections, and US records repositories. A deep dive into the pages of The Franklin Journal, whose editor, Dr. Thomas Pascal Jones, tracked patent filings during the X patent era, revealed previously untapped records.

The result is a fascinating, eye-opening story of how the X patents ignited and shaped America’s appetite for innovation in everything from butter churns, washing machines, pumps, plows, spinning machinery, and printing presses to the most demanding engineering problems of the age: steam engines, locomotives, suspension bridges, automated mills, hydraulic machinery, and the transformation of the traditional water wheel into the modern water turbine.

Unfettered Invention starts by describing the chaotic early years of the Patent Office, followed by the rapid evolution of America's intellectual property law from twenty-seven words in the US Constitution to the writing of the Patent Act of 1836, the foundation of today's patent system. These chapters reveal how thinking about patents and a patent system matured over time, and describe key court cases addressing the thorny issues that the patent system underpinning an industrializing nation needed to address.

In the Notables chapter, the authors review high-impact X-patent inventions and the innovators who created them. These include commercially successful breakthroughs such as Cyrus McCormick's reaper. Other inventions had an impact despite being too far ahead of their time for mass production, for example, Samuel Morey's internal combustion engine.

The core of Unfettered Invention is the seven specific technical domains: bridges, water wheels, mathematical instruments, looms, printing presses, pumps, and railroads, describing the evolution of each technology as it adapted to the emerging needs of an industrializing nation. Bridges had to go over broader rivers, looms had to weave new kinds of fabric and do it faster, railroads had to get over the Appalachian Mountains, pumps had to drive city water systems, and water wheels had to be more efficient. These chapters document attempts to make technology work faster, cheaper, safer, more reliably, and, most importantly, at scale.

The book concludes with an appendix that describes in more detail the data that the authors used to build the story of the X patents.

For patent attorneys and IP professionals, the book offers a rare look at what American patent practice looked like before examination existed. For readers of technology and industrial history, the book is a fascinating account of a nation teaching itself to invent,

Part legal history, part technological archaeology, part detective story: Unfettered Invention captures early American industrial history.

It is available in hardback and paper - I hope you give it a look!

 

New Free Patent Casebook by Masur & Ouellette

As previously announced, I have been writing a new free patent law casebook with Prof. Jonathan Masur (Chicago Law), and we're very grateful to everyone who has provided helpful comments on the beta edition over the past year.

We are excited to be releasing the 1st edition. You can download a free PDF or purchase an at-cost color printed copy through Amazon here: https://www.patentcasebook.org/

We've tried to achieve a number of goals with this project beyond simply lowering the cost of course materials:

• The casebook is heavily problem-focused, including problems that can be used for out-of-class assignments, in-class multiple-choice polls, and small-group activities. Some problems are drawn from real cases, while others are hypotheticals constructed to isolate and explain difficult concepts.
• A key goal was bringing conceptual clarity to the details of modern patent practice, which means that cases are very heavily edited, some topics are presented through means other than case excerpts, and we have many diagrams and notes to help explain the points that are most likely to trip students up.
• Finally, we have worked to place patent law in its social context, including by surfacing issues of race and gender and exploring the connections between patent law and inequality among innovators and inequality in access to innovations.

For adopting instructors, we have an accompanying slide deck (including many multiple-choice questions and figures from the patents at issue in excerpted cases) and a teacher's manual with answers to practice problems and suggestions for Q&A with students about cases. We are also happy to share a Word version of the casebook.

The casebook is licensed under a Creative Commons Attribution-NonCommercial-NoDerivatives 4.0 International License. We are likely willing to authorize many derivative uses; please contact us to discuss.

If you have questions, suggestions, or interest in adopting the casebook, please let us know at ouellette@law.stanford.edu and jmasur@uchicago.edu.

We're delighted that patent law instructors will have multiple free course materials to choose from for the coming academic year. For those looking for free or low-cost options across different areas of IP, James Grimmelmann maintains a helpful compilation here.

Are patents the cause of—or solution to—COVID-19 vaccine innovation problems? (No!)

By Jacob S. Sherkow, Lisa Larrimore Ouellette, Nicholson Price, and Rachel Sachs

Are patents the cause of—or solution to—COVID-19 vaccine innovation problems? A number of recent commentaries have suggested as much, and have advocated for either weakening or strengthening patents covering various aspects of COVID-19 vaccines. Turning to patent law to address innovation problems may seem natural, as legal scholars conventionally view patent law as “our primary policy tool to promote innovation.” But there is a reason we have written over thirty posts on COVID-19 innovation issues without a single post focused on patent law (until now): many other legal institutions have turned out to be far more important. This is particularly true for vaccines. In this post, we explain why either eliminating or strengthening patents would have little effect on the rollout of vaccines for this pandemic, and why non-patent institutions will play a far more important role than patent law in incentivizing innovation for the next pandemic.

Patents and Science Fiction: Does Science Fiction Promote Innovation?

Dan Brean and I have just posted a new essay called Enabling Science Fiction. We wrote the essay for the upcoming Association of American Law Schools panel: Science Fiction and the Law, co-sponsored by Biolaw and Intellectual Property. The panel, put together by Nicholson Price, will take place at AALS on January 8th at 11AM EST, and will feature myself (Camilla Hrdy), Dan Brean, Marc Blitz, Deven Desai, and Victoria Sutton.  

The full version of Enabling Science Fiction can be downloaded on SSRN. The essay itself, which will be published in a symposium issue in Michigan Technology Law Review, is under 8000 words. This is like 20% of an average law review article, but below is an even shorter excerpt. We welcome your comments! (chrdy@uakron.edu).

In recent years, patent scholars [such as Janet Freilich and Lisa Ouellette] have [observed that, thanks to lax disclosure and enablement rules] patent examiners are allowing inventors to achieve patents on what seems, quite literally, like "science fiction."

But of course, this is an exaggeration: what’s acceptable in patent law pales in comparison to what is acceptable in literary science fiction. In science fiction, undue experimentation isn’t just permitted, it’s encouraged. Reduction to practice can be, literally, light years away.  ...

However, we argue that, counterintuitively, the genre of science fiction has its own unique enablement requirement: works of science fiction must sufficiently explain—enable—the technologies and inventions that they posit.  ...  

Trade Secrets and Prior Art

I have published an article entitled "The Trade Secrecy Standard for Patent Prior Art," co-authored with Sharon K. Sandeen. 

The article, which is forthcoming in American University Law Review, argues that patent prior art cases can be explained using concepts of publicness and secrecy that match those used in trade secret law. In other words, what counts as prior art against a patent pursuant to 35 U.S.C. § 102 (2011) is informed by the definition of a trade secret pursuant to 18 U.S.C. § 1839 (3) (2016).

The paper can be downloaded here. I've posted an excerpt below, applying the trade secrecy standard for patent prior art to the Supreme Court's interpretation of a "public use" in Egbert v. Lippman.

The origin of [the Federal Circuit's] seemingly counterintuitive notion of what makes a use “public” is usually traced to the Supreme Court’s holding in Egbert v. Lippman. In Egbert, the inventor of an improved corset spring (Samuel Barnes) gave two samples of the invention to Francis Lee Egbert (Mr. Barnes’ then girlfriend and eventual wife). She wore them for more than two years before Mr. Barnes applied for a patent; and they allegedly showed and explained the corset spring to a friend, Joseph Sturgis, who came over to Mr. Barnes’ house for dinner. Even though the spring was sewn into a corset and therefore, by its nature, was not visible to the public, the Court held it was in “public use” because it was given “to another” (to Frances and to Mr. Sturgis) “to be used” by them “without limitation or restriction, or injunction of secrecy.”

This holding baffled the dissenting Justice Miller, who wrote rhetorically that “[i]f the little steep spring inserted in a single pair of corsets, and used by only one woman, covered by her outer-clothing, and in a position always withheld from public observation,” was a “public use,” then he was “a loss to know the line between a private and a public use.”

But the trade secrecy standard explains how the Egbert Court drew “the line between a private and a public use.” The Court’s concept of a “public use” was, in its own words, any sharing of the invention with another for use, without placing them under an “injunction of secrecy[.]” The Court’s use of this phrase, “injunction of secrecy,” is unlikely to be coincidence. This phrase appeared in contemporary trade secret cases to refer to a duty of confidentiality that might give rise to an injunction.

In trade secret law, a court might have found that—although the corset spring was neither generally known in the industry nor readily ascertainable by proper means—it had not been the subject of reasonable efforts to maintain its secrecy, given how liberally Barnes shared it with his girlfriend and house guests, without placing them under contractual or other restrictions that would have imposed an obligation of confidentiality. 

We might debate whether this was the right decision, from the perspective of trade secret law and modern domestic relationships. In trade secret law, a duty to maintain secrecy does not necessarily have to be written down. It depends upon the circumstances. Even if not expressly stated, a duty to maintain secrecy can be inferred if, among other things, “the trade secret was disclosed to the person under circumstances in which the relationship between the parties to the disclosure” indicates an intent to keep the information confidential. That standard might have been met in Egbert, because the most public part of the disclosure was to Frances, who was at the time the inventor’s domestic partner. ...  

In any case, even if the Egbert Court may have reached the wrong factual conclusion, it is hard to argue with the fact that the standard being applied was a trade secrecy one. Other cases from the same period indicate courts thought of secrecy in a similar way—deliberate, beyond the ordinary efforts to conceal the invention was needed to keep something out of the public eye.

For example, just a few years later, in Hall v. Macneale, the Court again denied a patent for an improved design for a safe that the inventors had used more than two years prior to filing a patent. Citing its opinion in Egbert, the Court held that—even though the inventive design feature was effectively “hidden from view,” since it was inside the safe, and revealing it would have required a “destruction of the safe”—the inventors had not made deliberate efforts at concealment. Like Mr. Barnes, they’d simply relied on the inherent nature of the safe designs to maintain the secrecy of the invention. Like in a trade secret case, where zero efforts to maintain secrecy will disqualify an owner from enforcing their trade secrets, this simply was not enough.

The trade secrecy standard—if not being kept as a trade secret, then patent prior art—sheds still more light when prior art activity arises within an employment setting, where courts must assess whether the company has exercised sufficient secrecy precautions with respect to its own employees. ..."

The full paper can be downloaded here.  

 

Excerpt from Masur & Ouellette's Free Patent Law Casebook (Forthcoming Summer 2021)

In January 2020, Jonathan Masur (Chicago Law) and I decided to write a free patent law casebook, which has turned out to be a rewarding pandemic project. As James Grimmelmann has documented, there are now many inexpensive and open-access IP and technology law casebooks, but none focused on patent law. Jonathan and I plan to pilot our casebook with our own patent law courses in spring 2021, and we will release the casebook in summer 2021 for free download online and in print on an at-cost, royalty-free basis through Amazon.

For a sample of what we've been working on, you can now download Patent Law: Cases, Problems, and Materials – Chapter II.A Novelty from SSRN. And in a win for future patent law students, instructors looking for a free patent casebook will soon have more than one option—Sarah Burstein, Sarah Rajec, and Andres Sawicki also have one in development, with an excerpt available here.

To help instructors use active-learning pedagogical strategies, our casebook emphasizes problems and practical exercises that ask students to apply patent doctrine to situations from recent cases. We are also attempting to make the book as concise and conceptually clear as possible, with graphical illustrations to summarize the doctrine and manageable reading assignments focused on the details of modern patent practice and policy.

We will provide adopting instructors with corresponding PowerPoint slides and a Teacher's Manual containing suggested answers to the practice problems and discussion questions. If you are teaching patent law in 2021–22 and are interested in seeing the Teacher's Manual, providing feedback on this chapter, or receiving further updates, please contact us at jmasur@uchicago.edu and ouellette@law.stanford.edu.