Legal Commentary

In my last post, I introduced my forthcoming article, Reinventing Usefulness, by describing three conceptions of usefulness - operable, practical, and commercial.  I discuss all three in depth in the article, but I want to focus on commercial usefulness here.

As I noted in the last post, courts do not - and never have - required commercial usefulness. This is a foregone conclusion - one announced by Justice Story riding circuit in two cases back in 1817. One would think that such a long history would mean that courts have properly ignored commercial use all these years, but it's not entirely clear that Justice Story's view should have been followed for as long as it has.

After the jump, I discuss some important history that has long been forgotten. The history shows that commercial usefulness is not necessarily as far-fetched as patent followers might think. Had Congressional intent been implemented by the courts following the 1836 Patent Act, the current statute might well have a form of commercial utility requirement.

In short, it is an accident of history that patentability does not directly hinge on commercial usefulness.  Usefulness appeared in the first patent statute, the 1790 Patent Act.  The requirement appeared three times: 1) a patent may be granted for ?useful? inventions or discoveries; 2) one must include a description sufficient to enable one to use the invention;  and 3) designated cabinet members must ?deem the invention or discovery sufficiently useful and important.?  Thus, patents were to be issued only after an examination of utility and importance. 

Implementation of the ?sufficiently useful and important? requirement was administratively difficult and thus did not last long.  It was eliminated in the 1793 Patent Act,  though the requirements of usefulness and use enablement requirements remained. Further, examination requirements were eliminated altogether, and patents were granted to all who applied.

It was during this unexamined registration period that Justice Story issued his famous 1817 opinions that inventions need not show any commercial benefit, and that they need merely be non-frivolous. Story had no ?sufficiently useful and important? language to guide his interpretation of the statute; indeed, that phrase?s absence in the 1793 Act supports Story?s interpretation that ? as of 1817 ? an invention did not need to be important, but merely operable and practically useful in some way.

The lack of examination did not sit well with Congress, and the Patent Act of 1836 introduced an examination system.  As part of this system, in addition to the usefulness and enablement requirements, the Commissioner of Patents was to issue a patent covering an invention ?if [he] shall deem it to be sufficiently useful and important.?   It appears that Congress inserted this text in specific response to Justice Story?s more lenient test, which had been generally adopted by courts by 1836. The committee report, often called the ?Ruggles Report,? states: 

The necessary consequence is, that patents have, under the act of 1793, been daily granted without regard to the question of novelty, or even utility in the ordinary sense; for it has been settled that the term useful, as used in this statute, is only in contradistinction to hurtful, injurious or pernicious?.



The most obvious, if not the only means of effecting [a change to the evils of the registration system], appears to be to establish a check upon the granting of patents, allowing them to issue only for such invention as are in fact new and entitled, by the merit of originality and utility, to be protected by law. (emphasis mine)

Thus, the 1836 Patent Act might have been interpreted to require an elevated level of utility ? perhaps even commercial utility in the discretion of the Commissioner. In all events, utility was to require more than the ?non-pernicious? rule set forth by Justice Story. 

A more stringent utility requirement was rarely enforced, however; the courts quickly gutted the ?sufficiently useful and important? requirement.  Instead, judicial opinions held that Story?s conception of utility survived despite the additional ?sufficiently useful and important? language  and determined that the commissioner?s determinations of patentability were essentially reviewable de novo.  

Part of the justification for limiting the commissioner?s discretion was that juries would not review commissioner decisions,  and courts were wary of allowing the executive to impose discretionary decisions without an appeal to a jury. However, if the Administrative Procedure Act -- which today allows for extensive discretionary rulings without an appeal to a jury -- had existed in 1850, then the discretion of the commissioner may have been given much more weight.

The 1952 Patent Act eliminated the ?sufficiently useful and important? requirement,  instead only requiring inventions to be ?new and useful? as well as requiring applicants to describe how to use the invention.   Legislative history shows that the phrase was omitted because it was ?unnecessary? and because ?[t]he meaning of this old phrase was obscure and it had seldom been resorted to either in the Patent Office or in the courts.? 

Despite this claim in the legislative history, it is not clear that elevated utility was unanimously disregarded prior to the 1952 Act. For example, the Patent Office had used the test to reject applications. Indeed, the issue caused confusion among examiners right after the passage of the 1952 Patent Act. Further, some courts were also willing ? in dicta at least ? to require a higher utility threshold.  

Thus, while the sufficiency test was never widely implemented and was nominally repealed, this result was a historical accident.   If the few judges considering the issue early on had instead interpreted the statute to give the Commissioner some discretion then a heightened utility requirement ? perhaps even a commercial utility standard - might have emerged.

This historical review does not imply that the rules should have included a commercial utility requirement, but rather that they could have included one. Recognition that the 1952 Act did not intend to eliminate the ?sufficiently useful and important? requirement for any reason other than disuse over time allows courts (and certainly Congress) to interpret usefulness as it was originally intended in 1836 by introducing a commercial utility requirement.

My next post will propose just such a requirement.