Beauchamp on Founding-Era Patent Revocation

An article from Prof. Chris Beauchamp, newly published in the Vanderbilt Law Review and titled “Repealing Patents”, examines the history of Founding-era patent revocation.  It’s a complex story, influenced by the changing character of the pre-1836 patent system, and reveals that there did seem to be a belief in a public interest in the invalidation of patents that shouldn’t have issued.

In fact, the first patent lawsuit in the United States was a suit for the revocation of a patent on processing whale oil.  The surviving records are unclear as to the rationale, the process, and the outcome of both this case and later revocation actions.  But however the case proceeded, the earliest known U.S. litigation over a patent was over whether the patent should have been issued at all.

Beauchamp also identifies a portion of the history that bears on a modern debate—that of whether petitioners for post-grant review should have constitutional standing or whether post-grant review should be available more broadly to the public.  Examining the function of courts in the early Republic, Beauchamp ties early patent revocation suits into the more general class of “popular actions”, where an informer with “knowledge of a wrong but no interest in the controversy other than that given by statute” could bring a revocation case without any constitutional concern over standing.  This should lay to rest any constitutional concerns about universal standing for petitioners for post-grant review.

The history is less clarifying on issues such as whether revocation was a process for judges or juries, and the extent (if any) to which revocation was influenced by or based on the English scire facias practice.  As Beauchamp puts it, “[u]ncertainty and ambiguity clouded the law of patent repeal in the United States even before the intervening centuries left moth holes in the record of events.”  But Beauchamp’s article concludes with an important lesson for modern understandings of patent revocation:

As a historical matter, though, the fact remains: under America’s first patent acts, a wrongfully issued new patent was one that the public retained the power to reject.

Joshua Landau

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

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