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 reviewA procedure by which a third-party may contest issuance of a patent at the USPTO within a short period (9 months) after issuance. Introduced to the U.S. by the AIA. The EPO has a similar procedure. should have constitutional standing or whether post-grant reviewA procedure by which a third-party may contest issuance of a patent at the USPTO within a short period (9 months) after issuance. Introduced to the U.S. by the AIA. The EPO has a similar procedure. 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 reviewA procedure by which a third-party may contest issuance of a patent at the USPTO within a short period (9 months) after issuance. Introduced to the U.S. by the AIA. The EPO has a similar procedure..
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.
