Scope of the Power
Article I, Section 8, Clause 8 of the Constitution states that Congress shall have power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

This clause is the foundation upon which the national patent and copyright laws rest, although it uses neither of those terms. So far as patents are concerned, modern legislation harks back to the Statute of Monopolies of 1624, whereby Parliament endowed inventors with the sole right to their inventions for fourteen years.1331

Patent No. 4,464,652 Cursor control device for use with display systems. 1984.

Copyright law traces back to the English Statute of 1710, which secured to authors of books the sole right of publishing them for designated periods.1332 However, Congress was not vested by this clause with anything akin to the royal prerogative in the creation and bestowal of monopolistic privileges.1333 Its power is limited with regard both to subject matter and to the purpose and duration of the rights granted. Only the writings and discoveries of authors and inventors may be protected, and then only to the end of promoting science and the useful arts.1334 The concept of originality is central to copyright, and it is a constitutional requirement Congress may not exceed.1335 While Congress may grant exclusive rights only for a limited period, it may extend the term upon the expiration of the period originally specified, and in so doing may protect the rights of purchasers and assignees.1336 The copyright and patent laws do not have, of their own force, any extraterritorial operation.1337

Patentable Discoveries
The protection traditionally afforded by acts of Congress under this clause has been limited to new and useful inventions,1338 and while a patentable invention is a mental achievement,1339 for an idea to be patentable it must have first taken physical form.1340 Despite the fact that the Constitution uses the term ''discovery'' rather than ''invention,'' a patent may not be issued for the discovery of a hitherto unknown phenomenon of nature.

Patent No. 5,168,268 Optically transmissive armature for cursor control device. 1992.

''If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.''1341 As for the mental processes which have been traditionally required, the Court has held in the past that an invention must display ''more ingenuity . . . than the work of a mechanic skilled in the art;''1342 and while combination patents have been at times sustained,1343 the accumulation of old devices is patentable ''only when the whole in some way exceeds the sum of its parts.''1344 Though ''inventive genius'' and slightly varying language have been appearing in judicial decisions for almost a century,1345 ''novelty'' and ''utility'' has been the primary statutory test since the Patent Act of 1793.1346 With Congress' enactment of the Patent Act of 1952, however, Sec. 103 of the Act required that an innovation be of a ''nonobvious'' nature, that is, it must not be an improvement that would be obvious to a person having ordinary skill in the pertinent art.1347 This alteration of the standard of patentability was perceived by some as overruling previous Supreme Court cases requiring perhaps a higher standard for obtaining a patent,1348 but the Court itself interpreted the provision as codifying its earlier holding in Hotchkiss v. Greenwood,1349 in Graham v. John Deere Co.1350 The Court in this case said: ''Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must 'promote the Progress of . . . useful Arts.' This is the standard expressed in the Constitution and it may not be ignored.''1351 Congressional requirements on patentability, then, are conditions and tests that must fall within the constitutional standard. Underlying the constitutional tests and congressional conditions for patentability is the balancing of two interests--the interest of the public in being protected against monopolies and in having ready access to and use of new items versus the interest of the country, as a whole, in encouraging invention by rewarding creative persons for their innovations. By declaring a constitutional standard of patentability, however, the Court, rather than Congress, will be doing the ultimate weighing. As for the clarity of the patentability standard, the three-fold test of utility, novelty and advancement seems to have been made less clear by the Supreme Court's recent rejuvenation of ''invention'' as a standard of patentability.1352

Procedure in Issuing Patents
The standard of patentability is a constitutional standard, and the question of the validity of a patent is a question of law.1353 Congress may authorize the issuance of a patent for an invention by a special, as well as by general, law, provided the question as to whether the patentees device is in truth an invention is left open to investigation under the general law.1354 The function of the Commissioner of Patents in issuing letters patent is deemed to be quasi- judicial in character. Hence an act granting a right of appeal from the Commission to the Court of Appeals for the District of Columbia is not unconstitutional as conferring executive power upon a judicial body.1355 The primary responsibility, however, for weeding out unpatentable devices rests in the Patent Office.1356 The present system of ''de novo'' hearings before the Court of Appeals allows the applicant to present new evidence which the Patent Office has not heard,1357 thus making somewhat amorphous the central responsibility.

Nature and Scope of the Right Secured
The leading case bearing on the nature of the rights which Congress is authorized to secure is that of Wheaton v. Peters. Wheaton charged Peters with having infringed his copyright on the twelve volumes of ''Wheaton's Reports,'' wherein are reported the decisions of the United States Supreme Court for the years from 1816 to 1827 inclusive. Peters' defense turned on the proposition that inasmuch as Wheaton had not complied with all of the requirements of the act of Congress, his alleged copyright was void.

Patent No. 5,367,631 Cursor control device with programmable preset cursor positions. 1994.

Wheaton, while denying this assertion of fact, further contended that the statute was only intended to secure him in his pre-existent rights at common law. These at least, he claimed, the Court should protect. A divided Court held in favor of Peters on the legal question. It denied, in the first place, that there was any principle of the common law that protected an author in the sole right to continue to publish a work once published. It denied, in the second place, that there is any principle of law, common or otherwise, which pervades the Union except such as are embodied in the Constitution and the acts of Congress. Nor, in the third place, it held, did the word ''securing'' in the Constitution recognize the alleged common law principle Wheaton invoked. The exclusive right Congress is authorized to secure to authors and inventors owes its existence solely to the acts of Congress securing it,1358 from which it follows that the rights granted by a patent or copyright are subject to such qualifications and limitations as Congress, in its unhampered consultation of the public interest, sees fit to impose.1359

The Court's ''reluctance to expand [copyright] protection without explicit legislative guidance'' controlled its decision in Sony Corp. v. Universal City Studios,1360 in which it held that the manufacture and sale of video tape (or cassette) recorders for home use do not constitute ''contributory'' infringement of the copyright in television programs. Copyright protection, the Court reiterated, is ''wholly statutory,'' and courts should be ''circumspect'' in extending protections to new technology. The Court refused to hold that contributory infringement could occur simply through the supplying of the devices with which someone else could infringe, especially in view of the fact that VCRs are capable of substantial noninfringing ''fair use,'' e.g., time shifting of television viewing.

In giving to authors the exclusive right to dramatize any of their works, Congress did not exceed its powers under this clause. Even as applied to pantomine dramatization by means of silent motion pictures, the act was sustained against the objection that it extended the copyright to ideas rather than to the words in which they were clothed.1361 But the copyright of the description of an art in a book was held not to lay a foundation for an exclusive claim to the art itself. The latter can be protected, if at all, only by letters patent.1362 Since copyright is a species of property distinct from the ownership of the equipment used in making copies of the matter copyrighted, the sale of a copperplate under execution did not pass any right to print and publish the map which the copperplate was designed to produce.1363 A patent right may, however, be subjected, by bill in equity, to payment of a judgment debt of the patentee.1364

Power of Congress Over Patent Rights
Letters patent for a new invention or discovery in the arts confer upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the Government without just compensation.1365 Congress may, however, modify rights under an existing patent, provided vested property rights are not thereby impaired,1366 but it does not follow that it may authorize an inventor to recall rights that he has granted to others or reinvest in him rights of property that he had previously conveyed for a valuable and fair consideration.1367 Furthermore, the rights the present statutes confer are subject to the antitrust laws, though it can be hardly said that the cases in which the Court has endeavored to draw the line between the rights claimable by patentees and the kind of monopolistic privileges which are forbidden by those acts exhibit entire consistency in their holdings.1368

State Power Affecting Patents and Copyrights
Displacement of state police or taxing powers by federal patent or copyright has been a source of considerable dispute. Ordinarily, rights secured to inventors must be enjoyed in subordination to the general authority of the States over all property within their limits. A state statute requiring the condemnation of illuminating oils inflammable at less than 130 degrees Fahrenheit was held not to interfere with any right secured by the patent laws, although the oil for which the patent was issued could not be made to comply with state specifications.1369 In the absence of federal legislation, a State may prescribe reasonable regulations for the transfer of patent rights, so as to protect its citizens from fraud. Hence, a requirement of state law that the words ''given for a patent right'' appear on the face of notes given in payment for such right is not unconstitutional.1370 Royalties received from patents or copyrights are subject to a nondiscriminatory state income tax, a holding to the contrary being overruled.1371

State power to protect things not patented or copyrighted under federal law has been buffeted under changing Court doctrinal views. In two major cases, the Court held that a State could not utilize unfair competition laws to prevent or punish the copying of products not entitled to a patent. Emphasizing the necessity for a uniform national policy and adverting to the monopolistic effects of the state protection, the Court inferred that because Congress had not extended the patent laws to the material at issue, federal policy was to promote free access when the materials were thus in the public domain.1372

Patent No. 5,469,194 Apparatus and method for Providing Different Input Device Orientations of a Computer System. 1995.

But, in Goldstein v. California,1373 the Court distinguished the two prior cases and held that the determination whether a state ''tape piracy'' statute conflicted with the federal copyright statute depended upon the existence of a specific congressional intent to forbid state protection of the ''writing'' there involved. Its consideration of the statute and of its legislative history convinced the Court that Congress in protecting certain ''writings'' and in not protecting others bespoke no intention that federally unprotected materials should enjoy no state protection, only that Congress ''has left the area unattended.''1374 Similar analysis was used to sustain the application of a state trade secret law to protect a chemical process, that was patentable but not patented, from utilization by a commercial rival, which had obtained the process from former employees of the company, all of whom had signed agreements not to reveal the process. The Court determined that protection of the process by state law was not incompatible with the federal patent policy of encouraging invention and public use of patented inventions, inasmuch as the trade secret law serves other interests not similarly served by the patent law and where it protects matter clearly patentable it is not likely to deter applications for patents.1375

Returning to the Sears and Compco emphasis, the Court unanimously, in Bonito Boats v. ThunderCraft Boats,1376 reasserted that ''efficient operation of the federal patent system depends upon substantially free trade in publicly known, unpatented design and utilitarian conceptions.''1377 At the same time, however, the Court attempted to harmonize Goldstein, Kewanee, and other decisions: there is room for state regulation of the use of unpatented designs if those regulations are ''necessary to promote goals outside the contemplation of the federal patent scheme.''1378 What States are forbidden to do is to ''offer patent-like protection to intellectual creations which would otherwise remain unprotected as a matter of federal law.''1379 A state law ''aimed directly at preventing the exploitation of the [unpatented] design'' is invalid as impinging on an area of pervasive federal regulation.1380

Trade-Marks and Advertisements
In the famous Trade-Mark Cases,1381 decided in 1879, the Supreme Court held void acts of Congress, which, in apparent reliance upon this clause, extended the protection of the law to trade-marks registered in the Patent Office. ''The ordinary trade mark,'' said Justice Miller for the Court, ''has no necessary relation to invention or discovery;'' nor is it to be classified ''under the head of writings of authors.'' It does not ''depend upon novelty, invention, discovery, or any work of the brain.''1382 Not many years later, the Court, again speaking through Justice Miller, ruled that a photograph may be constitutionally copyrighted,1383 while still more recently a circus poster was held to be entitled to the same protection. In answer to the objection of the circuit court that a lithograph which ''has no other use than that of a mere advertisement . . . (would not be within) the meaning of the Constitution,'' Justice Holmes summoned forth the shades of Velasquez, Whistler, Rembrandt, Ruskin, Degas, and others in support of the proposition that it is not for the courts to attempt to judge the worth of pictorial illustrations outside the narrowest and most obvious limits.1384

FOOTNOTES

[Footnote 1331] Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 17 , 18 (1829).

[Footnote 1332] Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 656 , 658 (1834).

[Footnote 1333] Cf. Graham v. John Deere Co., 383 U.S. 1, 5, 9 (1966).

[Footnote 1334] Kendall v. Winsor, 62 U.S. (21 How.) 322, 328 (1859); A. & P. Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950).

[Footnote 1335] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991) (publisher of telephone directory, consisting of white pages and yellow pages, not entitled to copyright in white pages, which are only compilations). ''To qualify for copyright protection, a work must be original to the author. . . . Originality, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses some minimal degree of creativity. . . . To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice.'' Id., 345. First clearly articulated in The Trade Mark Cases, 100 U.S. 82, 94 (1879), and Burrow-Giles Lithographic Co. v. Saroney, 111 U.S. 53, 58-60 (1884), the requirement is expressed in nearly every copyright opinion, but its forceful iteration in Feist was noteworthy, because originality is a statutory requirement as well, 17 U.S.C. Sec. 102(a), and it was unnecessary to discuss the concept in constitutional terms.

[Footnote 1336] Evans v. Jordan, 13 U.S. (9 Cr.) 199 (1815); Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 548 (1852); Bloomer v. Millinger, 68 U.S. (1 Wall.) 340, 350 (1864); Eunson v. Dodge, 85 U.S. (18 Wall.) 414, 416 (1873).

[Footnote 1337] Brown v. Duchesne, 60 U.S. (19 How.) 183, 195 (1857). It is, however, the ultimate objective of many nations, including the United States, to develop a system of patent issuance and enforcement which transcends national boundaries; it has been recommended, therefore, that United States policy should be to harmonize its patent system with that of foreign countries so long as such measures do not diminish the quality of the United States patent standards. President's Commission on the Patent System, To Promote the Progress of Useful Arts, Report to the Senate Judiciary Committee, S. Doc. No. 5, 90th Cong., 1st sess. (1967), recommendation XXXV. Effectuation of this goal was begun with the United States agreement to the Berne Convention (the Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886), and Congress' conditional implementation of the Convention through legislation. The Berne Convention Implementation Act of 1988, P. L. 100- 568, 102 Stat. 2853, 17 U.S.C. Sec. 101 and notes.

[Footnote 1338] Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 549 (1871). Cf. Collar Company v. Van Dusen, 90 U.S. (23 Wall.) 530, 563 (1875); Reckendorfer v. Faber, 92 U.S. 347, 356 (1876).

[Footnote 1339] Smith v. Nichols, 89 U.S. (21 Wall.) 112, 118 (1875).

[Footnote 1340] Rubber-Tip Pencil Company v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874); Clark Thread Co. v. Willimantic Linen Co., 140 U.S. 481, 489 (1891).

[Footnote 1341] Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948). Cf. Dow Co. v. Halliburton Co., 324 U.S. 320 (1945); Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84, 89 (1941).

[Footnote 1342] Sinclair Co. v. Interchemical Corp., 325 U.S. 327, 330 (1945); Marconi Wireless Co. v. United States, 320 U.S. 1 (1943).

[Footnote 1343] Keystone Manufacturing Co. v. Adams, 151 U.S. 139 (1894); Diamond Rubber Co. v. Consol. Tire Co., 220 U.S. 428 (1911).

[Footnote 1344] A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950). An interesting concurring opinion was filed by Justice Douglas for himself and Justice Black: ''It is not enough,'' says Justice Douglas, ''that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end-- the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.'' Id., 154-155. He then quotes the following from an opinion of Justice Bradley's given 70 years ago:

[Footnote 1353] A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950); Mahn v. Harwood, 112 U.S. 354, 358 (1884). In Markman v. Westview Instruments, Inc., 116 S. Ct. 1384 (1996), the Court held that the interpretation of terms in a patent claim is a matter of law reserved entirely for the court. The Seventh Amendment does not require that such issues be tried to a jury.

[Footnote 1354] Evans v. Eaton, 16 U.S. (3 Wheat.) 454, 512 (1818).

[Footnote 1355] United States v. Duell, 172 U.S. 576, 586-589 (1899). See also Butterworth v. United States ex rel. Hoe, 112 U.S. 50 (1884).

[Footnote 1356] Graham v. John Deere Co., 383 U.S. 1, 18 (1966).

[Footnote 1357] In Jennings v. Brenner, 255 F. Supp. 410, 412 (D.D.C. 1966), District Judge Holtzoff suggested that a system of remand be adopted.

[Footnote 1358] Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 660 (1834); Holmes v. Hurst, 174 U.S. 82 (1899). The doctrine of common-law copyright was long statutorily preserved for unpublished works, but the 1976 revision of the federal copyright law abrogated the distinction between published and unpublished works, substituting a single federal system for that existing since the first copyright law in 1790. 17 U.S.C. Sec. 301.

[Footnote 1359] Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 662 (1834); Evans v. Jordan, 13 U.S. (9 Cr.) 199 (1815). A major limitation of copyright law is that ''fair use'' of a copyrighted work is not an infringement. Fair use can involve such things as citation for the use of criticism and reproduction for classroom purposes, but it may not supersede the use of the original work. See Harper & Row, Publishers v. Nation Enterprises, 471 U.S. 539 (1985) (an unauthorized 300 to 400 word excerpt, published as a news ''scoop'' of the authorized prepublication excerpt of former President Ford's memoirs and substantially affecting the potential market for the authorized version, was not a fair use within the meaning of Sec. 107 of the Copyright Act. 17 U.S.C. Sec. 107). For fair use in the context of a song parody, see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).

[Footnote 1360] 464 U.S. 417, 431 (1984).

[Footnote 1361] Kalem Co. v. Harper Bros., 222 U.S. 55 (1911). For other problems arising because of technological and electronic advancement see, e.g., Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968); Sony Corp. v. Universal City Studios, 464 U.S. 417 (1984).

[Footnote 1362] Baker v. Selden, 101 U.S. 99, 105 (1880).

[Footnote 1363] Stevens v. Gladding, 58 U.S. (17 How.) 447 (1855).

[Footnote 1364] Ager v. Murray, 105 U.S. 126 (1882).

[Footnote 1365] James v. Campbell, 104 U.S. 356, 358 (1882). See also United States v. Burns 79 U.S. (12 Wall.) 246, 252 (1871); Cammeyer v. Newton, 94 U.S. 225, 234 (1877); Hollister v. Benedict Manufacturing Co., 113 U.S. 59, 67 (1885); United States v. Palmer, 128 U.S. 262, 271 (1888); Belknap v. Schild, 161 U.S. 10, 16 (1896).

[Footnote 1366] McClurg v. Kingsland, 42 U.S. (1 How.) 202, 206 (1843).

[Footnote 1367] Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 553 (1852).

[Footnote 1368] See Motion Picture Co. v. Universal Film Co., 243 U.S. 502 (1917); Morton Salt Co. v. Suppiger Co., 314 U.S. 488 (1942); United States v. Masonite Corp., 316 U.S. 265 (1942); United States v. New Wrinkle, Inc., 342 U.S. 371 (1952), where the Justices divided 6 to 3 as to the significance for the case of certain leading precedents; and Walker Process Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172 (1965).

[Footnote 1369] Patterson v. Kentucky, 97 U.S. 501 (1879).

[Footnote 1370] Allen v. Riley, 203 U.S. 347 (1906); John Woods & Sons v. Carl, 203 U.S. 358 (1906); Ozan Lumber Co. v. Union County Bank, 207 U.S. 251 (1907).

[Footnote 1371] Fox Film Corp. v. Doyal, 286 U.S. 123 (1932), overruling Long v. Rockwood, 277 U.S. 142 (1928).

[Footnote 1372] Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964).

[Footnote 1373] 412 U.S. 546 (1973). Informing the decisions were different judicial attitudes with respect to the preclusion of the States from acting in fields covered by the patent and copyright clauses, whether Congress had or had not acted. The latter case recognized permissible state interests, id., 552-560, whereas the former intimated that congressional power was exclusive. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 228-231 (1964).

[Footnote 1374] In the 1976 revision of the copyright law, Congress broadly preempted, with narrow exceptions, all state laws bearing on material subject to copyright. 17 U.S.C. Sec. 301. The legislative history makes clear Congress' intention to overturn Goldstein and ''to preempt and abolish any rights under the common law or statutes of a state that are equivalent to copyright and that extend to works coming within the scope of the federal copyright law.'' H. Rept. No. 94-1476, 94th Congress, 2d sess. (1976), 130. The statute preserves state tape piracy and similar laws as to sound recordings fixed before February 15, 1972, until February 15, 2047.

[Footnote 1375] Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974). See also Aronson v. Quick Point Pencil Co., 440 U.S. 257 (1979).

[Footnote 1376] 489 U.S. 141 (1989).

[Footnote 1377] Id., 156.

[Footnote 1378] Id., 166. As examples of state regulation that might be permissible, the Court referred to unfair competition, trademark, trade dress, and trade secrets laws. Perhaps by way of distinguishing Sears and Compco, both of which invalidated use of unfair competition laws, the Court suggested that prevention of ''consumer confusion'' is a permissible state goal that can be served in some instances by application of such laws. Id., 154.

[Footnote 1379] Id., 156(emphasis supplied).

[Footnote 1380] Id., 158.

[Footnote 1381] 100 U.S. 82 (1879).

[Footnote 1382] Id., 94.

[Footnote 1383] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884).

[Footnote 1384] Bleisten v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903).