Patent Rights Circa 1895

E. Bement & Sons v. La Dow, 66 Fed. 185 (Cir. Ct. N.Y. 1895)

[N]o property is so uncertain as “patent rights”; no property more speculative in character or held by a more precarious tenure. An applicant who goes into the patent office with claims expanded to correspond with his unbounded faith in the invention, may emerge therefrom with a shriveled parchment which protects only that which any ingenious infringer can evade. Even this may be taken from him by the courts. Indeed, it is only after a patentee has passed successfully the ordeal of judicial interpretation that he can speak with any real certainty as to the scope and character of his invention.

18 thoughts on “Patent Rights Circa 1895

  1. Dear JAOI(TM)*,

    Happy Thanksgiving to you too!

    If I weren’t concerned about (and didn’t see) our federal government becoming more fascist (thinking it is above the law for Machiavellian reasons, thinking it should be accountable to no one, thinking it exists for its own sake rather than for the people’s sake and that its own ease is therefore paramount rather than service to the people, thinking it knows better than the general populous, or thinking it can ignore certain segments of “the people” to please others), and if I didn’t think our government is *still* the best in the world and worth saving from certain self-serving politicians at all costs, I wouldn’t be in this fight.

    *did I do that right? (rhetorical question)

  2. Dear real anonymous,

    I hope you didn’t miss the comment I made on: | Nov 09, 2007 at 11:34 AM found on this link:

    link to patentlyo.com

    The comment was made in this thread:
    link to patentlyo.com

    * * * * *

    Dear Everyone,

    In keeping with this holiday’s spirit, bringing families together, bringing the north and south together, bringing patent attorneys and inventors together, and bringing our country together, Happy Thanksgiving. God bless us everyone.

  3. “According to this, if you have a patent, sue and prove infringement and win, but a permanent injunction is denied, you “don’t have property” anymore.”

    The next section of Patent Practice, Volume 1, covers the role of injunctive relief – where principles of equity are applied. (If a court mandates an easement for your neighbor across your property based on similar equitable principles, do you no longer have a right to exclude me from setting up shop on your land?)

    From Patent Practice:

    “The exclusionary right of the patentee under the patent statute is one that drives, obviously, from the state. The state may, and does on rare occasions, refuse to grant an injunction.” (Citing City of Milwaukee v. Activated Sludge, 21 USPQ 69.)

    link to google.com

    But that a patent right is first and foremost the right to exclude, even the Constitution says as much:

    “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;”

    Perhaps when, by necessity, we change to a patent registration system (because of the continuing dysfunctionality atop the USPTO), your understanding that a patent registration will not be a property right but will merely confer on the registrant the right to sue (as copyright registration does) will be correct.

  4. “the single, critical, necessary condition for a “property right” is the right to exclude. If you don’t have that right, you don’t have property”

    According to this, if you have a patent, sue and prove infringement and win, but a permanent injunction is denied, you “don’t have property” anymore.

    Who really care whether a patent can be called a “property right” per se? Maybe it matters for some secured transactions or tax matters, but for this attorney, it’s enough to advise clients that the patent gives them an almost unconditional right to sue, and an uncertain (even slim) chance to win…

    Happy Thanks-g to you too. I don’t know about you, but those uncertain property rights put the turkey on my table!

  5. JTS, the single, critical, necessary condition for a “property right” is the right to exclude. If you don’t have that right, you don’t have property. Period. And if you don’t have property, you don’t have any of the other rights you mentioned.

    “An unlitigated patent does not give the owner a right to collect money, it gives *a right to sue*. That’s the main right of a patent;”

    If it doesn’t give a right to exclude, it’s not intellectual property. The right to sue is not the main right of property. In fact, Ballentine’s Law Dictionary doesn’t even list such a “right to sue” for property though it specifically mentions the right to exclude – heck, it doesn’t even have an entry for “right to sue” on its own (guess they overlooked it in favor of the “right to coal” and the “right to fish”).

    Basically, you’re saying a patent isn’t a claim (deed) to a property right, but rather that it gives you a right to make a claim to the property subsequently in a court of law (like a copyright registration does for a copyright). That’s wrong. A patent certainly includes the latter as you allege, but it also includes the former. That is why patents end with the phrase, “What is claimed is…” It’s a grant from the government, with a presumption (not an assumption) of validity — meaning it is an “uncertain” “property” right, as the quote correctly conveyed.

    Anyway, Happy Thanksgiving — there are much more important things than uncertain property rights to be thankful for.

  6. The right to collect royalties. The right to collect rent from a tenant. The right to be reimbursed by a joint tenant for maintenance costs. The right to sue trespassers for damage to property. The right to sell or assign. The right to bequeath. The right to enjoyment of property. That enough? Be more diligent at your studies and you’ll find more I’m sure. If I own a patent, I have the certain right to _try_ to exclude.

  7. “many non-exclusionary property rights”

    Could you please name one? (Not the house you share with your wife… since you both can exclude me from it.)

    From Patent Practice, Volume 1, (previously used at GMU for Patent Law 101) which I would highly recommend:

    “As will be seen, many things have value but not all of them are the subject of property. The single, critical, necessary condition that distinguishes property with respect to a “res” from other things of value is that the owner of the res has the right to exclude the rest of the world from enjoyment of and dominion over it.”

  8. “As with all property rights, a patent gives you the right to exclude others”

    Sort of (the Cherokee sure got excluded from Florida); there are many non-exclusionary property rights, and the right to exclude is conditional. Lots of legal “rights” have some uncertainty, as applied to real facts, until finally adjudicated. It’s a tautology to call an unlitigated right uncertain, and a point of my post was that the 1895 quote’s observation is not unique to patent law. A “right” is what the courts say it is, nothing more, nothing less.

    The point of my earier post is that while the scope, validity, or infringement of a patent may be uncertain (even after litigation) the right to *try* to enforce a patent – to go to court – is meaningful and not uncertain. The right exists the day the patent issues. The day before, the right doesn’t exist.

  9. “it gives *a right to sue*”

    As with all property rights, a patent gives you the right to exclude others. That right to exclude is uncertain until the patentee has passed successfully the ordeal of judicial interpretation, and only then can he speak with any real certainty as to the scope and character of his patent.

    [from Patent Law 101]

  10. “[N]o property is so uncertain as “patent rights”; … Indeed, it is only after a patentee has passed successfully the ordeal of judicial interpretation that he can speak with any real certainty as to the scope and character of his invention.”

    It’s a thought provoking quote, but I disagree.

    What exactly is speculative and uncertain about the “rights” of a patent owner? It’s the “right” to collect money from an accused infringer that’s uncertain. But is that even a “right”? No. An unlitigated patent does not give the owner a right to collect money, it gives *a right to sue*. That’s the main right of a patent; if you have one, you can go to court. If you don’t have one, you can’t go to court. There’s nothing uncertain or speculative about that right. Having seen some million dollar payouts for patents that were asserted but were dubious and unlitigated, the right to go to court is a very meaningful one.

    Also, the uncertainty of infringement/validity cuts both ways. Many patent practicioners see uncertainty in a patent application as sometimes an advantage and they build some uncertainty into their patent applications.

    Is it surprising that legal papers issued by government patent examiners are often found or agreed to be invalid and uninfringed after legal scrutiny?

  11. Greg (early-mid 90s client … great work!) …

    even if life expectancy was around 40 and there were less than 1000 cars on the “road” at the time of this quote … if two people disagree about the standard for vagueness (say, oh, the patentee and the infringer) … where does the loop resolve itself but for “the *ordeal* of judicial interpretation” … due process of public notice is part of the rubric of judicial interpretation …

    BUT, if the judicial interpretation is overturned 50% of the time on appeal … what is a *better result*? how do you apportion “due process” and against what specific set of efforts on the part of the applicant versus the lack of action by the “public”? how about specific non-action by the pto? would that not be a greater due process issue?

    a little circular to say an applicant meets all that is required to get a patent, understands that this effort is still subject to interpretation, judicial or otehrwise, and still someone can say — “aha, that is still vague” (“completely vague” is a hyperbole on steroids)

    Thanks Dennis – GREAT QUOTE!

  12. “Indeed, it is only after a patentee has passed successfully the ordeal of judicial interpretation that he can speak with any real certainty as to the scope and character of his invention.”

    which is logically equivalent to …

    “Indeed, it is only afer the public has seen a patent passed
    successfully the ordeal of judicial interpretation that
    they can speak with any real certainty as to the scope and
    character of the invention.”

    which I hope is not true today because the quote’s logic is the classic definition of a lack of Due Process public notice. Do we want our patent claims as completely vague as idea/expression notice in copyright law?

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