Privy Council’s Role in Cancelling Patents Around 1791

WiggedJudgeby Dennis Crouch

In my view, a potential critical historical question in Oil States is whether the English Privy Council was empowered to revoke patents back in 1791.

For many years leading up to its last cancellation action in 1779, the Privy Council operated as a kind of administrative body empowered to revoke or void issued patent rights on signature of a sufficient number of Privy Council members.   If the Privy Council was empowered in the 1790s to cancel issued patents without judge or jury, that suggests that – in today’s world of expanded administrative power – Congress can also empower a the PTO to cancel issued patents.  Some folks may reflect that – although Old English Law matters for the Seventh Amendment jury trial issue, it is much less critical for the administrative law question.  Others will also argue that the Privy Council approach was entirely rejected by Americans when we rejected the notion of American Royalty.  I’ll slide by these points for this point and instead look at uncovering some Privy Council history.

If we begin with recognizing that the Statute of Monopolies indicated that patents should be tried by the courts, one explanatory theory for the Privy Council’s power is that English patent rights always included a caveat that permitted patents to be cancelled by the Council as an alternative avenue.   Certainly, the Privy Council was active in these proceedings prior to 1779.

EnglishPatentSystemA 1904 treatise titled The English Patent System (by William Martin) states that, although Privy Council had not taken any recent actions, the Patents Law Amendments Acts of 1852 and 1902 each include a proviso allowing granted patents to be revoked by the Privy Council:

Although the Statute of Monopolies declared that patent grants should be tried in the courts of common law “and not at the Council Table,” this power continued to be inserted in patents. Even at the present day the statutory form of the patent, as also that enacted for the first time in 1852, contains a similar proviso against prejudice and inconvenience “to our subjects in general.” This proviso after having lain dormant for centuries has received statutory recognition in the Patents Act of 1902.  By this Act the Privy Council is empowered to revoke a patent in the event of an existing industry or the establishment of a new industry being unfairly prejudiced.

I have not yet personally reviewed these acts to know whether Martin’s statement is correct. (Anyone?).  Minor note here that I believe Oren Bracha in his book Owning Ideas: A History of Anglo-American Intellectual Property (n.35) mistakenly interprets this passage to say that “revocation clauses authorizing the Privy Council to revoke patents were continued to be inserted in the patent grants up to 1902.”  However, I also have not reviewed pre-1902 English patent grants for these revocation clauses (Anyone?).  [See THIS POST for an update and correction]

An additional historical point comes from a sources citing one a final, albeit unsuccessful, “petition to the Council to vacate a patent in 1794.”  D. Seaborne Davies, Early History of the Patent Specification, 50 L.Q.R. 88-109 (1934) (citing Privy Council Registers, Vol. 141, p.88); E. Wyndham Hulme, Privy Council Law and Practice of Letters Patent for Invention from the Restoration to 1794, 33 L.Q.R 63, 181 (1917).  Hulme explains:

The historical record is thus starting to suggest that, although the Privy Council took no action to cancel patents after 1779, it may have been empowered to do so throughout the 18th and 19th Centuries.  At this point, I don’t have any further take-away conclusions and would be receptive to comments and guidance.

113 thoughts on “Privy Council’s Role in Cancelling Patents Around 1791

  1. 14

    Belatedly commenting.

    I suggest that a problem with the argument presented in this posting is that, although the Privy Council may have acted at times as “a kind of administrative body”, at other times, it acted as all sorts of other things. It would seem that, in US constitutional terms, the Council sometimes wielded the executive power of the UK, sometimes the legislative power of the UK, and sometimes the judicial power of the UK. There was no separation of powers in the (unwritten) UK constitutions. It was a Council including many noblemen, many bishops, and many judges. The Acts of the Privy Council include many records showing it acting in a executive capacity. Presumably the Orders in Council might exemplify its actions in a legislative capacity (leading of course to the declaration of war on the UK by the US in 1812). And it seems throughout its history to have acted in a judicial capacity.

    In particular, the infamous Court of Star Chamber was essentially a committee of the Privy Council, augmented by common law judges.

    The Judicial Committee of the Privy Council was established in its modern form in 1833. It is the highest court of appeal for various jurisdictions, including several independent sovereign states such as Jamaica. Appeals considered by this Committee are formally made to the Queen in Council.

    The following is quoted from the Charter of the Province of Massachusetts Bay, issued by King William and Queen Mary in 1691, and this it describes situations in which the Privy Council would exercise the judicial power of the Crown:

    “And whereas we judge it necessary, that all our subjects should have liberty to appeal to us, our heirs and successors, in cases that deserve the same, we do by these presents ordain, that in case either party shall not rest satisfied with the judgment or sentence of any judicatories or courts within our said province or territory in any personal action, wherein the matter in difference doth exceed the value of three hundred pounds sterling, that then he or they may appeal to us, our heirs and successors, in our or their privy council.”

    Also, the Privy Council acting in an executive or legislative capacity vetoing Massachusetts legislation:

    “And we do for us, our heirs and successors, establish and ordain, that the said orders, laws, statutes and ordinances, be by the first opportunity after the making thereof, sent or transmitted unto us, our heirs and successors, under the public seal, to be appointed by us, for our or their approbation or disallowance. And that in case all or any of them shall at any time within the space of three years, next after the same shall have been presented to us, our heirs and successors, in our or their privy council, be disallowed and rejected, and so signified by us, our heirs and successors under our or their privy council, unto the governor for the time being, then such and so many of them as shall be so disallowed and rejected shall thenceforth cease and determine, and become utterly void and of none effect.”

    In short, the Privy Council was surely the type of institution that the Framers of the Constitution of the United States wished to banish from their polity.

    1. 14.1

      Distant, one wonders what kind of independent court system England had prior to the Magna Carta. That charter required that a court of common please be established in one place, and that trial be by jury. The appeal from that court was thru King’s Bench and tense to Parliament via the House of Lords. This entire structure was independent of the crown and was supposed to be a check on royal power. In the Case of Monopolies, it was clearly established that the court of common pleas, a common law court, could adjudge a royal patent void.

      The Privy Council’s subsequent assertion of exclusive jurisdiction to revoke patents really represented a reassertion of royal power that seemed to have reached a sort of parlous height under the reign of Henry VIII, which continued under James VI and I Charles I. People stood up for their rights at the peril of their very lives.

      The colonies primary fear at the time of revolution seemed to be of royal power. Thus their constitution assuredly wanted to establish completely independent courts as a guarantor of liberty. That is the way the courts are perceived today in the US. That is also why many see the gradual assumption of executive power in the US a descent back into the times of too much executive power that afflicted England from the time of Henry VIII and led to its civil war.

  2. 13

    The Privy Council does not have the power to enact anything. It is an advisory body to the sovereign (Queen), who in fact, decrees. The rejection of the monarchy by the US also rejected the administrative structure of the British Crown. The Privy Council may be analogized to an administrative body, but should not be confused with one. It makes only recommendations, and not rules. I fear that we may be counting angels on pinheads, instead of focusing on the pinheads who wrote the ACA.

    1. 13.1

      Should we confuse today’s “patent” with the “patent” of 250 years ago? Let everybody know.

      FYI, I think Congress defined today’s conditional “patent right” in a statute.

      1. 13.1.1

        Pardon Potential (re)Post….

        anon
        Your comment is awaiting moderation.

        August 22, 2017 at 11:49 am

        As long as we do not confuse the property nature – and suitably recognize that even Congress (as the correct branch provided authority under the Constitution to write the statutory law that is patent law) is NOT given an absolute free reign to write whatever it may want to write (once – for example – an item obtains property status, OTHER Constitutional protections kick in).

        Certain sAme ones continue to want to pretend that “conditional” or “revocable” gives such free reign so as to be able to ignore those other protections (a case of clear legal error).

        1. 13.1.1.2

          absolute free reign

          Seems a little hyperbolic in this context, don’t you think? PTAB proceedings are consistent with due process, and the results are appealable.

  3. 11

    Some months back, in an (off topic) comment on a PatentlyO post dated April 19, 2017, I quoted the standard boilerplate text that (according to treatises of the time, notably that by John Davies, though there are also others) was inserted into English patents in the time of George III that gave authority to the Privy Council to revoke patents.

    The following should link to that past comment:

    link to patentlyo.com

    For the source from which this is quoted, go to page 31 of John Davies’s Treatise (1816) available as a free EBook on Google Books here:

    link to books.google.co.uk

    1. 11.1

      Distant, thanks for this.

      The language inserted into Arkwright’s patent does seem to allow the crown or Privy Council to consider and to revoke a patent based upon prior use or prior invention within England. This language seems somewhat changed from the time of Elizabeth, which only included the provision concerning inconvenience and prejudice of the realm. Do you know when the change occurred.

      Also consider that the only authority in England that could actually bring a scire facias was the crown itself. Thus, there would be a trial in the common law courts prosecuted by the Atty. Gen. This is only a change in venue, and not a matter of substance except for the fact that jurors were involved.

    2. 11.2

      Thanks! Note that the source of this quote is Dr. Sean Bottomley (“Patent Cases in the Court of Chancery, 1714-58”, The Journal of Legal History 35, 2014), who is also a co-author on the legal historian brief in Oil States.

  4. 10

    A fair and equitable approach question to dialogues here:

    What is the “count” cap on posts on a single thread and why is this number not consistent across all posters?

    1. 10.1

      As an objective indicator, for example, counting up the number of permitted posts (per different login), it appears that I am capped at 10 per day.

      Across the Privy and Rights threads, Malcolm appears UNcapped, or at the least, has been permitted to post upwards of 17 per day.

      GIVEN that Malcolm typically only employs a drive-by monologue style (and that, with a short script of ad hominem with the MOST – by far – posted threads removed for being offensive), AND that Malcolm’s motif has enjoyed an 11 year reign of the same “style,” the NON-objective disparity belies at the very least the perception of an active bias, AND given that I actually engage in dialogues with multiple posters, what exactly is the “count” control – as unbalanced as it is applied – meant for?

      Objectively?

      One can “claim” that they want a healthy ecosystem all the live long day, but when active editorial controls tell a different story.

      A
      very
      different
      story.

      (say it with me: La Vee)

      1. 10.1.1

        What’s preventing you from using a second e-mail address?

        The gravatar figures are generated from a hash of the alias and the e-mail address you entered. A throttling facility, if it exists, would probably reuse that unique ID.

  5. 9

    Dennis : Can you answer a simple question on the record :

    Are you benefiting from efficient infringement lobby ?

    For example are you , your wife, your kids receive any monetary value from Google or those funded by google ?

    For example : Are your research grants or conferences funded by efficient infringement lobbying companies ?

    1. 9.1

      While you are at it, Dennis, can you please clarify whether you have stopped beating your wife? ;)

      1. 9.1.1

        Being funded by google isn’t illegal. I do believe that it is ok for people to inquire as to whether a given large name in a field is benefiting from those that they see arrayed agin them.

        1. 9.1.1.1

          I do believe that it is ok for people to inquire as to whether a given large name in a field is benefiting from those that they see arrayed agin them.

          Right. Giant corporations tend to benefit from pretty much anything that isn’t specifically targeting giant corporations. Why is that? Because they have the money and lawyers to turn a situation around to their advantage.

          That’s why it’s also “okay” to mock people who reflexively see other entities “arrayed agin them” every time their precious patent rights are somehow diminished for good reasons that have nothing whatsoever to do with Google.

          I mean how hard is this to understand: you don’t have to be payed by Google to support agency review of junk patents.

          People like “Brian” are just shooting themselves in the face when they try to turn the AIA into some sort of sneaky corporate welfare. It’s not. Patent attorneys like me who support agency review would be perfectly happy to see Google go up belly up tomorrow for any number of reasons. That’s now what this is about.

          1. 9.1.1.1.2

            “I mean how hard is this to understand: you don’t have to be payed by Google to support agency review of junk patents.”

            True, but D is by now a public figure tis ok to ask.

            “It’s not.”

            The balloon review case sure looked like it. Not even sneaky, just plain ol corporate welfare.

            Anyway, bottom line, in this form of gubmit I still think it’s ok to ask. And were I in any such position I’d go ahead and tell. Generally people in my field are more than happy to tell who is supporting their efforts/work.

            1. 9.1.1.1.2.1

              D is by now a public figure tis ok to ask.

              Nobody is questioning whether “it’s ok to ask” people who’s supporting them.

              What’s being questioned is the s@ nity of the person asking (actually what’s happening is the person is just being mocked). And the reason why that’s being questioned is because if Google is paying Dennis to shill for them they sure aren’t getting their money’s worth.

              How much k0 0l-aid do you have to drink to see otherwise? “Brian” might as well ask the same question of Mel Gibson or any other “public figure”.

              The balloon review case sure looked like … plain ol corporate welfare.

              No idea what you’re talking about but I’m sure I don’t care.

              1. 9.1.1.1.2.1.1

                I tend to agree with you, but neither me or you really have much of a horse in this. They do.

                And it certainly isn’t beyond the realm of possibility that D was having some research supported by Google. That’s routine for researchers in industrial fields, with which patents are associated.

              2. 9.1.1.1.2.1.2

                “No idea what you’re talking about but I’m sure I don’t care.”

                Go to gene’s site and look back until you see the balloon case(s) write up and then review the wrappers and decisions.

                You should care, because if more of those nonsensical decisions keep coming out eventually your muh program is gonna get shut down.

                1. more of those nonsensical decisions keep coming out eventually your muh program is gonna get shut down.

                  Right. Just like they shut down the patent granting “program” when the nonsensical claims started pouring out of it.

          2. 9.1.1.1.3

            Right. Giant corporations tend to benefit from pretty much anything that isn’t specifically targeting giant corporations. Why is that? Because they have the money and lawyers to turn a situation around to their advantage.

            That’s why it’s also “okay” to mock people

            Your “that’s why it is “okay” is seriously skewed.

        2. 9.1.1.2

          No, but it does place an emphasis on ensuring the payer gets what the payer wants to get. Witness studies for drug companies, which basically always get what the drug company wants, unless the study was not paid by the drug company. Then the study comes out opposite of what the drug company wants. Basically, every single time.

          1. 9.1.1.2.1

            Witness studies for drug companies, which basically always get what the drug company wants, unless the study was not paid by the drug company.

            What does this have to do with Google allegedly paying Dennis?

            Answer: nothing.

            You do realize that there are many other patent blogs out there on the Internet solely and blindly devoted to perpetuating patent maximalist mythology, right? Go take your payola fantasies and whine to them, mkay? For a change. Then we’ll know that you really care about payola. And we already know that’s never, ever going to happen.

            1. 9.1.1.2.1.1

              There is nothing “allegedly” about it.

              It was a request for clarity.

              You really should try to note the difference.

            2. 9.1.1.2.1.2

              None are as popular as D and most aren’t professors would could always use some research fundin’s.

      2. 9.1.2

        How is being clear on possible biases a “when did you stop beating your wife” scenario?

        Are you suggesting that courts – asking the exact same thing – are ALSO engaged in this type of fallacy?

    2. 9.2

      Fyi to Google: if you give me $50 million dollars I will guarantee far more “dismantling” of the patent system than you are getting for your money now.

      LOL

      efficient infringement

      Because America loves inefficient infringement.

      Nothing says “freedom” like a zillion junk patents in the hands of the worst attorneys ever born.

    3. 9.3

      I forgot that verifiable claims about history change based on who paid an author.

      1. 9.3.2

        Clearly you have not been paying attention to AT LEAST the posts on the boards here (as that is exactly what happens with the anti-patent spin-meisters.

    4. 9.4

      Brian, I think it is fair to seek information about potential bias of your sources. Here is some information.

      I gave up a lucrative career at a law firm to become a law professor. My law school salary is healthy, but still less than I made as a first year associate at my law firm about 15 years ago. The nice thing is that Missouri is a relatively inexpensive home.

      Patently-O receives revenue from advertising and the “job board.” All of our revenue is associated with ads that are publicly available and always indicate the name of the sponsoring entity. Advertisers have no editorial input or control beyond the look and positioning of their advertisement. The MBHB firm (my former law firm) has been a longtime sponsor of the blog and has never attempted to exert any editorial control over the content.

      No one in my immediate family has any clients associated with either a law practice or lobbying practice. Neither I nor my family members have ever accepted any money in the form of a “grant” or the like from a private entity or from any entity with any particular position in the patent world (that I know of). Other than the Patently-O ads, we have no monetary ties to any of the major players in the patent world other than the ordinary course of business (such as my gmail account, purchase of Microsoft products, and my Samsung phone).

      I have worked as an expert witness in a couple of occasions in the past decade, providing written testimony that, ended up supporting the patentees’ positions. Most recently, I provided testimony in a dispute between Nikon, ASML, and Carl Zeiss, all of whom have sizable patent portfolios.

      I do attend legal conferences that that themselves are sponsored by entities involved in the patent world, and have also spoken at private corporate events such as Monsanto’s in-house counsel retreat. For those events, I ordinarily request compensation for my reasonable actual expenses (which do not, for instance, include business class air-fare). When an honorarium has been available, I have not accepted the money but instead suggested that the money be donated to Mizzou. (Note here, I did not request any compensation for expenses in the Monsanto example.) At these events, I have never been asked to take any particular position by the organizers or sponsoring entities.

      DC

        1. 9.4.2.1

          Brian, for your next such conspiracy theory questions, please ask commentators here how much self-interest-income they or their firms have lost, or expect to lose, due any of the AIA patent statute provisions that they have been vehemently opposing here, or vice versa?
          I do not think it will get a through honest full disclaimer answer like you just did from Dennis, or I give earlier.

          1. 9.4.2.1.1

            Surely, Mr. Morgan, you do not mean to imply that there are self-interested motives on both sides of this discussion? I thought that it was to be taken as a given the mostly anonymous* grousers agitating for IPRs to be tanked were as pure as the driven snow. Butter would not melt in their mouths, to be sure.

            [/sarcasm]

            * Ned Heller deserves mention as a very honorable exception to this general rule of anonymity. He is also the anti-IPR voice most likely to make a cogent legal argument in defense of his thesis, and not merely a peevish rant.

            1. 9.4.2.1.1.1

              What a lovely strawman (lack of self-interest).

              Bu then again, you did not seem to mind the innuendo of “next such conspiracy” that sought to belittle a legitimate question.

              Sort of like you did not bother to reply to my counter point on whether or not you think that courts asking for the exact type of thing are also engaged in that “fallacy.”

              Times like this Greg that your credibility takes massive hits.

              You might want to s_itcan that tendency towards sarcasm, as that is OFTEN when you step into the deep piles.

    5. 9.5

      None of our tax dollars fund this site. It is a thoroughly private endeavor, and in no way constitutes government action.

      Therefor, none of us readers are “stakeholders” in this place, and have no ownership or any other rights to it or to its content, whatever. We have no right to demand any “transparency” regarding any funding, motive, political perspective, or any other aspect regarding patently-o or DC.

      It is a free country and DC can do anything he wants with the site and accept or reject any support, monetary or otherwise, for any reason.

      It is laudable that DC has provided some information for the edification of the readership to better understand what or what does not affect the content…

      we should all do well to remember that it was an entirely voluntary gratuity on DC’s part.

      1. 9.5.1

        Anon2,

        Asking is not demanding.

        As to “demanding,” itself, are you saying that things that come across as demands are somehow forbidden to be made?

        And YES – while the sharing was indeed an entirely voluntary gratuity, there yet remains the fact that perceptions about this vehicle, even if “It is a free country and DC can do anything he wants with the site and accept or reject any support, monetary or otherwise, for any reason.are formed – shared or not shared – and THIS FORUM does (at least on the surface) DOES invite the public in for discussions.

        I recognize your point with my quip of “La Vee” (with the invitation to “say” it with me), and at the same time as recognizing that very “whatever,” capability, the nature of being effective DOES draw on (at least the attempt) to be objective.

        Further, (and we will see if this part sees the light of day), a supposedly open forum enjoys certain legal protections that a “closed” or editorially controlled content-wise forum does not.

        THESE are also things that we should all do well to remember.

        1. 9.5.1.1

          “La Vee” I was not at all responding to your post above.. only read it recently. Only the “request for information” proffered to DC.

          You said:

          “Further, (and we will see if this part sees the light of day), a supposedly open forum enjoys certain legal protections that a “closed” or editorially controlled content-wise forum does not.”

          Are you proposing that in a proper society you have some sort of “right” re. posting on a private but open forum which differs from your rights re. posting on a “editorially controlled content-wise forum”? How is that possible, an implied contract of some sort?

            1. 9.5.1.1.1.1

              salvaged:

              Your comment is awaiting moderation.
              August 22, 2017 at 3:32 pm
              No such right – but yes, I would love to see objectivity and consistency being applied when “ecosystem” health has been made an issue.

        2. 9.5.1.2

          “anon” I recognize your point with my quip of “La Vee” (with the invitation to “say” it with me), and at the same time as recognizing that very “whatever,” capability, the nature of being effective DOES draw on (at least the attempt) to be objective.

          What kind of dressing goes best with word salad?

  6. 8

    DC: For many years leading up to its last cancellation action in 1779, the Privy Council operated as a kind of administrative body empowered to revoke or void issued patent rights on signature of a sufficient number of Privy Council members. If the Privy Council was empowered in the 1790s to cancel issued patents without judge or jury, that suggests that – in today’s world of expanded administrative power – Congress can also empower a the PTO to cancel issued patents.

    Yes that is a logical conclusion. Now layer on top of that the fact the Constitution gives Congress the option of creating a system to promote progress and never even uses the term “patent.” Congress would seem to be free to define a “patent right” in any manner that it chooses, which is exactly what it has done. Specifically, Congress has expressly defined a patent right — by statute — as a conditional right that may be revoked by the granting agency upon a showing of error by the granting agency.

    Nobody is forced to apply for this “patent right.” If you don’t like it, then get out of the business.

    I can tell everyone from personal experience that vast numbers of people (historically significant numbers of people, even!) from all over the world are interested in obtaining these patents. I’ve got work coming out of my ears. This is indisputably true and the fact that a handful of entitled whiners burned their “worthless” patents while filling their milk bottles with their crocodile tears last week means absolutely nothing (good for laughs, though).

    1. 8.1

      On top of that, IPR/PGR do not cancel a patent, but claims. Even if all the granted claims are canceled, the patent is still alive and can be reissued or reexamined (ex-parte) with the same priority date as before the IPR/PGR. This is not even close to revoking patent rights (exclusive right to an invention described in the patent).

      1. 8.1.1

        IPR/PGR do not cancel a patent, but claims. Even if all the granted claims are canceled, the patent is still alive and can be reissued or reexamined (ex-parte) with the same priority date as before the IPR/PGR. This is not even close to revoking patent rights (exclusive right to an invention described in the patent).

        Another great point that renders this Sherwood Forest Sideshow completely irrelevant.

        1. 8.1.2.1

          What happens to a US Patent after all of the claims are cancelled?
          (I don’t know)

          The same thing that happens when just one claim is canceled: nothing.

          This is how abstractions work, by the way.

        2. 8.1.2.3

          After all claims to a patent are canceled, the same thing happens to this patent as to any other patent: it expires, either because the patent reaches its term, or because the owner fails to pay the renewal fees.
          Before the patent expires, the owner could file a reissue, with the limitation Ned pointed out below -the invalidity of the canceled claims has become the law of the cases, as well as the usual limitations for reissues.

          1. 8.1.2.3.1

            And I can add that the right of the patent owner to exclude other from practicing an invention disclosed in the patent has not been “extinguished” by the cancelation of invalid claims during the IPR/PGR. The patent owner has to fix the claims of the patent (if feasible).

      2. 8.1.3

        Pika, by statute, each claim is to be viewed for validity purposes as an independent invention. Thus the cancellation of claim is effectively the same as cancellation of a patent.

        In a reissue proceeding, one cannot reclaim a lost claim or anything close to it. Nonobvious variations are not allowed.

  7. 7

    This clause was inserted and patents issued from the time of Elizabeth:

    [I]if on examination of the patent before the Privy Council, or a specified number of its members, before whom the patentee had been called, the grant was certified to be inconvenient or prejudicial to the realm, then on the signification of the pleasure of the Crown in that respect… or upon a certificate to that effect made by the Privy Council… the patent immediately, or at the end of a specified period of notice, was to be void and frustrate.

    1. 7.1

      Dennis, note that the grounds are inconvenience or prejudice to the realm. This is significantly more harm than inconvenience or prejudice to a few who might be covered by the patent.

      Furthermore, inconvenience or prejudice of the realm is not the same thing as determining whether a patent complies with the law, and where the trial of disputes of fact must be held.

      Finally, we have a statute of Parliament and the prerogative of the King. Parliament says the jurisdiction to void a patent shall be in the common law courts. Did not the king, even in 1791, have to obey the acts of Parliament? If the King still had authority in 1791 to revoke a patent for invalidity in England, where did the King get that authority if the king himself is not above the law?

      Even if it took more than 100 years from the Statute of Monopolies in 1624 until the privy Council began to obey the law in 1753, the fact that it began to obey the law should be given some significance.

      1. 7.1.1

        This is significantly more harm than inconvenience or prejudice to a few who might be covered by the patent.

        A “few”?

        LOL

        We’re all “covered” when a junk patent issues, Ned.

        1. 7.1.1.1

          MM, it really depends on what the junk patent covers.

          Consider the patent that was awarded to Bell. The U. S. went after Bell’s patent because it allowed the creation of a monopoly.

          In contrast, Selden’s patent cover the entire automobile industry.

          Patents this powerful should be looked at – and they were looked at.

        2. 7.1.1.2

          We’re all “covered” when a junk patent issues, Ned.

          Begs the question, Malcolm – the type of being “covered” is like Lujan (no matter what heart-string scenarios that you may want to present – sadly, the dialogue limiting editorial controls limit responses, as your own conveniently outlined situation simply does NOT imply the law as you wish it were to be.

  8. 6

    Red Herring.

    Privy Council had been around for hundreds of years granting, extending and canceling letters patent on many many areas. Relic of England’s privilege model that did not operate at common law.

    Look closely at the cancelled patents and the circumstances – I’ve read an article in the past 5 years that looked at the Privy Council orders around patents for inventions, and I think most cancellations were related to the war power – either cancelling patents that interfered with the ability to supply the navy or extending patents to simplify the contracting for supplies.

          1. 6.1.1.1.1

            But Ned, information is abstract and wants to be free….!

            Wouldn’t real “Information Maximalists” want all such constraints on knowledge removed?

            ;-)

  9. 5

    The UK privy council acted in a patent matter as recently as 2014 in a case originating in Jamaica.

    It was also the ultimate appellate court in many colonies long after the Statute of Westminster was promulgated in 1931. Cases from Canada were referred well into the 1950s. [ link 1, link 2, link 3 ]

    Several Privy Council decisions involving letter patents for inventions (in opposition to corporation charters) are mentioned in lists of cases originating in Canada. From the third link, the ultimate patent validity case decided was probably Minerals Separation North American Corporation v. Noranda Mines, Limited.

    1. 5.1

      Were those patents for inventions or other patents?

      Several constitutions (Australia, Jamaica) give the English Monarch certain authority and the Privy Council acts in that regard.

      1. 5.1.1

        Hokie, the answer is in my comment. I make the distinction between letters patents for inventions and letters for other privileges.

        The bailii link is broken for some reason, here’s second attempt. (Is there a way to preview the comment before sending it?)

        The Minerals v. Noranda case concerned patent CA247576 with the title “Froth flotation concentration of ores”.

        According to this plaque hung in Quebec City, the first invention letters patent north of the 45th parallel would have been issued in 1824. (The text doesn’t say whether the patent was obtained through a petition to parliament, e.g., through a private bill, or through the executive power of the colony’s governor).

        But the the régime français, whose custom was maintained in the law after 1763, also issued privileges and monopolies, and I wouldn’t exclude that even older rights might be dug up.

        This patent is posterior to 1791, but antedates the establishment of the Province of Canada (1841) or the British North America Act (1867).

        If the 13 colonies hadn’t gone “rogue”, they could possibly have gone down a similar path.

        The first US patent law is from 1790, roughly co-temporaneous with the French patent act. Any notion of “property”, intellectual or otherwise, would also have to be assessed using the thinking prevailing back then about the nature of the rights granted. (At least one SCOTUS justice would gladly oblige, providing useful justification for cases involving a women’s body or chattel…) You would have to get into the theory of patents. (bargain? reward? or are they justifiable through some other utilitarian approach?)

        Back then, the newly founded United States tried very actively to get technical talent from England, trying to circumvent the draconian restrictions to the emigration of tradesmen. Glass-making had to be mastered in order to achieve import replacement, and this aspect was studied by scholars. On the other shore, the French also did their best to find out about English copper and iron making. [no time to dig up references].

  10. 4

    What is the date when English common law was incorporated into US law? After that date, English law is much less relevant. The date was certainly not after the ratification of the Constitution.

      1. 4.1.1

        1791 is the year that the VII amendment was enacted. The VII amendment provides that “the right of trial by jury shall be preserved.” The Supreme Court has explained that the word “preserved” means that the right to a jury trial is to be frozen in place as of the date of the VII amendments ratification. Thompson v. Utah, 170 U.S. 343, 350 (1898) (“[T]he word ‘jury’ and the words ‘trial by jury’ were placed in the Constitution of the United States with reference to the meaning affixed to them in the law as it was in this country and in England at the time of the adoption of that instrument…” emphasis added).

        So, yes, the relevant year for VII amendment analysis is 1791, even though that comes long after our revolutionary split from Great Britain, and even after the Constitution came into legal effect.

        1. 4.1.1.1

          How does this fit in with the incorporation of England’s common law as part of our laws?

          1. 4.1.1.1.1

            How does this fit in with the incorporation of England’s common law as part of our laws?

            As a quirky exception. As the Supreme Court explained in Dimich v. Schiedt, 293 U.S. 474, 487 (1935)

            The common law is not immutable, but flexible, and upon its own principles adapts itself to varying conditions. But here, we are dealing with a constitutional provision which has in effect adopted the rules of the common law, in respect of trial by jury, as these rules existed in 1791. To effectuate any change in these rules is not to deal with the common law, qua common law, but to alter the Constitution. The distinction is fundamental…

            (internal citation omitted)

            1. 4.1.1.1.1.1

              Dimich: The common law is not immutable, but flexible, and upon its own principles adapts itself to varying conditions. But here, we are dealing with a constitutional provision which has in effect adopted the rules of the common law, in respect of trial by jury, as these rules existed in 1791. To effectuate any change in these rules is not to deal with the common law, qua common law, but to alter the Constitution.

              Just so there’s no confusion, the Supreme Court dreamt this so-called “fixed historical test” up. There is no mention of English courts in the Constitution, nor is there any mention of any “fixed date” (the absence of any such reference seems utterly reasonable).

              An alternative and far more sensible interpretation of the clause would be one which relies on the general welfare and justice-promoting principles which led jury trials to be mandatory “at common law” and not in others. That approach is eminently reasonable because of the mutable nature of “the common law” which necessarily evolves as society evolves.

              See, e.g., Chauffeurs et al v. Terry (1990)

              link to en.wikipedia.org

              Justice Brennan concurred, but desired to simplify the test for determining a plaintiff’s Seventh Amendment rights. Specifically, he felt that it was unnecessary to examine the nature of the action itself, but rather to simply examine the type of relief requested by the plaintiff. If the plaintiff requested a legal remedy (such as monetary damages), Brennan would simply assume that the right to a jury trial existed, unless Congress had assigned the particular action to a non-Article III tribunal, and a jury trial would frustrate the intent of Congress.

              Brennan went on to criticize the Court’s historical analysis of traditional equitable and legal causes of action. Many of the statutory rights created by Congress are not analogous to anything which existed in the courts of 18th-century England, and judges lack the historical training to analyze such matters consistently. Different justices and historians have come to different conclusions as to what is analogous to a “legal” or “equitable” action. He concluded that the right to a jury trial was too important for the Court to allow for such an uncertainty.

              Justice Stevens concurred separately, on similar grounds as Justice Brennan did. He felt that the Court’s attempt to find an 18th-century common law analogue to the collective-bargaining and fair representation actions in this case was a misguided historical judgment, and that the type of relief sought by the plaintiff was the relevant inquiry. He explained that it was perfectly rational to have members of the community—i.e. a jury of one’s peers—hear such a case.

              1. 4.1.1.1.1.1.1

                MM, with respect to a new cause of action unknown at common law, I suspect the search for analogies may be fruitless and may be that Brennan and Stevens had it right. However, the same is not true with respect to causes of action and remedies that actually were litigated in the courts of England and to juries.

                1. the same is not true with respect to causes of action and remedies that actually were litigated in the courts of England and to juries.

                  The “patent rights” we have today are, by definition, completely different from the so-called “patent rights” that existed previously. They are conditional rights that are revokable by the granting agency upon a showing of error. They were defined in this manner by Congress, which is expressly given the option in the Constitution of not providing any “useful arts promoting” “right” at all.

                2. The “patent rights” we have today are, by definition, completely different from the so-called “patent rights” that existed previously.

                  You keep on saying this – neglecting to account for the FACT that even Congress may not violate other Constitutional protections of property, once the initial setting of that property occurs.

                  You STILL want to use the “conditional rights” view that any and all changes MUST be “OK.”

                  That is plain and simple legal error.

                  That you insist on making that same error over and over and over (while not recognizing that plain error) is something less than (far less than) inte11ectual honesty.

                  And yes, we both know that.

              2. 4.1.1.1.1.1.2

                Just so there’s no confusion, the Supreme Court dreamt this so-called “fixed historical test” up.

                If you mean (as you say) that “[t]here is no mention of English courts in the Constitution,” I can hardly disagree. I must quibble, however, with the characterization “dreamt up,” as if the Court created this test out of whole cloth.

                At the time of the VII amendment, there were people (like myself) who want to do away with juries, and others who wanted to constitutionalize the use of juries for all fact-finding. The original drafts of the Constitution passed over this dispute in silence, because no compromise position could be reached. I expect that the drafter hoped that the question could be devolved to more local jurisdictions to set rules on this point, so that those who wanted juries could have them and those who did not could do away with juries. Unfortunately, the issue would not go away, and both sides were insistent on the point while the Bill of Rights was being drafted. The VII amendment’s use of “preserve” represents a compromise between these two positions—where we have juries now, we will keep them, but no one is obliged to use juries in newly created legal situations.

                The historical test gives effect to this political compromise. It is dubious that such a compromise could have been struck if the participants had believed that the resolution of whether or not the amendment applied was to lie with a judge, who as simply going to ask “does the remedy being sought appear ‘legal’ or ‘equitable’ to me?”

                1. I must quibble, however, with the characterization “dreamt up,” as if the Court created this test out of whole cloth.

                  Fair enough. It was, however, just one of several alternatives that could be reasonably fashioned from the context.

        2. 4.1.1.2

          So the English practice is only the first half of the puzzle. The 2nd half is the USA practice.

          1. 4.1.1.2.1

            Which annihilates this argument about the privy council.

            The question is then about 18th US practice.

            1. 4.1.1.2.1.1

              Maybe I am getting this wrong, but my understanding is that English common law was incorporated into our laws as of a date (1791?) and then after that date US common laws are used. So, it is as if all of English common law prior to 1791 is incorporated into the Constitution, but any interpretation of that law by England after 1791 is just advisory. And, US common law and laws after 1791 are ruling.

              1. 4.1.1.2.1.1.1

                Well, courts of law and courts of equity existed in the colonies before the constitution. King George aggressively limited their use, however.

                Access to justice is repeatedly described in the List of Grievances included with the Declaration of Independence. Look it up. It’s fascinating.

                In the case of patents, equity jurisdiction didn’t occur until the 19th century.

                Not looking good for the PTO.

                1. I am sure that a witty reply of Sherwood Forest dispels any of those factually based notions.

                  What is there to dispel? Anony’s observations concern what happened here in the U.S.

                  Such observations are largely irrelevant to the present discussion. U.S. practice has no applicability to VII amendment questions, where the relevant question is “what did they do in England in 1791?”.

                  By contrast, observations about the Privy Council (which was in England) in 1791 are quite germane to VII amendment questions. When one side is pointing to germane facts, and the other to irrelevant facts, one need not “dispel” the latter facts, one simply ignores them.

                2. Greg,

                  Reread your quote. This time, carefully. What do you see?

                  Thompson v. Utah, 170 U.S. 343, 350 (1898) (“[T]he word ‘jury’ and the words ‘trial by jury’ were placed in the Constitution of the United States with reference to the meaning affixed to them in the law as it was in this country and in England at the time of the adoption of that instrument…” emphasis added)

                3. “[T]he word ‘jury’ and the words ‘trial by jury’ were placed in the Constitution of the United States with reference to the meaning affixed to them in the law as it was in this country and in England at the time of the adoption of that instrument…

                  The crystal clarity of the Constitution is so awesome. That’s why we love it! Thank goodness the livelihood and general welfare of millions and millions of ordinary people who don’t gamble at the patent casino are not at stake here.

                  In other news, the term “affixed” here is rather amusing, given that we’re talking about “meanings” being “affixed” to legal terms that are undefined in the document in which they appear.

                4. Reread your quote. This time, carefully. What do you see?

                  Thompson v. Utah, 170 U.S. 343, 350 (1898) (“[T]he word ‘jury’ and the words ‘trial by jury’ were placed in the Constitution of the United States with reference to the meaning affixed to them in the law as it was in this country and in England at the time of the adoption of that instrument…”

                  Thompson is not the Court’s only word on the VII amendment question. I assure you, English practice—not the practices of the U.S. states—is the relevant point of inquiry. Gasperini v. Center for Humanities, 518 U.S. 415, 452 (1996) (“The common law here alluded to is not the common law of any individual state, (for it probably differs in all), but it is the common law of England, the grand reservoir of all our jurisprudence,” quoting United States v. Wonson, 28 F. Cas. 745, 750 (1812 C.C. Mass.) (Story, J.))

                5. anony, yeah, King George clamped down because American judges and American juries would not convict even if told to do so.

                  A lot of what is in the Bill of Rights has to do with the events leading up to 1776.

              2. 4.1.1.2.1.1.2

                So the Constitution requires all-male juries, then, because that’s how it was in England in 1791.

                Or maybe this “fixed historical” reading of the VIIth has some space for reason to slip in? Some acknowledgement that maybe — just maybe — the Founders didn’t think of everything?

          2. 4.1.1.2.2

            I am not sure I quite understand what you mean. U.S. practice is irrelevant to the VII amendment analysis. United States v. Wonson, 28 F. Cas. 745, 750 (1812 C.C. Mass.) (Story, J., “[T]he scope and object of the amendment… is in these words: ‘… the right of trial by jury shall be preserved. And no fact tried by a jury shall be otherwise re-examined in any court of the United States, than according to the rules of the common law.’ Beyond all question, the common law here alluded to is not the common law of any individual state, (for it probably differs in all), but it is the common law of England, the grand reservoir of all our jurisprudence,” emphases added).

            1. 4.1.1.2.3.1

              The English did it their way as described by amici. King George forced the colonies to do it his way. Under the Patent Act of 1790, the remedy was in a court of law, presumably with a jury to resolve disputed questions of fact.

    1. 4.2

      The text of the Seventh Amendment says this:

      “In suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved, and no fact tried by a jury, shall be otherwise reexamined in any court of the United States, than according to the rules of the common law.”

      What was the practice in 18th and 19th century America? Equity jurisdiction came much later.

  11. 3

    This is probably the PTO’s best argument for the jury trial issue.

    It sounds like an uphill battle. If the parties stipulated to no question of fact then the equity court resolved the validity question (the demurrer described by the professor amici). Otherwise, all disputed questions of fact for validity were referred to law.

    However, according to this post from Dennis, the monarchs apparently reserved to themselves an escape hatch privy council right, which was never used after the late 18th century?

    On the balance …

    1. 3.1

      The escape hatch was limited in scope to prejudice to the realm and the like. This is exactly where the public rights doctrine allows the monarch to operate.

      1. 3.1.1

        Is that “public rights” or “Monarch rights”…?

        (and how does the notion of property compare under a monarchy (royal divine right and all land belongs to the King) and otherwise)

    1. 2.1

      Not really.

      Revocation for national security purposes is well withing the public rights doctrine.

      Revocation because the claimed invention was invented by another is not.

    1. 1.1

      Er, yes. The whole reason why 1791 is the important year is because that is the year that we ratified the Bill of Rights, which includes the VII amendment.

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