nation of open-content licenses by analogy to the abandonment provisions of the Patent Act.
B. Patent Abandonment and the Copyright Act
The first person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,”[1] so long as the invention is useful,[2] novel,[3] and nonobvious,[4] and so long as none of a series of statutory exceptions bars the issuance of the patent.[5]
Although inventors may patent their discoveries, they are not obliged to do so. Nearly two centuries ago, the Supreme Court recognized an inventor’s right to “abandon his invention, and surrender or dedicate it to the public.”[6] This right also has been expressly recognized in the patent statutes continuously since 1839.[7] It is recognized today in § 102(c), which bars an award of patent if the inventor “has abandoned the invention.”[8] The touchstone under § 102(c) is whether the inventor clearly intended to dedicate the invention to the public.[9] Thus, under the Patent Act, inventors may expressly relinquish rights in their inventions for the benefit of the public—either expressly under § 102(c) or by taking any of the other actions that the statute specifies as barring patentability.[10] The result in either case is that the invention enters the public domain and may not thereafter be patented.[11]
Given that the Patent Act and the Copyright Act are two different statutes, the presence of clear avenues of abandonment in the one may not necessarily say much about the apparent lack of similar provisions in the other.
On multiple occasions, however, the Supreme Court has suggested that the
- ↑ 35 U.S.C. § 101 (2006). Although the words “first person” do not appear in § 101, this is the practical effect of § 102(f) (2006), which bars the award of a patent to a person who “did not himself invent the subject matter sought to be patented.”
- ↑ Id.
- ↑ Id. § 102(a), (e)–(g).
- ↑ Id. § 103(a).
- ↑ See id. § 102(b)–(d).
- ↑ Pennock v. Dialogue, 27 U.S. 1, 16 (1829); see also Kendall v. Winsor, 62 U.S. 322, 329 (1858).
- ↑ See Patent Act of 1839, ch. 88, § 7, 5 Stat. 353, 354 (entitling applicant to patent “except on proof of abandonment of such invention to the public”).
- ↑ § 102(c). The phrasing of this provision, although grounded in Supreme Court decisions like Pennock, is infelicitous; it would be more precise to say that the inventor has “abandoned” her right to obtain a patent on the invention. See, e.g., Alan L. Durham, Patent Law Essentials: A Concise Guide 123 (2004).
- ↑ See, e.g., Moore v. United States, 1977 U.S. Ct. Cl. 578 (1977).
- ↑ See supra note 330 and accompanying text. For example, an inventor might achieve the same result as an express abandonment of the invention under § 102(c) simply by failing to submit a patent application for more than one year after offering the invention for sale to the public, which would bar patentability under § 102(b).
- ↑ See Graham v. John Deere Co., 383 U.S. 1, 6 (1966) (“Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available.”).
