Patently Unconstitutional: The Geographical Limitation on Prior Art in a Small World

Abstract

This Article argues that the U.S. Patent Act's geographical limitation on prior art is unconstitutional because it conflicts with the constraints embodied in the Intellectual Property Clause of the Constitution. This geographical limitation, which appears in various subsections of section 102 of the Patent Act of 1952, prevents evidence of public knowledge and/or use of an invention in a foreign country from being used to assess the novelty and non-obviousness of that invention in the United States. While various commentators have criticized the policy implications of the section 102 geographical limitation, none have undertaken an analysis of the provision in light of the boundaries on congressional action set by the Intellectual Property Clause. The Article's analysis draws together evidence of 1) the framers' intent in drafting the Clause, 2) congressional and judicial interpretations of the Clause, and 3) changes in the public accessibility of foreign public knowledge and/or use, to inform the conclusion that prior art must be defined globally, to effectuate constitutional purposes. Because the section 102 geographical limitation on prior art allows the patenting of inventions in the public domain, i.e., inventions that lack novelty and non-obviousness, it is unconstitutional and must be eliminated. In addition to constitutional arguments, the Article also expands and provides a fresh perspective on policy arguments supporting the elimination of the section 102 geographical limitation, including those relating to biopiracy, patent policy, and patent harmonization efforts. The Article ultimately concludes that while the limitation may have been appropriate when first enacted in 1836, it is clearly unconstitutional in this technologically advanced, 21st century world and must be eliminated, either by Congress or the Supreme Court.

JEL Classification: O3, K2