34 Pages Posted: 29 Sep 2017 Last revised: 17 Apr 2018
Date Written: September 27, 2017
The first known patent case in the United States courts did not enforce a patent. Instead, it sought to repeal one. The practice of cancelling granted patent rights has appeared in various forms over the past two and a quarter centuries, from the earliest U.S. patent law in 1790 to the new regime of inter partes review (“IPR”) and post grant review. With the Supreme Court’s grant of cert in Oil States Energy Services v. Greene’s Energy Group and its pending review of the constitutionality of IPR, this history has taken on a new significance.
This essay uses new archival sources to uncover the history of patent cancellation during the first half-century of American patent law. These sources suggest that the early statutory provisions for repealing patents were more widely used and more broadly construed than has hitherto been realized. They also show that some U.S. courts in the early Republic repealed patents in a summary process without a jury, until the Supreme Court halted the practice. Each of these findings has implications—though not straightforward answers—for the questions currently before the Supreme Court.
Keywords: Patent law, history of patent law, patent litigation, patent legislation, patent cancellation, Patent Office, inter partes review, patent reform, legal history, federal courts, Oil States Energy Services, Patent Act of 1790, Patent Act of 1793, U.S. Constitution, Seventh Amendment, Article III
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