Last Thursday, the Intellectual Property Student Association and the Federalist Society of the University of Michigan Law School hosted Professor Michael Risch of Villanova School of Law. Professor Risch gave an intriguing talk about America’s first patents and the history of patent law as a whole. It was standing room only with a lot of 1Ls in attendance (probably for the free falafel), and the talk went very well. UMLS Professor Rebecca Eisenberg provided some commentary on the talk to finish the event.
Professor Risch made three main points: inventions change with time, importing English patent laws may have been flawed, and the machine-or-transformation test is not historically justified. He started by showing some of the earliest American patents, including Eli Whitney’s cotton gin, a coil spring mattress (though the people of the time thought the concept of sleeping on coils to be insane), and a horse-powered boat (yes, you read that right). On the last one, not only was there a patent on a horse-powered boat, there was an infringement suit, which implied that there was at least one other person who used a horse-powered boat! The key element to take away from the early patents is that the subject matters of these patents could not be foreseen by Congress, especially as time moved on, so the idea that Congress must act to allow new subject matter may be ill advised.
The importation of English patent law as the basis for our own may have been a mistake. English patent law relied on grants from the crown and was intended for manufactures mostly. Methods could not be patented in England, as they were grouped with scientific “principles” and other traditionally unpatentable matter. American patent law did allow methods to be patented, indeed the very first patent, signed by George Washington himself, was for a method to make pot or pearl ash. Influence from English law persisted primarily through the opinions of Justice Story, who viewed methods as unpatentable and who remains to be quoted to this day.
Some of the early business method patents imply that the machine-or-transformation test was simply not used in patent examination. One such patent was a method for numbering checks and matching these checks to a ledger. No machine is used, and nothing is transformed, yet the patent was granted. Indeed, about 40% of the method patents (comprising about 12% of the total patents issued) issued from 1790 to 1839 would fail the machine-or-transformation test. Until the 1900s, machines were not even allowed in method patents! To say that the machine-or-transformation test has a historical basis ignores the historical data.
Overall, the event went very well, and we were all very excited to have Professor Risch join us at Michigan. His talk was very interesting, even (and especially) to those without prior IP background (lots of pictures!), and there was good feedback from those in attendance. Read his full paper here.