So I've been thinking about @Vermeullarmine's opening essay about Harlan's Lochner dissent and other decisions concerning based on the common good for @iusetiustitium for the last week. http://iusetiustitium.com/2020/06/17/common-good-constitutionalism-a-model-opinion/

Summarizing Harlan, Vermeule describes the common good framework as "(1) the public authority may act for the common good; (2) by making reasonable determinations about the means to promote its stated public purposes; and (3) when it does, judges must defer. "

Certainly this applies to legislative statutes, but what we also see in the 1800s is judicial rulemaking that cabins the extent of legislation where the edges of the rule may wander from the common good.

And that leads me to patent law.

In one sense patents would seem to be an odd place to see the common good arise in law. Modern patent law is largely a creation of English statutory law from the 17th c. and concerns econ and business. We don't conceive these things today under classical legal doctrine.

But in fact the nominal basis of patent law is a quid pro quo that is stated expressly in terms understandable for the benefit of the common good: disclosure of new inventions so that society receives the benefit, in exchange for a limited-time monopoly.

In order to receive that patent monopoly, the invention must be new, non-obvious, and useful.

Today, and especially since the delightfully named case Juicy Whip v. Orange Bang, utility is defined to the lowest common denom: does the invention DO something? If so, patentable.

But in the 1800s, utility also meant something broader: the invention had to not be oppose to public morals and safety, that is, it had to at least serve the beneficial utility of society.

The seminal case here is Lowell v Lewis, in which J. Story charged the jury as follows:

"All that the law requires is, that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. ...

...The word 'useful,' therefore, is incorporated into the act in contradistinction to mischievous or immoral. For instance, a new invention to poison people, or to promote debauchery, or to facilitate private assassination, is not a patentable invention."

On this basis, courts throughout the 19th c. invalidated patents on products that either deceived people or were opposed to public welfare. The most frequent victims were patents on gambling.

sorry, *gambling machines*

So what we see here is the courts taking "useful," a word that was ambiguous at best for supporting a sense of moral utility, and using it to define the edges of patentable subject matter.

That is, judges used a broadly accepted definition of the common good to both support the need for patent law (to promote innovation for the benefit of the public) and to limit it (to prevent giving an unjust patent on goods clearly not beneficial to the public)

Now, speaking as a practicing patent attorney, I can tell you that there are plenty of patents that are not in support of the common good. Why? In the 1960s, the Supreme Court essentially jettisoned this beneficial utility for minimal utility.

Brenner v. Manson states that the only thing for purposes of utility that matters is that the invention do sometihng. So the invention of a new chemical molecule that has no practical use is not useful and patentable.

But the courts otherwise begin reading the 1952 Patent Act s 102 in view of a stray statement in legislative history that the patent law is to cover "everything under the sun made by man," DESPITE, the Congress adopting the exact same words for s 102 that existed since 1836.

That language was pulled out by Diamond v Chakrabarty, which permitted a patent on a new living bacterium.

Obtaining a patent on a living thing should be controversial, but Chakrabarty essentially sweeps ethics aside, saying that this is a public policy matter for Congress.

So that's where we are today. But what might patent law look like if moral utility were reinvigorated? How might that affect biotech patents? Software patents? Those are important questions I'm still thinking about. Hopefully more to come. /fin