[1] "A Connecticut Yankee at King Arthur's Court" Chapter IX.

[2] Dissent by Jackson J. in Jungerson v. Ostby and Barton Co. 335 US 560, 80 USPQ 32 (1948).

[3] See, in particula,r the Clothworkers of Ipswich Case (King's Bench 1615)

[4] The first major piece of patent litigation in England after the Statute of Monopolies, Dolland’s case on a prior invention that had been concealed, came before the Court of Common Pleas in 1766 and the famous cases of Arkwright v. Nightingale and R. v. Arkwright both on Arkwright’s machine for spinning cotton came to the courts in 1785.

[5] This was not true in Europe where abolition of the patent system was seriously considered at various times in both the United Kingdom and Prussia (Bismarck was an opponent) and the system was actually abolished for a while in the Netherlands.

[6] In 1975 the Department of Justice issued a list of nine possible types of restriction that might be present in a patent license agreement that the Department believed to be per se illegal. These were known as "the nine no-no's". At least eight of them would today be addressed under a rule of reason approach and likely to be regarded as lawful under many circumstances.

[7] One particular event that jolted the business community was Eastman Kodak's enforced withdrawal from the instant camera market after a finding that it had infringed Polaroid's patents.

[8] 35 USC 282

[9] See for example Alco Standard Corporation v. Tennessee Valley Authority 1 USPQ 2d 1337.

[10] This had the effect of limiting the power of the Crown to the grant of monopolies to grants only for limited periods (14 years - the duration of two training periods for craft apprentices) and most importantly only for "manners of new manufacture" that were introduced into the realm by the recipient of the monopoly. Such grants were, however, conditioned on their not being "mischievous to the state" (for example by raising prices of commodities) or "generally inconvenient"

[11] A series of articles by Edward C. Walterscheid starting in 76 JPTOS 697 (1994) and in particular Part 5 at 78 JPTOS 615 (1996) discusses in detail the antecedents of the U.S. patent system. Patents in the colonial period seem generally to have ben granted as a result of petitions to the colonial legislatures rather than as a result of any general law, although Massachusetts and Connecticut enacted simplified versions of the Statute of Monopolies confining the grant of monopoly rights to "new inventions" which rights were to be granted only "for a short time."

[12] A similar title was used for all acts relating to patents before the consolidation of 1870.

[13] Patent Act 1793 section 1; the term "art" was replaced by "process" in 1952 but this term is itself defined as a "process, art or method" 35 USC 101.

[14] Patent Act 1793 S3

[15] Patent Act 1793 Section 2

[16] The 1790 Act required that the applicant be the "first and true inventor" and that the sibject of the invention was "not before known or used." These requirements were replaced in the 1793 Act by requiremeents that the applicant be "the true inventor" and that the invention had not been "known or used before the application." The Act of 1800 amended the second of these requirements to those inventions "never before used in this or any foreign country". In Bedford v. Hunt 3 F. Cas. 37 (C.C. D. Mass, 1817) it was held that as between two parties claiming to be the first to invent a particular invention, the patent should be granted to the first to reduce it to practie.

[17] 27 U.S.1

[18] This was in effect a codification of the Supreme Court's decision in Grant v. Raymond 31 U.S. 218 (1832)

[19] 31 US 218.

[20] Patent Act 1836 S 6.

[21] Patent Act 1836 S 7, this section also provided that if the Patent Office rejected the application the applicant could get a particular refund of the application fee. The bars listed were: 1) prior invention in the United States by another; 2)prior patenting or description in a printed publication anywhere in the world; public use or sale with the applicant's consent.

[22] Patent Act 1836 S 8, Patent Act 1836 S 7, this section also provided that if the Patent Office rejected the application the applicant could get a particular refund of the application fee.

[23] Patent Act 1836, Section 9

[24] Additionally it was provided that the grant of a foreign patent for the same invention did not bar the grant of a U. S. patent as long as the application for the U. S. patent was filed within six months of the foreign grant and that thee had been no introduction "into public and common use in the United States" before the filing of the application.

[25] Patent Act 1839 S. 10.

[26] 52 US 248 (1850). The key reasoning in the decision was "unless more ingenuity and skill ... (is applied in the new invention) ... than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention."

[27] The examiners in chief were to be appointed by the President on the advice and consent of the Senate.

[28] The term seems to have been a compromise between the Senate which wished to confirm the term of a patent to fourteen years and the House which wished to maintain the possibility of extending a fourteen year patent by a further seven years in certain circumstances.

[29] Godfrey v. Eames 68 U.S. 317. The case held that amendments could not introduce "a distinct and different invention" that had not been "contemplated by the specification as submitted at the outset".

[30] 70 U.S. 315.

[31] The term was originally six months, it was changed to one year for utility patents in 1900.

[32] However, no specific implementing legislation was enacted until 1903 and it is questionable what the effect of the Convention was in the United States in the interim.

[33] Judiciary Act 1893.

[34] This term was extended to twelve months in 1903 following the 1901 amendment to the Paris Convention.

[35] 314 U.S. 84, 51 USPQ 272.

[36] 307 U.S. 5.

[37] Part of the impetus for the revision was the adoption of the United States Code system in 1926. When the code was established prior laws had been compiled into it but nor re-enacted. Subsequently it was felt desirable to clean up and re-enact each title of the code as positive law. In 1952 it was patents turn.

[38] The definition specifically stated that "patentability shall not be negatived by the manner in which the invention was made", apparently to ensure that issues of obviousness were assessed objectively and that invention did not have to be the result of a "flash of genius".

[39] This provision was intended as a partial statutory overruling of the Supreme Court's decision in Halliburton Oil Well Cementing Co v. Walker 71 USPQ 175 (1946) which had held that any definition of a component of a claim by the function that it was to perform lacked clarity and constituted an "overhanging threat" which could serve to "frighten[] from the course of experimentation ... inventive genius [which] may evolve many more devices to accomplish the same purpose."

[40] 383 U.S. 1, 148 USPQ 459.

[41] 402 U.S. 313, 169 USPQ 513.

[42] Diamond v. Chakrabarty 206 USPQ 193.

[43] The Court of Appeals for the Federal Circuit has inter alia exclusive jurisdiction over appeals from decisions of the Board of Patent Appeals and Interferences and over appeals of final decisions of all district courts on actions based in whole or in part on "any Act of Congress relating to patents". The new statute did not, however, abrogate the right of someone denied patent rights or losing an interference from bringing a civil action against the Commissioner of Patents before the District Court in Washington D.C. A major reason for the creation of the Federal Circuit was a sense of lack of consistency in dealing with patent cases in the different regional circuits. During the 1970's there was a growing feeling that certain Circuits were anti patent and others pro patent so that forum shopping was rife.

[44] The legislation was a compromise between the ethical and generic drug industries after the Federal Circuit decision in Roche v. Bolar 21 USPQ 937 had held that premarketing testing (required by the FDA) by a generic drug manufacturer constituted patent infringement.

[45] This was a legislative overruling of the Supreme Court decision in Deepsouth Packing Co. v. Laitram 406 U.S. 518, 173 USPQ 769 (1972)

[46] 149 F.3d. 1368 47 USPQ2d 1596 (Fed Cir 1998).

[47] 51 USPQ2d 1081.