Thomas Jefferson and the Patent Act of 1793

by Stephan Kinsella on June 6, 2010

(Available now on archive.org)

Volume Forty		1998
*Essays in History*

Published by the Corcoran Department of History at the University of Virginia.

THOMAS JEFFERSON AND THE PATENT ACT OF 1793
by E.C. Walterscheid

On September 9, 1792 Secretary of State Jefferson wrote President Washington that “[w]hen I embarked in the government, it was with a determination to intermeddle not at all with the legislature.” The letter was a long one and many pages later he stressed that : “With the affairs of the legislature, as I never did intermeddle, so I certainly shall not now begin.” Unfortunately, this statement was at variance with his earlier acknowledgment in the same letter that there had been one occasion — and one only — when he had indeed “intermeddled” because he “was duped into [so doing] by the Secretary of the treasury, and made a tool for forwarding his schemes, not then sufficiently understood by me; and of all the errors of my political life, this has occasioned me the deepest regret.” What Jefferson was referring to was the efforts he made to secure congressional approval of Hamilton’s plan for the assumption of state debts in return for locating the national capital on the Potomac.¹

Recognizing that these statements were made as a part of Jefferson’s spirited defense against allegations made by Alexander Hamilton, they were nonetheless disingenuous because this was not the only instance wherein Jefferson sought to influence the content of legislation while he was Secretary of State. The issue seems not to have been addressed with any particularity by documentary historians. The purpose of this article is to analyze the extent to which Jefferson sought to influence patent legislation and in particular the Patent Act of 1793,² and how far he actually succeeded. In the process, I question certain assumptions concerning Jefferson’s draft of “A Bill to Promote the Progress of the Useful Arts” made by the editors of The Works of Thomas Jefferson and The Papers of Thomas Jefferson, as well as the editors of The Documentary History of the First Federal Congress of the United States. Finally, I briefly review his ultimate disillusionment with the Act of 1793 and the patent system created by it.

I

When Jefferson came to New York in March 1790 to assume his duties as Secretary of State, Congress was debating H.R. 41, the bill that became the Patent Act of 1790.³ The juxtaposition of Jefferson’s arrival on March 21^st with enactment of the Patent Act of 1790 on April 10th has led to a belief that Jefferson influenced the passage of the Act. Dood, in particular, argues that Jefferson was responsible for the major Senate amendments reported out of committee on March 29, 1790. He contends that the elimination of language which would have authorized patents of importation, as well as the inclusion of language that required patent models, are clear evidence of Jefferson’s influence on the first patent statute.⁴

Although the known facts do not suggest who was actually responsible for the particular amendments on which Dood relies, they rather conclusively indicate that Jefferson was not. H.R. 41, as introduced, contained a section expressly authorizing so-called patents of importation, whereby the first importer “from any foreign country [of] any art, machine, device or invention, or any improvement thereon, not before used or known in the [United] States” would be treated “as if he were the original inventor or improver within the said States.” This section was deleted by the House on March 5th, two weeks before Jefferson arrived in New York, and there is nothing to indicate that he was aware of this section or its deletion before he took up his duties.

While Jefferson may well have been informed that H.R. 41 was pending before the Senate, there again is nothing to indicate that he sought to influence Senate actions with respect to it. Rather, as White notes, he spent the greater part of his first week in New York “in almost unbroken conference” with Washington.⁵ The Senate clearly concurred in the House action to preclude patents of importation but it also recognized that in the press of business, the House had failed to recognize that removal of “in the United States” as a modifier to “not before known or used” was also required . It was this “housekeeping” amendment coupled with the addition of a requirement for patent models that Dood took as clear evidence of Jefferson’s influence on the Act of 1790.

Although Jefferson undoubtedly disapproved of patents of importation⁶ and favored the requirement for patent models, no historical record suggests that he was responsible for these senatorial changes to H.R. 41.⁷ Moreover, there is no reason to question his statement that he came to government resolved not to intermeddle with legislative issues or that for many months thereafter he maintained that resolve. But this would change in 1791 when he drafted a patent bill that was clearly intended not only to create major changes in the way patents were issued but also major changes in the way they were to be treated under the law.

II

The Patent Act of 1793 was a reaction to perceived problems with the Patent Act of 1790. The Act of 1790 made the Department of State responsible for the issuance of patents. It obligated a patent board consisting of the Secretary of State, the Secretary for the Department of War, and the Attorney General to examine patent petitions to ascertain whether the invention was “sufficiently useful and important” to authorize the issuance of a patent, although it provided absolutely no guidance for determining what constituted sufficient usefulness and importance. If two members of the board found the invention to meet this criterion, and if the ministerial requirements were met and the appropriate fees paid, the patent would issue.

It quickly became evident that neither inventors nor the high government officials who comprised the patent board were happy with the Act of 1790. The delays in obtaining patents must have been highly frustrating to inventors as were the demands for information placed on them by the board.⁸ Moreover, inventors found themselves disputing the descriptions set forth in the issued patents,⁹ most often on the ground that the description too narrowly described the invention and thereby restricted the scope of the patent. Finally, inventors were concerned that less than half of the patent petitions filed were resulting in issued patents.¹⁰

But it was the dawning recognition by the members of the patent board, and particularly by Jefferson, that they simply had insufficient time to properly carry out the tasks assigned to them under the Act, that more than anything else soon produced an understanding in the Congress that the Act of 1790 had to be amended or in some manner changed to avoid having high government officials responsible for the issuance of patents.¹¹ Thus, on December 9, 1790, only seven months after Congress had passed the Act of 1790, the House appointed a committee to bring in a bill or bills to amend the Act. This committee presented a bill, H.R. 121, on February 7, 1791, but Congress took no action on it before the session ended. Another bill, H.R. 166, was not presented until March 1, 1792. Again, Congress failed to act on it. On December 10, 1792, a bill, H.R. 204, intended to create an entirely new patent act, was introduced. This bill, in amended form, became the Patent Act of 1793. No specifically identified copy of it has been found, but it apparently was similar although not identical to H.R. 166.

III

Jefferson was in the forefront of those seeking a new patent statute. On February 4, 1791, he wrote that “a bill is prepared for altering the whole train of business & putting it on a more easy footing.”¹² He knew whereof he wrote because he was referring to a draft patent bill that he himself had prepared.¹³ The draft was in many significant ways quite different than the Act of 1790 and was indeed intended to alter “the whole train of business,” but, as will be shown, whether it would have put it on a more easy footing depended entirely on one’s point of view, and in fact it was almost immediately challenged.

Considerable confusion exists among historians as to whether Jefferson’s bill was ever actually introduced, and if so, whether it was the bill introduced on February 7, 1791, i.e., H.R. 121. According to Ford, Jefferson’s bill was “introduced into the House of Representatives Feb. 7, 1791 by [Rep.] White.” Unfortunately, he complicates the matter by incorrectly stating that “[i]n the next Congress it was again introduced . . . and, after debate and amendment, was finally passed.”¹⁴ More recent editors have a different interpretation, albeit one which also appears to be incorrect. De Pauw et al. state that “[a] printed copy of what is probably the bill [introduced February 7, 1791] is E-23848.”¹⁵ Cullen et al. also believe that the February 7, 1791 bill, i.e., H.R. 121, is E-23848. But they assign a date of December 1, 1791 to the Jefferson draft and state that what he did with it after preparing it is uncertain.¹⁶ Contemporaneous documentation strongly suggests, however, that the February 7, 1791 bill was not E-23848, but rather was Jefferson’s draft or something closely akin to it and that E-23848 is in fact the March 1, 1792 bill, i.e., H.R. 166. Moreover, as will be shown, the reference to a particular date in the Jefferson draft as well as its failure to include any specific reference to a mechanism for deciding priority of invention both are indicative that it was prepared in early 1791.

Cullen et al. as editors of Jefferson’s Papers state that “[a] comparison of the text of White’s bill [which they assume to be E-23848 although the basis for such assumption is not stated] . . . and TJ’s proposal indicates that they cannot be the same and that TJ’s bill came later.” While a comparison does indeed quickly establish that they are not the same bill, it does not establish that Jefferson’s bill came later. Perhaps recognizing this fact, Cullen et al. state that the “conclusive reason” for assigning a date of December 1, 1791 to Jefferson’s draft is that Jefferson “used that date when he recorded the draft of such a bill in SJPL.” They stress that “[n]o record appears in SJPL for one prior to that date.”¹⁷ But this is not in any way conclusive either.

The acronym SJPL stands for the Summary Journal of Public Letters that covers Jefferson’s tenure as Secretary of State. But the SJPL is an incomplete listing of Jefferson’s correspondence as Secretary of State, and as Cullen et al. acknowledge, it was not compiled daily and entries were only made periodically “as a record of his chief public papers of the period.”¹⁸ Accordingly, the fact that it was recorded in the SJPL on December 1, 1791 is not persuasive that it was prepared on or about that date. Rather, the entry in the SJPL appears to have been made as a result of a letter Jefferson wrote on November 13, 1791 to Rep. Hugh Williamson of North Carolina, who was chairman of the committee charged to prepare new patent legislation.¹⁹

Jefferson begins that letter by saying: “[o]n considering the subject of the clause you wished to have introduced in the inclosed bill, I found it more difficult that I had on first view imagined.” It is clear from the SJPL entry of December 1, 1791 that the “inclosed bill” was in fact Jefferson’s bill. More importantly, however, it is apparent that Williamson had in fact seen Jefferson’s bill at some earlier time and had requested a particular clause to be made a part of it which Jefferson was now commenting on. For the reasons now to be discussed, I believe that Rep. Williamson first saw it much earlier in 1791 when it or something closely akin to it was introduced as H.R. 121 by Rep. White.

Jefferson’s bill contained unique filing and publication requirements not found in any earlier patent bill and not reproduced in any later patent bill. Specifically, it required the applicant to obtain a certificate generally describing the invention from the Secretary of State as well as a warrant and Treasurer’s receipt from the Secretary of the Treasury indicating payment of the requisite fee and file the certificate, warrant, and receipt “of record in the Clerk’s Office in every District Court of the United States” and publish these documents “three times in some one Gazette of each of the said Districts.”²⁰ These requirements were extremely onerous and would have greatly increased the cost and extended the time of obtaining and enforcing a patent. In the primitive state of the mail system in the United States in 1791, the only way an applicant could be assured that they were met would be to personally travel to every judicial district in the country or have an authorized representative do the same.

One could reasonably expect that when the draft became known, inventors would object strenuously to these requirements, and immediately one did. On February 10, 1791 “[a] petition and remonstrance of John Fitch was presented to the House and read, complaining of the injurious operation which the bill now depending before Congress, Entitled ‘A bill to amend the act to promote the progress of useful arts,’ will have on his interest, should the same be passed into law.”²¹ Fitch protested the proposed filing and publication requirements, saying that he “had no Idea that he must go all the way from Kentucky to Cape Cod, and quite the Distance of Province of main[e], to publish his inventions, and to pay out large fees wherever he goes for the Same.”²² Fitch’s petition is persuasive evidence that Jefferson’s bill was introduced as H.R. 121 on February 7, 1791.

There is other internal evidence in Jefferson’s bill suggesting that it was introduced as H.R. 121 on February 7th. Thus, it makes reference to “applications for Patents [that] were on the lst. day of February in this present year depending before the Secretary of State, Secretary of War, and Attorney General.”²³ This express reference to February 1st appears totally arbitrary if the bill is dated December 1, 1791 as contended by Cullen et al., but makes eminent sense if the bill is in fact H.R. 121 introduced February 7, 1791.

Moreover, E-23848 cannot be the bill introduced February 7th because it does not contain the particular provision objected to by Fitch. Rather, other contemporaneous documentation shows that E-23848 is H.R. 166, introduced March 1, 1792. Joseph Barnes published a pamphlet in Philadelphia in 1792 that was critical of both the Act of 1790 and the March 1, 1792 bill.²⁴ Barnes stated that the bill “contemplates, at the expense of the American genius to import European arts and literature!!!”²⁵ This referred to the provision of E-23848 “That the monies to be paid, as directed by this act, into the treasury, shall be appropriated to the expense of procuring and importing useful arts and machines from foreign countries. . . .”²⁶ No other patent bill of the period contained such language so Barnes provides persuasive contemporaneous evidence that E-23848 is H.R. 166 introduced March 1, 1792.

The presence of an express provision for determining priority of invention in E-23848, but not in Jefferson’s bill is further evidence for dating the former at March 1, 1792 and the latter at February 7, 1791. In April 1791 the patent board unsuccessfully attempted to deal with the issue of priority when four separate inventors appeared to claim similar inventions.²⁷ If Jefferson had drafted his bill after April 1791 it very likely would have contained a provision dealing with priority of invention, particularly in view of the fact that he had argued to the board that it had no authority to determine priority of invention under the Act of 1790.

There is one other source of contemporaneous documentation which the editors cited above have ignored. These are the extensive Fitch papers and documents on file with the Library Company of Philadelphia and with the Library of Congress.²⁸ Fitch believed that the White bill introduced on February 7, 1791 was the work of James Rumsey.²⁹ But it is difficult to accept that any inventor, including Rumsey, would have proposed the onerous provisions respecting filing and publication in every judicial district that Fitch himself had so promptly objected to. It is likely that Fitch, not knowing the origin of the White bill, simply assumed that it must have been the product of his rival, Rumsey.

IV

Of necessity, Jefferson’s bill must be viewed against the backdrop of the Act of 1790 and his early experience in the administration of the patent system under that Act. Much of his bill was taken from the Act of 1790, but there were substantial differences. It is these differences that are of interest for they reflect his views and perceptions on the direction the patent law should take and the type of patent system that should be developed.³⁰ The changes he proposed were both substantive and procedural. They were intended to significantly reduce the burden placed on him and his clerks in the issuance of patents while at the same time adding significantly to the requirements placed on a patentee for enforcement of his monopoly rights.

His bill made no reference whatever to the issuance of letters patents but instead authorized the issuance of a “certificate” by the Secretary of State which presumably was intended to be the equivalent of a patent. The examination system under the Act of 1790 was eliminated and replaced with a registration system akin to that of England whereby if the ministerial requirements were met, the certificate would routinely issue. All that was required was that: (1) the designated fee was paid; (2) an appropriate specification and model were provided; and (3) a shorter and more general description of the invention was supplied by the applicant for inclusion in the certificate. But — and this was a most critical “but” — the inventor could not enforce rights granted by the certificate until he or she had filed copies of it in every district court in the country and published it in every judicial district. Nor would an assignment of rights under the certificate be valid and enforceable until it had been filed and published in every judicial district. The patentable subject matter was similar to that under the Act of 1790, but the bill now expressly made a “composition of matter patentable.”³¹ The specification and model requirements were similar to those of the Act of 1790.

The bill contained the defenses set forth in the Act of 1790, but certain new ones were now contemplated. Thus an alleged infringer would be permitted to show “that he did not know that there existed an exclusive right to the said invention.” Alternatively, an alleged infringer could show that the invention was “so unimportant and obvious that it ought not to be the subject of an exclusive right.”³² This appears to be the earliest American reference to what would ultimately become a fundamental tenet of the United States patent law, namely, that patentability is predicated on unobviousness as well as novelty.³³

Several other changes proposed in the bill are worthy of comment. First, the certificate would issue from the Secretary of State and the signatures of the President and the Attorney General would no longer be required. Second, payment of a set fee into the U.S. Treasury was required, rather than payment of fees to various individuals involved in the patenting process as was the case under the Act of 1790. Third, the exclusive right granted by the certificate was stated to be “an exclusive property.”³⁴ Fourth, only after expiration of the 14-year term of the certificate granting an exclusive right to the invention would the public “have reasonable and sufficient access to the descriptions, drawings, models, and specimens of the same, so as to be enabled to copy them.”³⁵ Fifth, a federal certificate for the invention would require the surrender of any state patents the applicant had obtained before the ratification of the Constitution (but not apparently any state patents obtained after ratification).³⁶ Finally, certain of the monies collected as fees were authorized to be used to purchase books for a public library at the seat of government.

It is of interest to note what the bill did not contain. There was no reference to the patentability rules which many years later Jefferson stated were established by the patent board under the Act of 1790.³⁷ This rather clearly suggests that, at least as of early 1791, the board had yet to develop and implement these rules, for there is no reason to believe that Jefferson would not have included them in the list of defenses to infringement in his bill if they were in use by the board when the bill was drafted. Jefferson’s failure to mention an unobviousness rule in his discussion in 1813 of the board’s rules also suggests that either he failed to propose such a rule to the board or he proposed that the board apply the unobviousness criterion set forth in his bill, and the other members found it too vague and indefinite to apply with any certainty. It is likely that the board only established its patentability rules late in 1792 after they had been proposed by Barnes acting on behalf of Rumsey.³⁸

V

Jefferson’s rationale for requiring filing and publication of the patent certificate in every judicial district was to give the public “notice of the thing invented . . . in terms sufficient to point out the general nature thereof, and to warn others against an interference therewith.” Or so his bill indicated. The idea of publication was not original with Jefferson and had been incorporated in H.R. 41 as passed by the House less than a year earlier, but H.R. 41 had only contemplated that publication should occur at the seat of government and in the state where the inventor resided.³⁹ The rationale for publication of this type was set forth in a Senate committee report on H.R. 41, dated March 29, 1790 as in essence the preclusion of “improvident grants.”⁴⁰

One person who commented to the Congress on H.R. 41 was Nathan Read who had recently petitioned for a patent privilege. Read’s concern had to do with what he styled the “extraordinary precaution of advertising the discovery before the patent is granted.” He argued that it would not accomplish its purpose as “only one person in a thousand will ever see or hear of the advertisement until after the patent is granted.” Morever, he expressed concern that if the advertisement described the invention in sufficient detail to warn others of its precise nature, the true inventor ran the risk of it being pirated. He argued in favor of the caveat process in use in Great Britain.⁴¹ His comments arrived too late to have any effect on the House action concerning H.R. 41, but he may well have influenced the Senate’s decision to remove the advertising requirement.

Jefferson must have been aware that the advertising requirement in H.R. 41 had been removed by the Senate and he may well have had knowledge of Read’s memorial to the Congress. He may have believed that by requiring publication in every judicial district, i.e., every state, he was effectively responding to Read’s concern that the public simply would not be adequately informed by the publication requirements set forth in H.R. 41. But if the intent of the publication requirement was truly to preclude “interference” with “the thing invented,” as his bill seemed to indicate, it was difficult to understand why at the same time he refused in the bill to make public the specification of the issued patent certificate. Read’s implicit point that publishing merely a general description was insufficient to adequately inform the public of the specific nature of the invention was well taken.

Moreover, Jefferson by this time had had sufficient interactions with inventors to know that they were not reluctant to protest what they considered to be onerous requirements, and it was readily apparent that the requirement of filing and publication in every judicial district was exceedingly onerous. He must have known that inventors would vigorously protest it, particularly in view of the fact that it applied not only to the original patent certificate but also to every subsequent assignment of that certificate. One can only guess as to what his motivation was in proposing these requirements, but he obviously was not thinking in terms of the interests of patentees. Moreover, if his motives were nefarious, one can scarcely conceive of a more effective means of sabotaging the newly created federal patent system. It is doubtful that this was his actual intent. Nonetheless, throughout his life, he retained a healthy skepticism about the value of the patent system, and there is little question that he wanted to limit the number of patents that would issue, without actually placing the onus for such limitation on him or his department.

It is apparent, however, that the primary purpose of the bill was to ease the burden on the patent board and the Secretary of State, by specifically changing from an examination to a registration system, and by placing the duty of preparing the description of the invention on the applicant rather than on the board or a clerk in the State Department. Moreover, the bill expressly required specifications, drawings, and models of issued patents to be kept secret, which would have substantially further reduced the ministerial duties placed on his clerks in the copying and administration of issued patents. For Jefferson, this entirely pragmatic consideration was the crux of the matter. More than anything else, he wanted to reduce the time required of him and his clerks in the domestic duties imposed in the administration of the patent system. He wanted to be relieved of the responsibilities placed on him by the Act of 1790 “as being, of every thing that ever was imposed upon him, that which cuts up his time into the most useless fragments and gives him from time to time the most poignant mortification.”⁴²

VI

Somewhat naively, Jefferson seems to have expected early in 1791 that Congress would act expeditiously on the new patent bill pending before it and thereby relieve the patent board from having to deal with the issue of priority of invention which it had yet to come to grips with. The board had originally set a hearing for the first Monday of February 1791 to resolve what it perceived to be a priority conflict between inventors Fitch, Rumsey, Read, and John Stevens, but on January 25th State Department clerk Henry Remsen informed Fitch (and presumably the other parties as well) that the board, “judging it most expedient not to proceed further in the business thereby committed to them, until a Bill supplementary to [the Patent Act of 1790], which is now before Congress, passes, have directed me to inform you, that the hearing of the Parties who have applied for Patents for the discovery of new applications of Steam to useful purposes” had accordingly been postponed.⁴³ Jefferson’s expectation was quickly quashed when the session ended without congressional action.

With the new session in the fall, a new committee chaired by Hugh Williamson was appointed to bring in a new patent bill. Initially, the committee seems to have looked to Jefferson’s bill, and Jefferson’s letter of November 13th to Williamson was an apparent response to a request by the committee that Jefferson incorporate a provision similar to the one in the Act of 1790 which permitted anyone to challenge the validity of a patent in federal court for a period of one year after issuance on the limited ground that the “patent was obtained surreptititously by, or upon false suggestion.” Jefferson found the issue of incorporating such a provision “more difficult than I had on first view imagined.” The lawyer in him could not resist doing a legal analysis of the issue, after which he concluded that “less evil” would follow if the law forbade such suits seeking a declaratory judgment of invalidity, but only allowed a defendant to challenge validity in any infringement action brought by the patentee.⁴⁴

Within a month after H.R. 166 was introduced, Jefferson provided his comments with respect to it, although what these were is not now known.⁴⁵ If he made any further attempt to influence the content of what would become the Patent Act of 1793, no record of such attempt has been found.

VII

In 1966 and again in 1980 the Supreme Court stated unequivocally that Jefferson authored the Act of 1793.⁴⁶ It cited no authority for this view but could have relied on such a renowned Jefferson scholar as Merrill Peterson.⁴⁷ In 1989 the Court apparently decided that some equivocation was in order and now stated more cautiously that “Jefferson played a large role in the drafting of our Nation’s second Patent Act, which became law in 1793.”⁴⁸ Cullen et al. are more circumspect, stating that “though there are few points of similarity between them, the revised patent law passed by Congress in February 1793 achieved the primary goals of TJ’s draft bill.”⁴⁹

The Act of 1793 was materially different from the bill Jefferson had proposed, although it did contain a number of the new provisions he had sought. Specifically, patents would henceforth issue on payment of a set fee into the Treasury; the petition would be for an exclusive property right in the invention; compositions of matter were declared to be patentable; the petitioner would provide the description to be incorporated into the patent; state patents obtained prior to the particular state’s ratification of the Constitution were invalidated upon receipt of a federal patent for the same invention; and, most importantly from Jefferson’s perspective, the patent would issue when the petitioner conformed to the ministerial requirements, i.e., the system would now be one of registration rather than examination. Jefferson’s proposals that every patent be registered and published in every judicial district; that there be an unobviousness standard; that there be a lack of knowledge defense; that the specification not be publicly available until after the patent had expired; that there be no provision for a declaratory judgment of patent invalidity; and that receipts from patent fees be used to obtain books for a public library were not incorporated. While Jefferson exerted a significant influence on certain aspects of the Act of 1793, he did not author it, nor was he responsible for most of its content.

Inherent in the registration system sought by Jefferson and put into effect by the Congress was the premise that the courts have primary responsibility for determining patentability and hence patent validity, or as he put it in his later years, “the whole was turned over to the judiciary, to be matured into a system, under which every one might know when his actions were safe and lawful. Instead of refusing a patent in the first instance, as the board was authorized to do, the patent now issues of course, subject to be declared void on such principles as should be established by the courts of law.”⁵⁰ In 1813 and 1814, Jefferson would come to rue this aspect of the Act of 1793 more than anything else, particularly in view of the fact of his “name and approbation being ascribed to the act.”⁵¹ He would conclude that “we might in vain turn over all the lubberly volumes of the law to find a single ray which would lighten the path of the mechanic or mathematician.”⁵² He could now well understand how a party to patent litigation would be reluctant to accept a legal precedent “when so new a branch of science has been recently engrafted on our jurisprudence, one with which its professors have till now had no call to make themselves acquainted, one bearing little analogy to their professional educations or pursuits.”⁵³

He now believed that the issuance of patents “is more within the information of a board of academical professors, and a previous refusal of a patent would better guard our citizens against harassments by lawsuits.” This was in fact what Rumsey had proposed to him in 1789 but which he had failed to incorporate into his draft patent bill in 1791.⁵⁴ He could not, however, in this time of review bring himself to acknowledge that he had been the driving force behind the change from examination to registration and the one most responsible for it. Rather, he rationalized that “England had given it to her judges, and the usual predominancy of her examples carried it to ours.”⁵⁵ But the net result, however reached, was a patent system under the Act of 1793 which he was not convinced was either desirable or particularly useful. In his view, “the abuse of the frivolous patents is likely to cause more inconvenience than is countervailed by those really useful.”⁵⁶ He now believed “that the nations which refuse monopolies of invention, are as fruitful as England in new and useful devices.”⁵⁷ Although he was still prepared to suggest conditions for patentability,⁵⁸ he had come almost full circle back to the position he had espoused in 1788 when he had argued that the benefit to “the incitements to ingenuity” created by the “limited monopolies” called patents “is too doubtful to be opposed to that of their general suppression.”⁵⁹

Notes

[1] Letter, Jefferson to Washington (Sept. 9, 1792), in The Papers of Thomas Jefferson [hereafter TJ Papers], 24 (John Catanzariti, et al., eds., 1990), 351-359; see also the editorial note, id., at 359.

[2] Act of February 21, 1793, 1 Stat. 318.

[3] H.R. 41 as introduced in the House on February 16, 1790 is reproduced in The Documentary History of the First Federal Congress of the United States [hereafter Documentary History], VI (Linda Grant De Pauw, et al., eds., 1982), 1626-1632. The bill, as passed by the House on March 10, 1790, is given at Documentary History, VI, 1632-1637.

[4] Act of April 10, 1790, 1 Stat. 109. Dood, e.g., argues that “with so much to suggest [Jefferson’s] involvement with the formulation of the first patent law, and nothing to indicate to the contrary, it seems almost unavoidable to conclude that he was, indeed, the author of these features of our first patent law.” See Kendall J. Dood, “Patent Models and the Patent Law, 1790-1880 (Part I),” Journal of the Patent and Trademark Office Society, 65 (1983), 187, 196. See also Page Smith, The Shaping of America: A People’s History of the Young Republic, 3 (1980), 345 (“As secretary of state Jefferson had prevailed on Congress to pass the necessary [patent] legislation”); and Levi N. Fouts, “Jefferson the Inventor, and his Relation to the Patent System,” Journal of the Patent Office Society [hereafter J.P.O.S.], 4 (1922), 316, 322 (“The first patent law . . . was drawn in conformity with Jefferson’s ideas of what it should be. . . .”).

[5] Leonard D. White, The Federalists (1948), 103.

[6] In August 1789 he had informed Madison that he would have been pleased if the proposed Bill of Rights had stated: “Monopolies may be allowed to persons for their own productions in literature and their own inventions (emphasis supplied) in the arts for a term not exceeding _____ years but for no longer term and no other purpose.” Letter, Jefferson to Madison (Aug. 28, 1789), in The Republic of Letters, 1 (James Morton Smith, ed., 1995).

[7] Dood had built up a rather elaborate edifice seeking to substantiate his claim that Jefferson was responsible for the Senate model requirement. He acknowledges, however, that it is wholly conjectural. See Dood, supra note 4, at 199-200. In 1954 Prager suggested that “[t]he exact manner and extent of Jefferson’s influence on the first patent act will best be analyzed when the [TJ Papers are] completed.” See Frank D. Prager, “Proposals for the Patent Act of 1790,” J.P.O.S., 36 (1954). 164n. Unfortunately, Prager’s expectations have not been met, although the TJ Papers have now extended to 1793.

[8] The Act required the inventor to “deliver to the Secretary of State a specification in writing, containing a description, accompanied with drafts or models, and explanations and models (if the nature of the invention or discovery will admit of a model) of the thing or things by him . . . invented or discovered . . . which specification shall be so particular, and said models so exact, as not only to distinguish the invention or discovery from other things before known and used, but also to enable a workman or other person skilled in the art or manufacture whereof it is a branch or wherewith it may be nearest connected, to make, construct, or use the same, to the end that the public may have the full benefit thereof afdter the expiration of the patent term.” Id. at 2.

[9] These descriptions were prepared by clerks in the State Department acting at the direction of the patent board and were supposed to recite the allegations and suggestions of the patent petition and to describe the invention “clearly, truly, and fully.” Id. at §1. This, however, was difficult to do in the one paragraph format adopted by the patent board for patents, and on at least one occasion a patent issued under the Act of 1790 was invalidated for failure to properly recite the allegations of the petition. See Evans v. Chambers, 8 Fed. Cas. 837 (No. 4,555) (C.C.D.Pa. 1807).

[10] Although the number of petitions received under the Act of 1790 is not known, the patent board issued 57 patents under that Act. Federico states that the only available contemporaneous documentation shows “that at least 114 applications for patents were filed during the first two years of the three year life of the patent act; [and] 49 of these applications resulted in patents.” In his view, the actual number of applications filed must have been considerably higher because the documentation is incomplete and lists only the applications under consideration as of March 31, 1792, without indicating how many earlier applications the board disposed of by refusing to grant a patent. See P. J. Federico, “Operation of the Patent Act of 1790,” J.P.O.S., 18 (1936), 237, 244-246.

[11] In a letter to Rep. Hugh Williamson dated April 1, 1792 Jefferson wrote with respect to the duty imposed on him by the Act of 1790: “Above all things he prays to be relieved from it, as being, of everything that ever was imposed on him that which cuts up his time into the most useless of fragments and gives him from time to time the most poignant mortification. The subjects are such as would require a great deal of time to understand & do justice by them, and not having that time to bestow on them, he has been oppressed beyond measure by the circumstances under which he has been obliged to give undue & uninformed opinions on rights often valuable & always deemed so by the authors.” See The Works of Thomas Jefferson [hereafter TJ Works], VI (P.L. Ford, ed., 1904), 459.

[12] Letter, Jefferson to Robert R. Livingston (Feb. 4, 1791), in TJ Works, VI, at 187-88.

[13] The bill is reproduced in TJ Papers, 22, at 359-61; and TJ Works, VI, at 189-93.

[14] TJ Works, VI, at 189.

[15] L. G. De Pauw, et al., eds., Documentary History of the First Federal Congress of the United States of America [hereafter Documentary History], III (Baltimore 1977), 700n. E-23848 is what is known as an Evans number and refers to the identifying number of a document published in Charles Evans’ American Bibliography series.

[16] TJ Papers, 22, at 361n.

[17] See TJ Papers, 22, at 361.

[18] Id. at ix.

[19] For the letter, see TJ Papers, 22, at 395.

[20] See TJ Papers, 22, at 359.

[21] See Documentary History, III, at 776.

[22] See Documentary History, VI, at 1644.

[23] See TJ Papers, 22, at 360.

[24] Joseph Barnes, Treatise on Justice, Policy, and Utility of Establishing an Effectual System of Promoting the Progress of Useful Arts, By Assuring Property in the Products of Genius: To Which are Added, Observations on the Deficiency of, and Exceptions to the Bill Reported in March 1792 (Philadelphia 1792).

[25] Id. at 20.

[26] E-23848 at Section 10. This provision was the result of a recommendation in Alexander Hamilton’s Report on the Subject of Manufactures communicated to the House on December 5, 1791.

[27] For a discussion of the Board’s problems in dealing with priority issues, see F. D. Prager, “The Steam Boat Interference, 1787-1793,” J.P.O.S., 40 (1958), 631-41.

[28] Fitch presented these to the Library Company in 1792 to be made available after his death for the purpose of demonstrating what he perceived to be the duplicity of Jefferson and the favoritism that Jefferson exhibited toward his archrival James Rumsey in their duel for patent priority with respect to the steamboat. Although obviously written from the perspective of Fitch, they provide a fascinating look at the early development of American patent law from the perspective of one highly involved inventor.

[29] See Prager, note 7 supra, at 166n, citing to Fitch’s Steamship History at 244-246 and Fitch Papers doc. 2645, 2651-2.

[30] Several years earlier Jefferson had opposed the intellectual property clause of the Constitution and the patent system it authorized the Congress to create. See letters, Jefferson to Madison (Dec. 20, 1787 and July 31, 1788) in The Republic of Letters, 1, at 512 and 545. He now accepted that there was a patent system, and had determined that if there was to be a new patent law he should influence its content.

[31] Compositions of matter were being patented in Great Britain, but under the guise of being called a manufacture.

[32] TJ Papers, 22, at 360.

[33] See 35 U.S.C. 103 (1988) (“A patent may not be obtained through the invention is not identically disclosed or described in section 102 of this title, if the differences between the subject matter sought to be patented and prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains.”).

[34] Insofar as can be ascertained, this was the first proposal anywhere that a patent be considered as an exclusive property by statutory enactment. Under the English patent custom and practice a patent was considered as an exclusive privilege. The Act of 1790 said not a word about any property right.

[35] Prager takes the view that this language was included at the specific behest of James Rumsey. See Prager, note 7 supra, at 166. There is little question that at this time most inventors shared the view that the specification should not be publicly available until the term of the patent expired. Jefferson was almost certainly aware of this view, but for the reasons discussed herein it likely was not the controlling factor in his decision to include this provision.

[36] Whether this was what Jefferson actually intended is unclear, but it could be interpreted in this light and was certainly so interpreted by Fitch who thought it a ruse to do away with his state patents for the steamboat while permitting his archrival Rumsey to retain certain of his. See Documentary History, VI, at 1644.

[37] Letter, Jefferson to Isaac McPherson (Aug. 13, 1813), in The Writings of Thomas Jefferson [hereafter TJ Writings], XIII (A. A. Lipscomb et al., eds. 1903), 335. Jefferson stated that the rules established by the board were: (a) “that a machine of which we were possessed, might be applied by every man to any use of which it is susceptible”; (b) “that a change of material should not give title to a patent”; and ( c) “that a mere change of form should give no right to a patent.”

[38] See Barnes, supra note 24, at 30-31.

[39] The House version of H.R. 41 contained a requirement that the Secretary of State “shall make out an advertisement, to be inserted by the petitioner in one of the news papers published in the seat of government of the United States, and in one of the news papers published in the State where the petitioner shall reside, for the term of eight weeks, once at least in each week, giving notice of such application, and containing a short and general definition or description of the invention or discovery” for the purpose of permitting any member of the public to appear at a time and place designated in the advertisement to protest the proposed issuance of the patent. See Documentary History, VI, at 1632-33. This was a variation on the English caveat procedure.

[40] According to the report:

The Disclosure of the Secret being no obstacle in obtaining a Patent by the true Inventor, a Public Advertisement containing a general Definition of the Invention is required by the first Section of the Bill; this Regulation may be very necessary in so extensive a Country as the United States. An Invention of great Utility & in Common use in Massachusetts, may be unknown in Pennsylvania or Virginia — it may come to the knowledge of a single Person in one of the latter States who ignorant of its notoriety to the Eastward might apply & obtain a Patent for it, disturb the Persons who had long used it & in the end involve himself in loss & disappointment. The Advertisement therefore appears to be an useful Part of the Plan and will probably prevent many improvident Grants.

See “Proceedings in Congress During the Years 1789 and 1790 Relating to the First Patent and Copyright Laws,” J.P.O.S., 22 (1940), 363-64.

[41] “Observations of Nathan Read” to be reproduced in a forthcoming Documentary History volume on petitions to the first federal Congress.

[42] See supra note 11.

[43] Letter, Remsen to Fitch (Jan. 25, 1791), Fitch Papers, Library of Congress. Remsen anticipated things a bit, because H.R. 121 was not actually introduced until February 7th.

[44] See supra note 19. Jefferson based his conclusion on the following analysis: “Will you make the first trial against the patentee conclusive against all others who might be interested to contest his patent? If you do he will always have a collusive suit brought against himself at once. Or will you give every one a right to bring actions separately? If you do, besides running to find some jury in the long run, who from motives of partiality or ignorance, will find a verdict against him, tho’ a hundred should find in his favor?” Id. The Patent Act of 1793 would reject Jefferson’s view that only a defendant in an infringement action should have the right to seek to invalidate the patent, and instead would permit such action to be brought by anyone within three years from the date of issuance of the patent.

[45] Letter, Jefferson to Hugh Williamson (April 1, 1792), in TJ Works, VI, 458.

[46] See Graham v. John Deere Co., 383 U.S. 1, 7 (1966); and Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980).

[47] See, e.g., Merrill D. Peterson, Thomas Jefferson & the new nation (New York 1970), 938.

[48] Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141,. 147 (1989).

[49] TJ Papers, 22, at 362.

[50] TJ Writings, XIII, at 336.

[51] Id. at 338.