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1 APLA Q. J. 26 (1972-1973)
Laying the Ghost of the Invention Requirement

handle is hein.journals/aiplaqj1 and id is 28 raw text is: LAYING THE GHOST OF THE
The Subject
I am going to discuss §103 of Title 35 United States Code, the 1952
Patent Act, the unobviousness provision, because it is the heart of
the patent system and the justification of patent grants. Why do I
say that? For two reasons: First, it is § 103 which brings about statu-
tory compliance with the Constitutional limitation on the power
of Congress to create a patent system, assuming novelty of the inven-
tion, of course, which is also necessary. (35 USC 101 and 102.)
Second, it is the provision which assures that the patent grant of
exclusive right is not in conflict with the anti-monopoly policy
brought to this country from England by the colonists, long before
our antitrust statutes, and that patent rights do not conflict
with the policy of those statutes, which is to prevent odious monop-
olies and unreasonable restraints of trade.
Both compliance with the Constitution and avoidance of conflict
with antimonopoly principles involve the same considerations: pro-
moting progress in the technological arts while not interfering with
the free use of technology which is fairly in the public domain. As
I hope to make clear, § 103 assures this result by allowing exclusive
rights to inventors only when their inventions would not have been
obvious to the ordinary workers in the field, preserving inviolate
the common fund of technical knowledge which is obvious to the
workers in the art. A time-limited exclusive right to subject matter
which was neither known, nor obvious from what was known, takes
nothing from the public which it had before. As a necessary corol-
lary, the disclosure in a valid patent gives to the public knowledge
it did not possess, actually or potentially, and thereby makes for
It is worth remembering, furthermore, that we had a statutory pat-
ent system in this country for a century before we had a statute
against monopoly. Antitrust law, therefore, should be so construed
as to maintain a viable patent system. The 1952 Patent Act did sev-
*Substance delivered as a speech to: Los Angeles Patent Law Association Sept. 18,
1972; San Francisco Patent Law Association Sept. 20, 1972; New Jersey and Philadel-
phia Patent Law Associations and Patent Section N.J. State Bar, October 12, 1972.

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