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Comment
Derivation, the Inventor’s Moral
Right, and the Patent Reform Act
of 2011
MICHAEL O’BRIEN

In a broad sense, the law finds its normative direction by respecting
a constant duality of principles. First, the law advocates outcomes
that society chooses for the sake of their value in helping people to
reach a state of fulfillment or attain wealth.1 Second, there are
universal moral principles that provide a necessary constraint in
lawmaking—the law creates an order of respect for the dignity and
equality of persons.2
The law should respect both kinds of
principles, advancing the first within limits ordained by the second.3

Intellectual property law, for example, may give incentives to
inventors and authors to create with the purpose of adding to the
betterment and wealth of society, but it must take care to do so
always in a manner that respects a baseline of right guaranteeing
the dignity of inventors and authors.4
Society’s choice, without more, to enact copyright protection as a
means to better society by producing wealth is legitimate.
However, at a certain point, society’s failure in the process
adequately to acknowledge an inherent moral interest on the part of
authors and inventors in the assets they have created would be to
compromise that legitimacy as a matter of the moral integrity of
law. The constraint in question resides at the heart of the concept of
moral entitlement giving the United States patent recognition


J.D., Columbus School of Law, The Catholic University of America, 2010.
Utilitarianism stresses this principle. See JEREMY BENTHAM, THE RATIONALE OF REWARD 237-40 (1830)
(stating individuals ought to pursue wealth and society ought to limit this pursuit as little as
possible).
2

Kantian ethics stresses this second principle. See IMMANUEL KANT, THE METAPHYSICS OF
ETHICS 50 (Henry Calderwood ed., J.W. Semple trans., T. & T. Clark 3d ed. 1886) (1796)
[hereinafter METAPHYSICS OF ETHICS] (defining dignity as an “unconditioned, incomparable worth” to
which reverence can be the only response).
3
Compare METAPHYSICS OF ETHICS, supra note 2, at 50 (placing the dignity of the individual as the
greater end) with JEREMY BENTHAM, THEORY OF LEGISLATION 102-03 (Etienne Dumont ed., Richard
Hildreth trans., Trubner & Co. 4th ed. 1882) (1789) [hereinafter THEORY OF LEGISLATION] (arguing
that the first purpose is merely “medicine for the soul” and an excuse to accomplish a social
goal).
4
U.S. CONST. art. I, § 8 (“Congress shall have Power . . . . To promote the Progress of Science and
useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their
respective Writings and Discoveries.”).
1

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scheme its cogency and integrity as law. A legal system may
pursue the enhancement of societal wealth by reallocating wealth to
which some already have moral claims, but it may not do so to such
an extent or in such a manner violating the inherent dignity and
equality of those individuals. To suppose that the legal system can
seek to advance the maximization of wealth through Hobbesianstyle conferrals of legal entitlement, entirely without regard for the
moral rights of the mind creating the resources to which the
entitlement runs, contradicts the normative integrity of law.
Currently, the patent code in the United States generally passes this
test, for it respects the constraint in question and thereby retains its
moral integrity as law. However, the legislative proposal known as
the Patent Reform Act of 2011 (Patent Reform Act) 5 contains
elements that do not respect this framework. Correspondingly, it
should be modified or rejected.
The one who creates an invention acquires, thereby, a moral right
to recognition on the part of others, of a claim of ownership over the

asset created. The moral entitlement in question is, moreover,
amenable to legal recognition.6 Where it does not receive such
recognition, the consequence is that the subject of a moral right is
exposed to invasions of his or her interests in a manner that offends
principle. The laborer thereby loses the incentive to invest him or
herself further in the task of creation. 7 The resulting loss is not
merely of utilitarian concern. If the inventor receives nothing, or as
bad or perhaps even worse, if he or she is given an inadequate
opportunity to secure his or her claim which is just as easily stolen,
then his or her dignity is harmed and the experience becomes one
from which he or she is likely to withdraw by reason of a natural
moral objection. That society thereby loses a useful service is, in
the first instance, merely incidental. 8 While the law may provide a
system of incentives to spur creative activity, the law must, if it is to
retain its integrity as an order of mutual respect, retain as its fixed
starting point, the intrinsic human meaning of the creative inventive
act.
Existing law rewards the inventor through the conferral of the
5

The Patent Reform Act of 2011 is a set of proposals introduced in the 112 th Congress. S. 23,
112th Cong. (2011). The Senate Judiciary Committee had approved bringing Senate Bill 23 before
the full Senate without a report. The bill closely resembles the Patent Reform Act of 2009, H.R.
1260, 111th Cong. (2009), which in turn is similar to the Patent Reform Act of 2007, S. 1145,
110th Cong. (2007), and the Patent Reform Act of 2005, H.R. 2795, 109th Cong. (2005).
6
Hegel gives a philosophical account of the recognition of this moral right in law. See GEORG
WILHELM FRIEDRICH HEGEL, PHILOSOPHY OF RIGHT ¶¶59-63, 67-70 (S. W. Dyde trans., Dover Pub’n 2005)
(1821) [hereinafter PHILOSOPHY OF RIGHT] (stating the inventor has obtained a moral right to his
invention by his efforts).
7
RICHARD A. POSNER, ECONOMIC ANALYSIS OF LAW 28 (2d ed. 1977) [hereinafter ECONOMIC ANALYSIS OF
LAW] (stating legal protections create incentives to efficiently use limited resources).
8
JOHN FINNIS, NATURAL LAW AND NATURAL RIGHTS 231-39, 272-73 (1980) [hereinafter NATURAL LAW AND
NATURAL RIGHTS] (stating that a failure of justice will necessarily harm the dignity of the victim).

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exclusive rights to make and use the invention for a limited period
of time in an act of respect for his or her moral right. 9 To be deemed
worthy of this recognition, an applicant must demonstrate that he or
she has “invented” something new, raising the state of the art in the
relevant field at the time of the application by a meaningful step. 10
The recognition accorded takes the form of conferral on the inventor
of an enforcement right for infringement in federal courts. 11 Even in
the absence of an application, the inventor is further protected by
the patent code, which bars others from acquiring rights in the
invention.
In this scheme, if another seeks to file a patent
application with respect to work before the inventor of that work
does, the inventor may thwart the rival claim by a law suit or
administrative petition that seeks to show by clear and convincing
evidence that he or she is the true inventor. Without question, then,
the existing system of patent law, for its part, starts from an
inherent moral meaning of invention in its construction of a

statutory scheme of protective rights.12
On the other hand, the current scheme of patent law balances the
recognition it gives the inventor with a countervailing concern for
the free exchange of information. It provides that an inventor
automatically loses his or her right to legal recognition where a
preponderance of the evidence shows that he or she has released
the information into the public domain by voluntary disclosure to
other inventors.13 Thus, the existing system assumes that the
“ownership” of information belongs either to the creative inventor or
the equivalent, on the one hand, or to the public at large, on the
other. The state has a role in defining the boundary in this
allocation of ownership, but it does not possess, as a third pole, its
own Hobbesian font of power to fabricate and distribute
entitlements at will.14
The proposal for the reform of patent law embodied in the Patent
Reform Act effectively severs the scheme of right embodied in the
patent law from the foundational reference to the moral rights
underlying existing law.
It eliminates as a requirement of
9

35 U.S.C. § 271 (2010).
35 U.S.C. §§ 101-103 (2010). For the remainder of this comment, the relevant field for an
invention will be called an “art.” The U.S. Patent and Trademark Office [hereinafter PTO]
examines patents in divisions called “art groups.”
11
35 U.S.C. § 281 (2000) (providing that a patentee “shall have remedy by civil action for
infringement of his patent”).
12
35 U.S.C. § 102(f) (2000) (stating that one must have actually invented the subject matter
themselves in order to get a patent).
13
OddzOn Products v. Just Toys, 122 F.3d 1396 (Fed. Cir. 1997).
14
“In this distribution [of property], the first law is for division of the land itself: wherein the
sovereign assigneth to every man a portion, according as he, and not according as any subject, or
any number of them, shall judge agreeable to equity and the common good.” THOMAS HOBBES,
LEVIATHAN 171 (Richard Tuck ed., Cambridge Univ. Press 1991) (1651).
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patentability a showing by the applicant that the proffered invention
is not the invention of another, shifting the burden to the third-party
true inventor to come forward actively to contest the application by
someone else for ownership over his or her invention, within a brief
procedural window. At the very time that it uncouples eligibility for
patent from the natural right of the true inventor, the Patent Reform
Act simultaneously scales back the claim of the public domain to be
the residual category of all information over which the state does
not accord individual entitlement by some reference to moral right,
thereby foreclosing public access to information in favor of anyone
who merely exploit the new “first inventor to file” rule.
This comment does not contest the legitimacy of Congress’s

power legislatively to define property entitlements over the results
of invention in a manner that maximizes the social good as
Congress envisions it, i.e. for the sake of incentivizing the
production of wealth. It concedes that it belongs to the legislature
to decide the more precise balance of benefits to be conferred on
original inventor, rival claimants, and the general public. This note
argues, however, that the integrity of law requires that the moral
right of the inventor be given meaningful recognition as an essential
normative reference in Congress’s construction of its overall patent
scheme. From this perspective, this note argues that the balance
proposed in the Patent Reform Act fails to satisfy the applicable
normative standard, and, except as appropriately modified, ought to
be rejected.
Part I of this note sets out existing patent registration procedures
and then analyzes the changes to the Patent Statute proposed in
the Patent Reform Act. Part II offers an understanding of universal
moral principles that provide the minimal underpinnings of
American law and indeed of law qua law. Part III applies such
principles in order to frame and evaluate the general issues arising
in property Law, including the law of intellectual property. Part IV

states specific normative objections to the Patent Reform Act and
proposes revision to the proposal for the sake of satisfying them.

I. Existing Patent Law and Change Proposed Under the
Patent Reform Act
The provisions of the Patent Reform Act represent a decisive
change in relation to existing law.
To grasp the nature and
significance of the change, one best begins by charting the history
and origin of critical provisions within the existing law. Against this
backdrop, one can then limn the elements in the proposal that move
in an altogether new and unacceptable direction.

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1. The Author’s Moral Right as Historic Premise of
Patentability
It has been a constant under American constitutional law over time
that the requirements of obtaining a patent, generally speaking, are
to serve the following purpose: patents “are meant to encourage
invention by rewarding the inventor with the right, limited to a term
of years fixed by the patent, to exclude others from the use of his
invention.”15 The United States Constitution, under the Copyright
Clause, gives Congress the authority, “[t]o promote the progress of
science and useful arts, by securing for limited times to authors and
inventors the exclusive right to their respective writings and
discoveries . . . .”16 But just how the specific statutory requirements
for such recognition are to be formulated has been a matter of
gradual change and development in the law. Congress’s original
Patent Act of 1790 set up a scheme for the federal enforcement of
inventor’s rights; though, it left out of account details as to
requirements of patentability. 17 The Patent Act of 1836 reformed the
Patent Act of 1792 to exclude the patenting of material already in
the public domain, putting in place what was in effect a precursor to
the modern “novelty” requirement for patentability. 18
Before then, the law had allowed a person to patent an invention
without having to establish that the idea did not already exist in the
public domain in a manner undermining the possibility of the claim
of an invention. As a practical matter, anyone who availed him or
herself of information apparently in the public domain was under, in
this early period, under a heavy burden in any infringement action
by someone who had obtained a subsequent patent on it to locate
the source predating the patent and thereby to prove that the
plaintiff had not originated the idea and so did not merit patent
protection.19 At that time, it was quite easy, therefore, for one
15

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 229 (1964).
U.S. CONST. art. I, § 8. See also THE FEDERALIST NO. 43 (James Madison) (“The utility of this power
will scarcely be questioned . . . . The right to useful inventions seems with equal reason to belong
to the inventors. The public good fully coincides in both cases with the claims of individuals.”).
17
Act of 1790 (stating the only requirement was that the invention have not been “before known
or used”); Frank D. Prager, A History of Intellectual Property from 1545 to 1787 , 26 J. PAT. OFF.
SOC’Y 711 (1944).
18
Patent Act of 1836, ch. 357, 5 Stat. 117 (1836) (ordering that the device could not be “not
known or used by others before his or their discovery or invention thereof, and not, at the time of
his application for a patent, in public use or on sale, with his consent or allowance, as the inventor
or discoverer . . .”). See 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §
1.01[2] 1-3 (3d ed. 1996) (explaining that the public domain refers to materials that do not have
intellectual property protection, and may be used by anyone, and that “[p]ublic domain is the
rule: intellectual property is the exception”).
19
Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 60, (1923); Deering v. Winona
Harvester Works, 155 U.S. 286, 300-01 (1894); Barbed Wire Patent, 143 U.S. 275, 285 (1892).
16

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person to patent the invention of another and to seek royalties for
it.20 Gradually, Congress intervened to make patent applications
more onerous by way of a required showing that the applicant was
indeed the inventor and so entitled to a bundle of legal rights.
Congress raised the standard of patentability. 21 By 1851, it was
generally recognized that for a claimant to receive a patent, he or
she had to prove that the putative invention: 1) offered some useful
benefit to society, 2) was non-obvious compared to works in the
public domain, and 3) included an inventive step above anything
presupposed by works currently in the public domain. 22
The
author’s moral right was thus at that point the cornerstone of
patentability.23

2. Inventor’s Rights and the Public Domain:
Reciprocally
Co-Dependent Definitions
Ever since the formulation of law that was complete by the midnineteenth century, the conferral of the inventor’s entitlement due
to the addition of an “inventive step” was matched by a
corresponding recognition that all remaining information, outside of
such conferral, remained freely accessible to all as within the “public
domain.” Information not arising through the inventive step has
remained open to all. The presence or absence of the inventive step
and therewith the allocation of the information to the public or the
inventor respectively hinged on whether the putative invention is
obvious or non-obvious over and against what was previously
knowable by reference to everything in the public domain. The
Supreme Court formulated this term as early as 1850 in the case of
Hotchkiss v. Greenwood.24
The test for patentability, by this
measure, was the presence or absence of an objectively
demonstrable difference between the invention and the scope,
content, and skill level of prior art. 25 What is of key importance in
this traditional analysis for the normative underpinnings of patent
law is that Congress and the Courts have always assumed that the
20

Id.
Gayler v. Wilder, 51 U.S. 477, 496 (1851); see Patent Act of 1952, ch. 950, 66 Stat. 792 (This
standard was not codified until the amendment of the Patent Act in 1952.).
22
Id.
23
See BRUCE W. BUGBEE, GENESIS OF AMERICAN PATENT AND COPYRIGHT LAW (1967); but see Kenneth J.
Burchfiel, Revising the "Original" Patent Clause: Pseudohistory in Constitutional Construction , 2
HARV. J.L. & TECH. 155, 180-82 (1989) (explaining that the patent and copyright clause has no
historical limitation of inventorship, rather, it is a statutory right that is granted at the discretion
of Congress).
24
United States v. Wilkinson, 53 U.S. 244, 248 (1851).
25
Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966).
21

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remainder category into which any idea fell that was found not to be
patentable was the public domain. Either the idea belonged to an
inventor, or it belonged to the public. Traditionally, the public
domain has been conceived of as containing all information
publically known to and therefore available for use by people other
than the inventor anywhere in the world, including information that
the inventor him or herself had freely released to the public through
printed publications accessible to the public. 26
Where Congress and the courts have spoken to define the
scope of the inventor’s entitlement, it has been understood that
they were thereby simultaneously defining, as well, the scope of
public access to information. The precise location of the line which
when crossed through inventor communication of information to
others serves to place inventive information in the public domain, so
that it loses its patentability, has not remained entirely constant.
Traditionally, a finding that the invention had been released into the
public domain required a public disclosure by the inventor.
Recently, the more precise definition of the boundary has been the
object of further development and controversy. In one case that
would have critical consequences for recent developments in patent
law, the Court of Appeals for the Federal Circuit ruled in OddzOn
Products. v. Just Toys (OddzOn Products) that the disclosure that one
research partner made to another in advance of filing the patent
application had the effect of affecting the baseline against which
“nonobviousness” of the inventive step would be measured. In
effect, this “private” release of information counted as a quasirelease of information into the public domain barring patentability,
since the shared information counted as part of the “prior art”
against which the inventive step would be measured. 27

3. A Meaningful Right: Enforcement Via Several
Mutually Reinforcing Procedural Avenues of
Redress in Patent Law
Under the existing patent law scheme, several procedural avenues
converge in support of the inventor who seeks to assert a positive
claim of right, i.e. allowing the inventor to wield a sword to prevent
others from access to his or her invention. Where a rival is making
use of inventive formation, the original inventor, who holds a patent,
may, for example, bring an infringement suit, which he or she will
win upon proving both the validity of the patent and the fact of the
26

35 U.S.C. § 102; Gillman v. Stern, 114 F.2d 28 (1940), cert. denied, 311 U.S. 718 (1941).
Unites States v. Cazares, 122 F.3d 1391, 1396, 1403-04 (9th Cir. 1997) (holding evidence that
an invention was created by another can be used to determine whether an invention was obvious
to one of ordinary skill in the art).
27

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infringement.28 Where someone else holds him or herself out as the
owner of right of his or her invention, he or she may obtain a
declaratory judgment that the patent, in fact, belongs to him or her,
and obtain, as well, a court order requiring that it be turned over by
the counter-claimant, as a matter of right under either federal
statutory or state common law or both. Alternately, he or she may
petition the court for an equitable transfer of ownership under
common law conversion.29 Where the inventor claims the right of
ownership in an invention for which a patent is pending but has not
yet been granted on an application by another, he or she can file a
competing application and provoke an interference with pending
application.30 Upon his or her doing so, the Patent and Trademark
Office (PTO) will conduct an adversarial hearing to determine the
rightful inventive entity.31 If the inventor is asserting no more than
co-inventorship, he or she can petition simply to be added as an
inventor, or to change the inventive entity on the filed patent. 32
This ambit generally requires no more than simply submitting a form
and a fee to the PTO. 33 In the case of a contest by the holder of
another patent of record, the PTO will schedule an adversarial
proceeding to resolve the dispute.34 If the inventor loses at the
administrative law level, he or she may take the matter to federal
court to obtain a declaratory judgment action to have her name
added to the list of inventors.35 Alternately, the unlisted inventor
may petition the court for an equitable transfer of shared ownership
under common law conversion.36 Under either theory, a reversal of
the administrative law ruling requires a showing by clear and
convincing evidence.37
By the same token, if a potential inventor or other consumer of
information wishes to defend him or herself, i.e. hold up a shield,
against claims by others aimed at barring his or her access to
beneficial information he or she construes as being in the public
domain, he or she has several legal devices which he or she may
deploy. As the defendant in an infringement suit, he or she can
assert that the patent is simply invalid and so ineffective as a basis
28

35 U.S.C. § 271.
Richardson v. Suzuki Motor Co. Ltd., 868 F.2d 1226 (Fed. Cir. 1989), cert. denied, 493 U.S. 853
(1989).
30
35 U.S.C. § 135.
31
37 C.F.R. § 41.202.
32
35 U.S.C. § 116.
33
Id.; 37 C.F.R. § 1.497.
34
35 U.S.C. § 135.
35
35 U.S.C. § 256; MCV, Inc. v. King-Seeley Thermos Co., 870 F.2d 1568 (Fed. Cir. 1989).
36
Richardson v. Suzuki Motor Co. Ltd., 868 F.2d 1226 (Fed. Cir. 1989), cert. denied, 493 U.S. 853
(1989).
37
See Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993) (holding that testimony by the
inventor is insufficient).
29

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of liability. For example, he or she might assert that patent holder
did not invest an inventive step in the subject matter to the patent
so that the patent is therefore invalid. 38 Where another inventor is
slow moving and is unable to meet the high bar of clear and
convincing evidence, he or she may seek to disrupt the application
process and win a ruling that the application is inadequate so that
the knowledge contained therein is cast promptly into the public
domain. Finally, under OddzOn Products,39 he or she can provide
evidence of her contribution to the invention by way of
conversations with the inventor in the course of the inventive
process, and thereby undermine the patent as failing the nonobviousness and inventive steps tests.

B. Relevant Patent Reform
A mood favoring change in patent law in the direction of a greater
emphasis on utility and less on inventor’s rights began to take
shape well in advance of the Patent Reform Act. As early as 1982,
that least one federal circuit court in dictum registered its openness
to allowing calculations of utility under Congress’s Commerce Power
to override the principled and textual constraints of the Copyright
Clause. A movement favoring legislative reform in patent law began
with a 2003 initiative of the Federal Trade Commission (FTC) calling
for a reduced emphasis on the inventor’s bundle of rights and a
greater facilitation of competition, under the patent protection
scheme.40 The FTC’s premise was that by encouraging companies
to behave competitively the state would maximize consumer
welfare.41 The first legislative action was Congress’s enactment of
CREATE.42 These precursors to change can be fruitfully considered
first as setting the stage or the Patent Reform Act itself.

38

35 U.S.C. § 102(f).
Brian Coggio & Todd Krause, ‘CREATE’ Act of 2004 Extends 'Safe-Harbor' Aspects of Patent Law,
N.Y.L.J., Feb. 3, 2005, at 4; 35 U.S.C. § 116; 37 C.F.R. § 1.497.
40
TO PROMOTE INNOVATION: THE PROPER BALANCE OF COMPETITION AND PATENT LAW AND POLICY, FED. TRADE
COMM’N., Oct. 2003 [hereinafter FTC Report].
41
PHILLIP E. AREEDA & HERBERT HOVENKAMP, ANTITRUST LAW: AN ANALYSIS OF ANTITRUST PRINCIPLES AND
THEIR APPLICATION ¶100a at 4 (2000).
42
35 U.S.C. § 103(c)(3). Within the meaning of the law, "joint research agreement" means a
written contract, grant, or cooperative agreement entered into by two or more persons or entities
for the performance of experimental, developmental, or research work in the field of the claimed
invention.
39

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1. Precursors to Comprehensive Proposals for Change

a. The Arguable Priority of the Commerce Clause
Calculus:
Potential Adjudicative Inroad
Under existing constitutional case law, the Patent and Copyright
clause has been considered “both a grant of power and a
limitation.”43 That is to say, it is said to enjoy a preemptive
authority in relation to Congress’s other enumerated powers
wherever the subject matter revolves around authors’ and
inventors’ rights. While the majority of scholars hold that the Patent
and Copyright Clause cannot be circumvented, for example, by
Congress’s appeal to its much broader authority under the
Commerce Clause,44 there is some academic weight on the other
side of the question.45 Both position and counter-position turn on
whether Congress’s power over patents and copyrights is to be read
as implying a limit to Congress’s power over interstate commerce. 46
The position that it does enjoys Supreme Court decisional
authority as a matter of analogy to a case arising under the
Bankruptcy Clause, Railway Labor Executives’ Association v.
Gibbons.47
In Railway Labor Executives, a railroad entered
bankruptcy and slowly descended toward liquidation. 48 While some
railroad employees were able to find comparable jobs with other
railroads others were not.49
Congress responded to the
unemployable railroad workers by passing the Rock Island Transition
and Employee Assistance Act.50 Among other things, this act
modified the bankruptcy code to require the bankruptcy trustee to
pay economic benefits to the unemployable workers as an
43

Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 5 (1966).
Rochelle C. Dreyfuss, A Wiseguy's Approach to Information Products: Muscling Copyright and
Patent into a Unitary Theory of Intellectual Property , 1992 SUP. CT. REV. 195, 230 (1992); Paul J.
Heald & Suzanna Sherry, Implied Limits on the Legislative Power: The Intellectual Property Clause
as an Absolute Constraint on Congress , 2000 U. ILL. L. REV. 1119 (2000); Yochai Benkler,
Constitutional Bounds of Database Protection: The Role of Judicial Review in the Creation and
Definition of Private Rights in Information, 15 BERKELEY TECH. L.J. 535 (2000); William Patry, The
Enumerated Powers Doctrine and Intellectual Property: An Imminent Constitutiona l Collision, 67
GEO. WASH. L. REV. 359 (1999).
45
Thomas B. Nachbar, Intellectual Property and Constitutional Norms, 104 COLUM. L. REV. 272
(2004).
46
Heart of Atlanta Motel, Inc. v. United States, 379 U.S. 241 (1964) (finding that the Civil Rights
Act of 1964, while ostensibly passed under the Fourteenth Amendment under which it would be
invalid, would be considered valid under the Commerce Clause and therefore the law was
constitutional).
47
U.S. 457 (1982).
48
Id. at 459-60.
49
Id. at 461-62.
50
45 U.S.C. §§ 1001-1002.
44

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administrative expense (i.e. before all of the creditors). 51 Gibbons
filed a complaint in the Northern District of Illinois seeking to enjoin
the court from enforcing the new law, arguing it was
unconstitutional.52 The District Court granted the injunction. 53
To allay constitutional concerns that its enactment had lacked an
adequate predicate in the Bankruptcy Clause, Congress proceeded
to enact a new statute with the same effect, this time under the
Commerce Clause.54 Justice Rehnquist writing for a unanimous
Court noted, “Unlike the Commerce Clause, the Bankruptcy Clause
itself contains an affirmative limitation or restriction upon Congress’
power: bankruptcy laws must be uniform throughout the United
States.”55 The Court struck down the second law because it applied
to “one regional bankrupt railroad,” rendering the law not uniform
and in violation of the Bankruptcy Clause.56
Federal courts have been asked to rule expressly on the
application of the reasoning in Gibbons to the Patent and Copyright
Clause in relation to the Commerce Power. Such has occurred in the
context of legal challenges to the Digital Millennium Copyright Act’s
imposition of criminal liability on an individual who, “knowingly” and
for “commercial advantage or private financial gain[:]”
(1) fixes the sounds or sounds and images of a live musical
performance in a copy or phonorecord, or reproduces copies or
phonorecords of such a performance from an unauthorized fixation; 57

Defendants facing criminal liability under this statute have argued
that it is unconstitutional because it does not limit the predication of
guilt on injury occurring within a durational limit of “for a limited
time,” in conformity with the language of the Patent and Copyright
Clause.58 Two such challenges have been the subject of federal
circuit courts of appeal rulings.59 Both cases, United States v.
Moghadam and United States v. Martignon, were resolved without
deciding the question.60 The reasoning in each rested on a
51

Id. at §1005, 1008; Congress has the power to create “uniform Laws on the subject of
Bankruptcies.” U.S. CONST. art. I, § 8, cl. 4.
52
Ry. Labor Executives' Ass'n v. Gibbons (Railway Labor Executives), 455 U.S. 457, 463 (1982)
(stating the appellees argument that by depriving them of funds, Congress was violating the “just
compensation” clause of U.S. CONST. amend. V).
53
Id.
54
Staggers Rail Act of 1980, §701 (codified at 45 U.S.C. § 701).
55
Railway Labor Executives, 455 U.S. at 468.
56
Id. at 470.
57
18 U.S.C. 2319A (2002). A similar provision imposes civil liability for the same action. 17 U.S.C.
§1101.
58
1 NIMMER ON COPYRIGHT § 1.09 (2009).
59
United States v. Moghadam, 175 F.3d 1269 (11th Cir. 1999), reh’g and reh’g en Banc
denied, 175 F.3d 1269, (11th Cir. 1999), cert. denied, 529 U.S. 1036 (2000); United States v.
Martignon, 492 F.3d 140 (2d Cir. 2007).
60
Id.

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conclusion that a “live musical performance” was not a “writing”
within the meaning of the Patent and Copyright Clause, with the
consequence that the limited time provision of the clause did not
apply in any event.61 Bootlegging, on the other hand, which was an
issue in both cases, was a problem with respect to interstate
commerce that Congress was authorized to regulate under the
Commerce Clause.62 Both courts stipulated that the facts of the
case did not place the Commerce Clause in conflict with the Patent
and Copyright Clause. In Moghadam, however, the Second Circuit
stated in dictum that were the issue seen in Railway Labor
Executives ever joined in a copyright-related matter, the application
of Railway Labor Executives would require, at the threshold, a
resolution of a tension the court noted as characterizing the
relationship of Railway Labor Executives to Heart of Atlanta Motel.63
This dictum suggests that the Second Circuit, at least, may
eventually hold that Congress is empowered to override some
internal requirements of the Copyright Clause by reason of its
Commerce Power. Because the commercial logic of the latter power
implies a teleological or even utilitarian calculus, this move would
effectively cancel the principled constraints embodied in the
former.64

b. CREATE: A First Legislative Inroad
In 2004, Congress responded to OddzOn Products by enacting the
Cooperative Research and Development Act (CREATE). 65 This Act
modified that ruling’s exclusion from the category of patentable
inventions, a product of research based on information that has
been disclosed to another in the course of the inventive process.
The means the enactment employed to annul the outcome of the
case was a stipulation that the patent applicant was deemed “to
own” the information it communicated to it the other party in a joint
research relationship, with the consequence that such information
was not deemed part of information belonging to another that could
undermine the applicant’s showing of non-obviousness. Information
so communicated could no longer serve as a barrier to patentability.
61

Martignon, 492 F.3d at 151 (“Thus, under either mode of analysis, Section 2319A is not subject
to the limitations of Article I, Section 8, cl. 8.”); Moghadam, 175 F.3d at 1279 (“the Commerce
Clause may be used to accomplish that which the Copyright Clause may not allow”).
62
Moghadam, 175 F.3d at 1279.
63
Id. at 1279-80.
64
This is the logic of Wickard v. Filburn , 317 U.S. 111 (1942), or even of United States v. Lopez,
514 U.S. 549 (1995). Although Lopez established limits of the Commerce Clause, it was not a
complete bar.
65
Cooperative Research and Technology Enhancement (CREATE) Act of 2004, Pub. L. No. 108-453
(2004). The Act amends §103(c) of the Patent Act. 35 U.S.C. § 103. The Patent Reform Act of 2011
incorporates CREATE’s terms into its own. Patent Reform Act §102(c) (2011).

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Congress’s ambit for cancelling the ruling in OddzOn
Products entailed a not-so-subtle compromise of the moral principle
of the inventor’s moral right as a basis of patent law, for it conferred
“ownership” on someone who had not actually invented it. By
permitting a patent applicant to treat the invention of a research
partner as constructively his or her own, CREATE loosened the
patent scheme for one of its basic normative anchors, the moral
right of the actual inventor.66 Against the backdrop of the existing
patent law and the history of patent law preceding it, this
development represented, moreover, a limited but nonetheless
significant departure of patent law from what theretofore had been
one of its key normative assumptions, namely that the removal of
information from the public domain will be allowed only with some
justification in relation to the intrinsic moral right of an inventor.

2. Proposed Comprehensive Change: The Patent
Reform Act
Congress evinced a potential openness to a more comprehensive
reform of the patent law with the introduction into the House of
Representatives of the Patent Reform Act of 2005.67 This bill did not
pass the House and never reached the Senate. The Patent Reform
Act of 2007 was introduced in the next following Congress. 68 It was
not enacted, and was superseded by the Patent Reform Act of 2009,
which in turn was amended to become the Patent Reform Act of
2010.69 This was again revised to the Patent Reform Act of 2011
(Patent Reform Act), which is the object of the present comment. 70
The central innovation contained in all three proposals has been
identical: an alteration of the requirements of patentability to
replace the existing “First to Invent” with a “First to File” system.
The Patent Reform Act merely sets forth the proposal in its most
recent instantiation.
The patent scheme assigns rights based
primarily on who files first on the invention. The true inventor is not
entirely forgotten, but is relegated to having no more than the “nod”
of a limited procedural right to intervene in and preempt the
66

Another concern was that of the retroactive effect of the law in restricting inventors’ rights. See
WENDY H. SCHACHT, CONG. RESEARCH SERV., COLLABORATIVE R&D AND THE COOPERATIVE RESEARCH AND
TECHNOLOGY
ENHANCEMENT
ACT
(2005),
available
at
http://cine
online.org/NLE/CRSreports/05jan/RS21882.pdf.
67
The Patent Reform Act of 2005, H.R. 2795, 109th Congress (2005).
68
The Patent Reform Act of 2007, H.R. 1908, S. 1145, 110th Congress (2007).
69
The Patent Reform Act of 2009, H.R. 1260, S. 515, 111th Congress (2009). Senate Bill 515 was
then amended to be re-introduced as the Patent Reform Act of 2010 on Feb 26, 2010.
70
The Patent Reform Act of 2011 § 2, S. 23, 112th Congress (2011). As explained infra note 76
and accompanying text, the “first inventor to file” rule is merely a “first to file” rule with a
requirement that the inventor have a subjective belief that he or she is the inventor. Accordingly,
I call this the “first to file” rule.

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application by another, prior to the running of a stated time period.
In addition, these proposed enactments, most recently the Patent
Reform Act, integrates the CREATE provision creating constructive
ownership in shared informed with a consequent diminution of the
scope of what is in effect the public domain.

The current patent statute reads, “A person shall be entitled
to patent unless—(f) he did not himself invent the subject matter
sought to be patented.”71
A finding by clear and convincing
evidence72 that a patent arises by derivation from the invention of
another results in an immediate invalidation of the patent or patent
application.73 The Patent Reform Act, however, simply eliminates
§102(f). The fact that the invention is really that of another is thus
in this new scheme no longer a barrier to patentability. 74 In the
place of this requirement, the Reform continues to require merely an
oath of a subjective belief that the invention is one’s own. 75 As an
objectively enforceable limit, it provides, in a decidedly ungenerous
provision, merely that the inventor may come forward to challenge
the patent or patent application by a derivative action:
(a) Dispute Over Right to Patent.—
(1) INSTITUTION OF DERIVATION PROCEEDING.— An
applicant may request initiation of a derivation proceeding to
determine the right of the applicant to a patent by filing a request
which sets forth with particularity the basis for finding that an earlier
applicant derived the claimed invention from the applicant requesting
the proceeding and, without authorization, filed an application claiming
such invention. Any such request may only be made within 12 months
after the date of first publication of an application containing a claim
that is the same or is substantially the same as the claimed invention,
must be made under oath, and must be supported by substantial
evidence. Whenever the Director determines that patents or
71

35 U.S.C. §102(f) (2000).
Historically, the courts have been skeptical of the testimony of would-be inventors. Price v.
Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993) (holding that testimony by the inventor is
insufficient); accord Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 60, (1923); Deering
v. Winona Harvester Works, 155 U.S. 286, 300-01 (1894); Barbed Wire Patent, 143 U.S. 275, 285
(1892).
73
Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981).
74
Some scholars believe that inventorship is inherent in §101 and is a constitutional requirement
for Congress to give a patent, so that the fundamental requirement would remain. See 1-2 CHISUM
ON PATENTS § 2.01 (“It would be morally offensive to allow one to harvest what another has
sown.”).
75
Patent Reform Act § 115(b)(2) (requiring that “such individual believe[] himself or herself to be
the original inventor or an original joint inventor of a claimed invention in the application”).
72

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applications for patent naming different individuals as the inventor
interfere with one another because of a dispute over the right to patent
under section 102(a), the Director shall institute a derivation
proceeding for the purpose of determining which applicant is entitled to
a patent.76

Derivation, in this scheme, becomes a bar to patentability only if
the rival inventor comes onto the scene and succeeds in proving by
clear and convincing evidence that he or she has created a prior
invention, communicated this to the patent applicant, and the
communication is one which would enable a person of ordinary skill
in the art to make and use the invention. 77 Notice too that the
standard of proof that the true inventor faces is daunting:
substantial evidence. The Federal Trade Commission, in spite of its
general approval of the direction of the patent reform embodied in
the Reform Act concluded that the procedural barrier in the burden
of proof (substantial evidence) was excessive. 78 Compare this single
remaining technical window with the ample avenues named above
under the existing patent scheme whereby the true inventor may
legally enforce his or her moral right.79
Notwithstanding the technical presence of an oath and of a certain
residual window within which the true inventor may technically seek
to vindicate his or her rights, the overall result is that the moral right
foundation of the Patent scheme is, in this scheme, decisively
severed. It has been noted, in the literature, that a secondary effect
has been to place intrinsically offensive conductive in the theft of
ideas beyond the scope of the punishment of law.80
In eliminating 102(f), the Patent Reform Act would effectively
reverse the portion of the Federal Circuit’s decision in OddzOn
Products, holding that § 102(f) material could be used as prior art in
a rejection for obviousness under § 103(a). 81 In that case, the
76

Patent Reform Act § 3(i).
Price, 988 F.2d at 1194; Kendall v. Searles, 173 F.2d 986, 993 (C.C.P.A. 1949); Gambro Lundia AB
v. Baxter Healthcare Corp., 110 F.3d 1573, 1576 (Fed. Cir. 1997); Loom Co. v. Higgins, 105 U.S.
580, 594 (1882) (ruling that the exhibits themselves were enough without corroboration).
78
FTC Report supra note 43 at 11.
79
See supra text accompanying notes 28-37.
80
See TODD BAKER, 35 U.S.C. 135—GATEWAY TO PRIORITY AND DERIVATION DETERMINATIONS BY THE BPAI,
available at www.oblon.com/media/index.php?id=400 (last visited July 5, 2011) (“It is peculiar
that the patent reform bills maintain the arcane statute of repose for derivation cases and limit
the venue for hearing such cases.”).
81
The judge acknowledged the law was ambiguous, but stated “[i]t is sometimes more important
that a close question be settled one way or another than which way it is settled. We settle the
issue here (subject of course to any later intervention by Congress or review by the Supreme
Court) . . . .” OddzOn Products v. Just Toys, 122 F.3d 1396, 1403 (Fed. Cir. 1997). Brian Murphy
has argued that the appropriate solution under the circumstances would have been for the court
to have determined who actually invented the patentable subject matter and to have adjusted
the inventive entity if necessary. Brian P. Murphy, OddzOn Products and Derivation of Invention:
At Odds with the Purpose of Section 102(f) of the Patent Act of 1952? , 9 FORDHAM INTELL. PROP.
MEDIA & ENT. L.J. 529 (1999) (arguing the Federal Circuit should have remanded to either
determine inventorship or correct the inventive entity).
77

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company OddzOn held a design patent for a toy football, and
another firm, Just Toys, sold a competing design. 82 When OddzOn
sued for infringement, Just Toys argued the patent was invalid for a
lack of novelty since the inventor had been aware of two
confidential designs that “inspired” him to create the football. 83 The
Federal Circuit’s reasoning held that § 102(f) is a prior art provision
for purposes of § 103, so that the disclosures were relevant to the
question of obviousness.
The fund of evidence that OddzOn
Products opened up for use in establishing obviousness foreseeably
had the effect of making the patenting information more difficult
and thereby foreseeably served to expand the scope of the public
domain. Thus, the Patent Reform Act serves to curtail the scope of
the public domain, even as it narrows the rights of the true inventor.
By incorporating the provisions of CREATE, which utilize the concept
of constructive ownership to restrict the public domain, the Patent
Reform Act also effectively limits the public domain.
In both
respects, the Patent Reform Act limits the public domain for the
benefit of the party receiving an arbitrary statutory conferral, and
not for the good of a true inventor. To comprehend the shift in
emphasis, compare the ample avenues cited above by which the
potential inventor or other consumer of information can defend his
or her access to opportunities within the public domain. 84

II. Universal Moral Principle as an Underpinning of Law
While it may sometimes be overlooked, the law of the United States,
during the latter half of the twentieth century and into the present,
continues to affirm that the law’s intelligibility hinges on respect for
certain universal moral principles.85 Even the classic contemporary
exposition of legal positivism endorses this idea. 86 Natural law
philosophy, only sometimes grounding its assertion of universal
moral principles in God, presents one interpretation of this
undergirding relationship of law to moral principle. 87
Many
significant philosophies of law converge in their explanations and
82

Oddzon, 122 F.3d at 1399.
Id. at 1401.
84
See supra text accompanying notes 38-39.
85
M.D.A. FREEMAN , LLOYD’S INTRODUCTION TO JURISPRUDENCE 49-50 (7th ed. 2001) (reasoning moral
content can be distilled from legal order when judges apply moral principles to legal rules).
86
H.L.A. HART, THE CONCEPT OF LAW 193-200 (1997) [hereinafter CONCEPT OF LAW] (stating that
standards of behavior necessary for peaceful coexistence create “a core of good sense in the
doctrines of natural law”).
87
NATURAL LAW AND NATURAL RIGHTS, supra note 8, at 231-39. Morality is so ingrained in legal
doctrine the Texas Supreme Court can display a monument of the Decalogue as a vague
manifestation of moral basis in law without infringing upon the Establishment Clause of the First
Amendment.
See Van Orden v. Perry, 545 U.S. 677, 690 (2005) (holding that “promoting a
message consistent with a religious doctrine does not run afoul of the Establishment Clause”).
83

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justifications of this basic point of orientation in the meaning of
law.88 A deeper understanding of this idea can be best here
advanced by considering:
a) the idea that law has a moral
underpinning as such; b) lawmaking’s manner of integrating moral
knowledge; and c) a necessary balancing of duty and aspiration in
lawmaking.

A. The Idea that Law has a Moral Underpinning
The legal positivism of H.L.A. Hart eschews reliance on natural law in
a traditional sense, but, nonetheless, finds a universal orientation of
law to certain recurring moral rules, arising from a need for reliable
legal order based on mutual restraint in the face of inherent flaws in
human beings.89 Because of a universal propensity of people to
invade one another’s interest in security and well being coupled
with every person’s equally universal vulnerability to such invasion,
the first order of societal business under law is an enforceable order
of mutual respect.90 Through law, societies everywhere provide
some sort of basic protection for persons, property, and interests
arising under promise.91 Society places the satisfaction of this
objective before other possible and elective uses of law. 92
Contemporary natural law thinkers cite this same universally
recurring moral reference in legal order, but explain it differently
and more adequately. These thinkers hold rather that law serves to
lead citizens to a kind of virtue.93 On the question of society’s
response under law to the production of wealth, positivists and
natural law thinkers tend to diverge. 94
Positivists are either
88

See Michael W. McConnell, Secular R