SINGLE COURT OF PATENT APPEALS-A LEGISLATIVE HISTORY By Margret M. Conway (Legislative Reference Service) INTRODUCTION Prior to the creation of the United States Circuit Courts of Appeal in 1891, all appeals in patent cases went directly from the United States circuit courts, which had exclusive jurisdiction in the first instance, to the United States Supreme Court. Although technically a decision, even by the United States Supreme Court, holding a patent invalid is not a decision in rem invalidating the patent, but is merely an adjudication as between the parties to that particular suit, yet the effect of such a decision, with few exceptions, had been the same as if it were a judgment in rem, and when once a patent had been held invalid by the United States Supreme Court, the general public was fairly safe in thereafter disregarding the patent. However, in time, the Supreme Court docket became so congested that cases appealed to it could not be decided until several years after being docketed. Fortunate was the patentee who could obtain a decision in 5 years; the average lapse of time became 10 years. Measured against the 17-year life of the patent, the time spent in litigation took up more than half of the exploitable life of the grant. With their establishment in 1891, the United States circuit courts of appeals, were given final jurisdiction in all cases arising under the patent laws of the United States subject, of course, to the authority of the Supreme Court to call any case before it on certiorari. The years subsequent to the establishment of these courts of appeals demonstrated that neither the public nor the patentee was in an improved position. Since the decision of a court of appeals in any one circuit was of no binding effect in any other circuit, and the doctrine of comity was not often applied, this arrangement merely resulted, to a considerable extent, in there being nine different courts of last resort. Over the period extending from 1900 to approximately 1918, the section of patent, trademark and copyright law of the American Bar Association consistently supported the establishment of a special court of patent appeals with jurisdiction throughout the United States. In 1918, their report shows that such advocacy was set aside in favor of other overriding considerations resulting from the war. The report for 1919 reverses the previous trend, due to lack of favorable action on the proposal by Congress. Previous to the period during which the American Bar Association was advocating the establishment of a special court of patent appeals, eight bills had been introduced in Congress making this proposal. Two of these were reported. After 1903, another 24 bills 33847-59--2 were introduced, of which 3 were reported, and a number of hearings held. None of the bills introduced during this period was ever passed by either House. Thereafter, there followed a considerable period of time during which the idea was not even brought before Congress. In 1936, companion bills were introduced in the Senate and House to establish & single court of patent appeals, and from then until the commencement of World War II there were intermittent proposals in Congress respecting the court. This resurgence of interest can in considerable measure be ascribed to awakened concern about the economic effect of patents, which was ultimately explored in the hearings and studies of the Temporary National Economic Committee. Since World War II, the only proposal to establish a special court of patent appeals was made in the 84th Congress when Senator O'Mahoney introduced S. 3744. There was no action on this bill. PART ONE. EARLY PROPOSALS (1887-1921) I. BILLS AND ACTION Although the introduction of bills to establish a court of patent appeals antedates the creation of the United States circuit courts of appeals in 1891, from that moment forward until World War I, there was a continuous interest in the introduction and support of such bills. The accompanying table 1 gives a listing of such bills by Congress, with notation as to their principal provisions, and any action which was taken on them by either House of the Congress. |