Article I, Section 8, Clause 8:

[The 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.

Early Supreme Court cases suggest that Congress has “plenary” power to enlarge patent rights retrospectively.1 The extent to which patent rights can be limited retrospectively, consistent with the Intellectual Property (IP) Clause and constitutional protections for property, is an unsettled area of law.

The Supreme Court has presumed that patents, once granted, are property rights subject to the Due Process Clause of the Fifth and Fourteenth Amendments.2 The Court has repeatedly suggested that patents are “private property” the government cannot take without just compensation under the Fifth Amendment’s Takings Clause.3 The Court has not had occasion to decide the applicability of the Takings Clause to patents, however, because Congress has long provided by statute that a patent holder may sue for “reasonable and entire compensation” if the Federal Government uses or manufactures a patented invention without a license.4

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,5 the Court distinguished these precedents regarding the nature of a patent as private property. Oil States held that because the grant of a patent was a “public right” (not a private right) under Article III of the Constitution, determinations of patent validity can be made by an administrative agency and need not be decided by an Article III court.6 Although this holding is in some tension with the Court’s earlier characterizations of patents as private property, Oil States emphasized “the narrowness of [its] holding” ; the Court specifically noted that “our decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.” 7

Footnotes

1

McClurg v. Kingsland, 42 U.S. (1 How.) 202, 206 (1843) ( “[T]he powers of Congress to legislate upon the subject of patents is plenary by the terms of the Constitution. . . . [T]here can be no limitation of their right to modify them at their pleasure, so that they do not take away the rights of property in existing patents.” ); see also Eldred v. Ashcroft, 537 U.S. 186, 202 (2003) ( “[T]he Court has found no constitutional barrier to the legislative expansion of existing patents.” (citing McClurg, 42 U.S. at 206)).

2

Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627, 642 (1999) ( “Patents, however, have long been considered a species of property. . . . As such, they are surely included within the ‘property’ of which no person may be deprived by a State without due process of law [under the Fourteenth Amendment.]” (citations omitted)). For background on the Due Process Clause, see Amdt14.S1.3 Due Process Generally.

3

See, e.g., Horne v. Dep’t of Agric., 576 U.S. 351, 359–60 (2015) ( “'[A patent] confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use without compensation land which has been patented to a private purchaser.’” (quoting James v. Campbell, 104 U.S. 356, 358 (1882))); see also McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606, 609 (1898) (concluding that a granted patent “become[s] the property of the patentee, and as such is entitled to the same legal protection as other property” ); Brown v. Duchesne, 60 U.S. (19 How.) 183, 197 (1857) ( “[B]y the laws of the United States, the rights of a party under a patent are his private property . . . .” ). For more on the Takings Clause as applied to tangible property, see Amdt5.9.1 Overview of Takings Clause.

4

See 28 U.S.C. § 1498(a). An analogous right to sue is afforded to copyright holders. Id. § 1498(b).

5

Oil States Energy Servs., LLC v. Greene’s Energy Grp., No. 16-712, slip op. at 10–11 (U.S. Apr. 24, 2018).

6

Id. at 5–10. For a discussion of Oil States in the context of the limits on congressional power to establish non-Article III courts, see ArtIII.S1.9.1 Overview of Congressional Power to Establish Non-Article III Courts.

7

Oil States, slip op. at 16–17. Oil States also specified that it did not decide “whether other patent matters, such as infringement actions, can be heard in a non-Article III forum,” or whether the retroactive application of the inter partes review administrative procedure effected a due process violation. Id. at 17.