Journal of Intellectual Property Law
Spring, 2000


 
(Cite as: 7 J. Intell. Prop. L. 315, *315)
DEFINING THE PATENT AND COPYRIGHT TERM: TERM LIMITS AND THE
INTELLECTUAL PROPERTY CLAUSE

Edward C. Walterscheid [FNa1]

Copyright © 2000 Journal of Intellectual Property Law Association; Edward C.
Walterscheid

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. . . . [FN1]

I. Introduction

In 1966 the Supreme Court declared that the patent provision of the Intellectual Property Clause "is both a grant of power and a limitation." [FN2] The Court was speaking in the context of its view that the patent provision contains an inherent constitutional standard of invention, but the quoted language is of interest because the Intellectual Property Clause contains several grants of power and several limitations. Elsewhere, I have sought to explore the differing perspectives that have existed over time with regard to ascertaining just exactly what the grants of power are and what the limitations are. [FN3]
Here, I wish to explore the limitation set on the power of Congress to authorize issuance of patents and copyrights by the phrase "for limited times" as it appears in the Intellectual Property Clause. [FN4] Inherent in this *316
(Cite as: 7 J. Intell. Prop. L. 315, *316)
phrase is the presumption that at some point in time the subject matter of both patents and copyrights are intended to go into the public domain, i.e., patents and copyrights do not-and cannot-create a perpetual property right in inventors and authors. What did the Framers intend by this phrase, and how has the Congress interpreted it over the more than two hundred years since the Constitution was ratified? To what extent, if any, is the phrase controlled and limited by the purpose of the Intellectual Property Clause, i.e., "to promote the Progress of Science and useful Arts"? Why has Congress authorized a copyright term that can in principle extend five times longer than the patent term? Perhaps more importantly, with its latest copyright term extension legislation, has Congress reached beyond the constitutional limit on the copyright term? [FN5]
An exploration of term limits in the Intellectual Property Clause must begin with a closer look at the rationale for this most unusual clause.

II. A Most Unusual Clause

In the eighteenth century, those who thought about such matters-and the delegates to the constitutional convention in general were certainly in that vein-took for granted that it was the duty of enlightened government "to promote the Progress of Science and [the] useful Arts." [FN6] But there is a tendency to forget that the constitutional power granted to Congress "to promote the Progress of Science and useful Arts" is unique among the congressional powers in that it alone specifies a mode for exercising the particular power, i.e., "by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." [FN7] No other constitutional grant of authority to Congress sets forth a specific means for exercising that authority.
It appears that this was deliberate and that other attempts to grant specific as opposed to general powers to Congress were rejected by the delegates. *317
(Cite as: 7 J. Intell. Prop. L. 315, *317)
Jefferson, who was not a particular friend of the Intellectual Property Clause although he is often argued to have highly favored it, [FN8] provided interesting, albeit indirect, evidence in this regard, when he recorded the following as the result of a dinner conversation on March 11, 1798:
Baldwin mentions at table the following fact. When the bank bill was under discussion in the House of Representatives, Judge Wilson came in, and was standing by Baldwin. Baldwin reminded him of the following fact which passed at the grand convention. Among the enumerated powers given to Congress was one to erect corporations. It was, on debate, struck out. Several particular powers were then proposed. Among others, Robert Morris proposed to give Congress a power to establish a national bank. . . . [This] was rejected, as was every other special power, except that of giving copyrights to authors, and patents to inventors; the general power of incorporating being whittled down to this shred. Wilson agreed to the fact. [FN9]
Indeed, the Committee of Detail, which was responsible for preparing a working draft from which the delegates ultimately crafted the Constitution, deliberately avoided placing such details in the clauses being proposed. As Edmund Randolph explained it:
In the draught of a fundamental constitution, two things deserve attention:
1. To insert essential principles only, lest the operations of government should be clogged by rendering those provisions permanent and unalterable, which ought to be accommodated by time and events, and 
*318
(Cite as: 7 J. Intell. Prop. L. 315, *318)
2. To use simple and precise language and general propositions, according to the example of the constitutions of the (several) states. [FN10]
It is precisely because the delegates hewed to these first principles that the Constitution has been such an enduring framework of governance for the United States.
Thus, the unusual fact that this particular detail exists in the Intellectual Property Clause suggests a key to why such a clause was included. Not only was it intended to provide a broad authority to promote the progress of science and the useful arts, but also as a means of ensuring authority to do so in a particular way, namely, by securing exclusive rights for limited times to authors and inventors in their respective writings and discoveries. [FN11] Again, I emphasize that it is the only instance wherein the delegates prescribed a specific mode of accomplishing the particular authority granted.
That they should do so is interesting because there are a variety of ways of promoting the progress of science and useful arts which have nothing to do with the granting of exclusive rights for limited times in writings, inventions, and discoveries. Indeed, a strong movement would arise in Europe in the nineteenth century which would argue that granting exclusive rights was precisely the wrong way to encourage industrial innovation. [FN12] Why then should the Constitution make specific reference to promoting the useful arts by securing exclusive rights in their inventions to inventors for limited times? The answer seems to have been predicated on the fact that they desired to follow the English practice of granting exclusive rights through the issuance of patents or something similar and were not at all certain that Congress would have the power to do so without an explicit grant of authority. This was also true with regard to copyrights.
The problem was that patents and copyrights were clearly perceived as monopolies, albeit desirable ones. In their discussion of the limited-term *319
(Cite as: 7 J. Intell. Prop. L. 315, *319)
exclusive rights authorized by the Intellectual Property Clause, both Jefferson and Madison referred to them as monopolies. [FN13] Indeed, the fact that they were looked on as monopolies was exactly the reason that Jefferson initially opposed the Intellectual Property Clause and was never particularly enthralled with it. [FN14] He thought it better to grant no monopolies at all. Nonetheless, the delegates did not believe that Congress would have the power to grant any monopolies, even desirable ones, absent an express authority of this type. [FN15] But in granting express authority to create patent and copyright monopolies, they sought to assure that the monopolies would not be open-ended but rather limited in time. Just what the temporal limitation should be has remained an open question.
But why would the Framers desire to perpetuate English institutions of this type? One straightforward reason was their familiarity with them. The issuance of patents and copyrights had long been known in England, and these limited- term monopolies were generally perceived to produce social good, both as an encouragement to the development of manufacturing and *320
(Cite as: 7 J. Intell. Prop. L. 315, *320)
as an aid to learning. But more than anything else, the rationale was pragmatic and economic. This approach to promoting the progress of science and useful arts would cost the new federal government the least to implement while at the same time providing a desired pecuniary incentive to both inventors and authors. This was a critical consideration for the new government that was contemplated to take over the state debts inherited from the Revolutionary War. From the perspective of delegates seeking to devise a form of governance for a fledgling, impecunious national government, granting limited-term exclusive rights in their works to authors and inventors seemed the perfect solution to encouraging the progress of science and useful arts with the least expense. [FN16] Although no contemporaneous American exposition of this pragmatic economic reality has been found, it had recently been set forth in England. [FN17]
Purely and simply, the Framers desired to give Congress authority to engage in the patent and copyright practice that had long been followed in England, but with discretion to modify it to meet American circumstances. A fundamental aspect of that practice was that the exclusive right granted by either patent or copyright be limited in time. To understand what the Framers contemplated, it is thus necessary to review not only the extant English practice with respect to the patent and copyright terms authorized when the Constitution was drafted, but also how those terms came to be developed.

III. English Antecedents

At the time the Framers met in convention in Philadelphia, the patenting of inventions and copyrighting of literary works had been practiced in England for several centuries. Indeed, the legal forms of letters patent in the *321
(Cite as: 7 J. Intell. Prop. L. 315, *321)
English context were not only time-honored but timeworn. [FN18] Copyright law, and in particular the copyright term under common law, had been hotly debated in England in the decades preceding the drafting of the Constitution, and there seems to have been confusion on the part of the Framers as to exactly what the term of common law copyright was-or indeed whether such actually existed. [FN19]

a. patent custom and practice
It is not certain when the first English patents of monopoly were granted, but the English patent custom took root and flourished during the reign of Elizabeth I. Commencing in 1561 and continuing through 1600, she granted at least 55 patents of monopoly for industries and inventions. [FN20] Unfortunately, she also granted "odious monopolies," i.e., those in restraint of a known trade or industry. Moreover, at least certain of her grants of monopoly came to be used to control settled trades and thereby came to be perceived as "odious monopolies." [FN21]
Early in Elizabeth's reign a concept developed that stated the crown had the duty and obligation to regulate trade and commerce in such a way as to favor the creation of new industries and trades. The crown was sufficiently pragmatic to realize that the costs and risks associated with the introduction of a new trade or industry required a substantial economic return to those taking such risks and incurring such expenses without at the same time resulting in a substantial cost to the state. In the impecunious and parsimonious*322
(Cite as: 7 J. Intell. Prop. L. 315, *322 )
nature of the times, the grant of a patent monopoly for a limited period held itself out as the most appropriate incentive to be offered by the crown. [FN22]
It was perhaps inevitable that the granting of monopoly patents would produce significant problems. But it was not until November 1601 that Parliament began debating a bill entitled "An Act for the Explanation of the Common Law in Certain Cases of Letters Patent" and in so doing created a grave constitutional crisis. At issue was the power of the royal prerogative under which the patents, including those for the so-called "odious monopolies," had issued. The last thing the crown wanted was parliamentary enactment in this regard. Accordingly, in a brilliant political move, Elizabeth agreed that if the bill 
(Cite as: 7 J. Intell. Prop. L. 315, *322)
was withdrawn, she would agree to submit her patent grants to "a Tryal according to law for the good of the people." [FN23]
Parliament quickly agreed, and, as a result, the common law would be called upon to settle a sensitive constitutional issue vital to the commerce of the country. The denouement came in 1602 in the celebrated case of Darcy v. Allin, also known as The Case on Monopolies. This case involved the monopoly patent on the importation, manufacture, or sale, in gross or retail, of playing cards in England which had existed in one form or another since 1576.
In the context of the patent law, Darcy v. Allin is remembered not for the literal ruling therein, but rather for the opinions expressed on the monopoly right and the argument relating to invention and monopoly right. Monopoly was stated to be prima facie against the common law, the statute law, and the liberty of the subject because it damages not only those working in the trade but all other subjects of the realm as well by raising prices, reducing merchantability, and reducing employment. [FN24] These were strong words, but a critical exception was admitted by counsel for Allin, namely,
. . . the [j]udges have heretofore allowed of monopoly patents, which is, that where any man by his own charge and industry, or by his own wit or invention doth bring any new trade into the realm, or any engine tending to the *323
(Cite as: 7 J. Intell. Prop. L. 315, *323)
furtherance of a trade that never was used before: and that for the good of the realm: that in such cases the King may grant to him a monopoly patent for some reasonable time, until the subjects may learn the same, in consideration of the good that he doth by bringing his invention to the commonwealth (emphasis supplied): otherwise not. [FN25]
In The Clothworkers of Ipswich, [FN26] decided in 1615, the court would speak favorably of this exception.
Darcy v. Allin is of considerable interest in the context of the present work because it indicated that a monopoly patent for invention was proper, provided that the term of the patent was "for some reasonable time." [FN27] The opinion also seemed rather to indicate rather clearly that this "reasonable time" was dependent upon the time it took until other "subjects may learn the same." [FN28] The Clothworkers of Ipswich added an additional premise, however, saying the following:
But if a man hath brought in a new invention and a new trade within the kingdom, in peril of his life, and consumption of his estate or stock, &c. or if a man hath made a new discovery of any thing, in such cases the King of his grace and favour, in recompence of his costs and travail, may grant a charter unto him, that he only shall use such a trade or trafique for a certain time, because at first the people of the kingdom are ignorant, and have not the knowledge or skill to use it: but when that patent is expired, the King cannot make a new grant thereof: for when the trade is become common, and others have been bound apprentices in the same trade, there is no reason that such should be forbidden to use it. [FN29]
*324
(Cite as: 7 J. Intell. Prop. L. 315, *324)
This suggested that the term of the patent involved two different considerations, one being the opportunity of the patentee to recover costs (and presumably some reasonable profit) and the other being the public benefit accrued by precluding an extension or renewal of the term after "the trade is become common, and others have been bound apprentices in the same trade. . . ." [FN30] As will be seen, the tension between these two premises would continue when the United States patent law came into being.
Thus by the early seventeenth century, it had been established at common law that under the royal prerogative the crown had discretion to issue monopoly patents for invention for limited periods. Two reasons were typically given for the monopoly grant: (a) to introduce new trade and industry into the realm, and (b) to serve as a means of recompensing the patentee for the costs and risks associated with the enterprise. Although an early British textbook on patent law states that prior to the Statute of Monopolies the term of the patent grant was twenty-one years, in reality it varied widely from as short as four years to as long as thirty-one years. [FN31]
In issuing monopoly patents, James I followed much the same practice as Elizabeth I with very much the same result-a hue and cry against the odious monopoly. He sought to defuse the situation in much the same way that she did, i.e., by promising to let the common law courts determine the validity of the monopoly grants. A critical distinction was that she was a popular queen whom he could never hope to emulate, and whereas her Parliaments expressed concern about the improper granting of monopoly patents, his became downright mutinous on the subject. What she effectively prevented, he ultimately caused-the legislation enacted in 1623 that became famous as the Statute of Monopolies. [FN32]
Although the Statute declared as contrary to the law of the realm and utterly void all monopolies, grants, licenses, and letters patent of or for the sole buying, selling, making, working, or using of anything within the realm, it also contained a number of specified exceptions to this general mandate. One of these was contained in section 6 which stated that
*325
(Cite as: 7 J. Intell. Prop. L. 315, *325)
[A]ny declaration before mentioned shall not extend to any letters patent and grants of privilege for the term of fourteen years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures, which others at the time of making such letters patent and grants shall not use, so as also they be not contrary to the law, nor mischievous to the State . . . [t]he said fourteen years to be accounted from the date of the first letters patents, or grant of such privilege hereafter to be made, but that the same shall be of such force as they should be, if this Act had never been made, and of none other. [FN33]
This section would provide the only statutory basis for the English patent law for more than two hundred years.
The Statute gave the crown discretion to issue monopoly patents for invention for any term of fourteen years or less. As a practical matter, patents were thereafter issued with a term of fourteen years. There are several interesting aspects to this term limitation. Clearly, Parliament accepted the argument that monopoly patents for invention were in the public good, but it also determined that they should be for a finite term that was substantially less than the predominant term of twenty-one years for the patents of James I. [FN34] In addition, the crown was given no authority to renew or extend the term of a patent. Implicit in the language authorizing monopoly patents for invention was the assumption that fourteen years would be sufficient to accomplish the purpose of the monopoly, regardless of whether it was to introduce and encourage the working of the invention within the realm or whether it was to recompense the inventor for expenses incurred and risks taken.
The extant historical record does not indicate exactly what the basis for the fourteen-year term was, but a contemporaneous exposition of the meaning to be attributed to section 6 was given by Lord Coke in his Institutes of the Laws of England, published in 1644. According to Coke, a valid patent for invention had to have seven specific properties, the first of *326
(Cite as: 7 J. Intell. Prop. L. 315, *326)
which was that the term not exceed fourteen years. [FN35] If these seven properties were present,
the reason wherefore such a privilege [i.e., that of the patent grant] is good in law is, because the inventor bringeth to & for the Commonwealth a new manufacture by his invention, cost and charges, and therefore it is reason [able], that he should have a privilege for his reward (and the encouragement of others in the like) for a convenient time . . . . [FN36]
Thus, Coke's first requisite property derives from the fact that a convenient time was determined to be not more than fourteen years.
The reason for this term is not found in the contemporaneous record, although it has been suggested that it was chosen because it was double the term of apprenticeship then set by statute in England. [FN37] It is more likely that the term of not more than fourteen years was chosen as a compromise between those who wanted a shorter term and those who argued for something on the order of twenty-one years which was a frequent term of the royal patents issued by James I. In this regard, it should be noted that the bill which in much amended form became the Statute of Monopolies was originally drafted by Lord Coke. In its original form, it contained no exception for patents of invention to the general ban on monopolies. [FN38] When a proviso was added excepting out patents for new inventions from the ban, it seems to have contained a condition that such patents could only be "for the term of eleven years or under." [FN39] How this became fourteen years or less in the final bill is unclear, but it undoubtedly was a product of a process of negotiation between those favoring a longer term and those favoring a shorter one.
*327
(Cite as: 7 J. Intell. Prop. L. 315, *327)
A prominent English commentator on the patent law states that "[t]he statutory limitation of the term of the grant to fourteen years . . . was avowedly based upon the consideration that the patent should not operate in restraint of trade." [FN40] At the time, however, that was exactly what Lord Coke thought it would do, because in his view it would preclude one apprenticed in the new manufacture from the free practice of his trade once the apprenticeship was completed. As a consequence, he favored a term limitation of seven years. [FN41] Regardless of the rationale for choosing the term of fourteen years, it is apparent that the intent was to permit the invention to go into use by the public once the term expired.
While it was clear that the Statute of Monopolies limited the authority of the sovereign to the grant of a term of no more than fourteen years, no such constraint was placed on Parliament. In the second half of the eighteenth century, it became increasingly common for patentees and their assignees to seek extensions of the patent term and to have Parliament enact special legislation to extend the term of particular patents. Indeed, assignees and licensees not infrequently sought to make term extension a condition of the assignment or license. To accomplish this, political connections and lobbying skill were required, as well as a fair sum of money.
Parliamentary term extensions varied in length but typically were on the order of four to seven years. [FN42] The most famous British patent of the eighteenth century, issued to James Watt in 1769, received a twenty-five year parliamentary extension in 1775 so that its total term was thirty one years. This was an exceedingly long term by English standards, and it is useful to briefly explore how it came about and what justification was given for it.
Watt's invention of the separate condenser for a steam engine in 1765 seems to have been little influenced by the existence of the British patent custom. Watt invented in order to solve a perplexing and interesting technical problem and not for the purpose of enriching himself through *328
(Cite as: 7 J. Intell. Prop. L. 315, *328)
patent rights arising from his invention. [FN43] But the commercial development of Watt's steam engine took more than a decade and many thousands of pounds to accomplish. That expenditure and the resultant successful economic development of the engine came about in no small measure because of the twenty-five year extension.
Watt had little personal funds and was required to borrow to finance his steam engine experiments. By the spring of 1768, he had accumulated a debt of over one thousand pounds. At that time, Watt entered into a partnership with Dr. John Roebuck whereby Roebuck agreed to pay off his debts and fund the cost of a patent in return for a two-thirds share in the patented invention. [FN44] Roebuck appeared to have made the application for a patent a condition of his partnership with Watt. [FN45] But Roebuck himself was soon in financial difficulty and contributed little more to the development of the engine than the sums he agreed upon in 1768. Watt was once again reduced to borrowing, and from 1770 to early 1774 spent little or no time on developing the engine. [FN46]
By early 1774, Roebuck was bankrupt and Matthew Boulton came to Watt's rescue. [FN47] Of Roebuck's creditors, only Boulton placed any value on Watt's patent, [FN48] and he was nothing if not entrepreneurial. He took over Roebuck's two-thirds share in the patent, entered into a partnership agreement with Watt to form the firm of Boulton & Watt, agreed to pay Watt a salary of 330 pounds a year plus expenses, and agreed to finance commercial development of the engine, estimated in 1775 to cost an additional 10,000 pounds. [FN49] Boulton saw not only the value of Watt's patent but also the necessity of obtaining a long-term extension of it in order to make the partnership profitable. Indeed, the partnership agreement seemed heavily contingent on the grant of a term extension and was to last only as long as the extended term of the patent, [FN50] which turned out to be until 1800.
*329
(Cite as: 7 J. Intell. Prop. L. 315, *329)
Early in 1775, Watt surrendered his patent, and a bill was introduced in Parliament to extend the term of the patent for twenty five years. After hot debate in the Commons, Parliament passed the Fire Engine Act [FN51] extending the term as requested. The Act stated the justification for the extension as follows:
AND WHEREAS, in order to manufacture these engines with the necessary accuracy, and so that they may be sold at moderate prices, a considerable sum of money must be previously expended in erecting mills, and other apparatus; and as several years, and repeated proofs, will be required before any considerable part of the publick can be fully convinced of the utility of the invention, and of their interest to adopt the same, the whole term granted by the said Letters Patent may probably elapse before the said JAMES WATT can receive an advantage adequate to his labour and invention:
AND WHEREAS, by furnishing mechanical powers at much less expense, and in more convenient forms, than has hitherto been done, his engines may be of great utility in facilitating the operations in many great works and manufactures of this kingdom; yet it will not be in the power of the said JAMES WATT to carry his invention into that complete execution which he wishes, and so as to render the same of the highest utility to the publick of which it is capable, unless the term granted by the said Letters Patent be prolonged. . . . [FN52]
Note that the rationale set forth is twofold; first, that he can be adequately recompensed for "his labour and invention," and second, that he may render his invention "of the highest utility to the publick." In other words, there is both a private and a public justification.
*330
(Cite as: 7 J. Intell. Prop. L. 315, *330)
Nothing in the Act indicates why the extension was for twenty five years which was unusually long. But Boulton was a most effective parliamentary lobbyist [FN53] who managed to direct the examining committee's attention to the fact that Parliament had extended the term of the Marquis of Worcester's steam engine patent for ninety-nine years and that of Captain Savory's steam engine patent for thirty-five years so that his request for a mere additional twenty-five years seemed quite reasonable. [FN54] He carefully refrained from giving the committee any information on whether these earlier patents had been held valid and successfully enforced against infringers. [FN55]
The desirability of giving Watt a thirty-one year patent term has been much debated from the eighteenth century to the present. Assuming that the estimate of 13,000 pounds required to bring the Watt engine to commercial fruition is accurate, then some extension of the term could be justified. [FN56] Some extension was very likely necessary to encourage the substantial investment and effort necessary for commercial success. But even if "Watt's invention . . . has been generally recognized as the key-invention of the Industrial Revolution," [FN57] that is not in and of itself any justification for extending the patent term to thirty-one years. Certainly it permitted both Watt and Boulton to leave handsome estates when they died. [FN58] But was it to the advantage of the public? The evidence suggests that it was not, but rather that it serves as a "justification for the more modest patent terms now normally provided." [FN59]
There were several major disadvantages of the long patent term. First, Boulton and Watt not suprisingly took advantage of it. [FN60] They made a conscious decision not to license the separate use of the condenser. The net result was that those who sought licenses for complete engines paid a very *331
(Cite as: 7 J. Intell. Prop. L. 315, *331)
high premium, or waited a very long time to obtain a Watt engine which was again quite expensive. If one obtained a proper license, all too often a competitor did not, so those who sought to comply with the patent were frequently at a distinct business disadvantage.
Secondly, while the long term gave Watt himself the opportunity to make and patent various improvements, at the same time it discouraged improvements in general. [FN61] In particular, Watt was strongly opposed to high-pressure steam engines for safety reasons, and yet as would ultimately be demonstrated they were the wave of the future. His refusal to build a high-pressure engine incorporating his separate condenser and other patented improvements appears to have materially retarded the development of even more effective steam engines. [FN62]
Over time, it seems Parliament became aware of these concerns. When Watt and Boulton petitioned Parliament in 1799 for a further extension of the term as well as for extension of the terms of the additional patents Watt had received in 1781, 1782, and 1784 (all of which had expired), they sought to justify the extensions on two grounds. First, the development of the steam engine had taken many years of costly experiments. Secondly, because of numerous infringements and legal actions, they had not been able to reap their just financial rewards. Parliament did not buy the argument and declined to act on the petition. [FN63]

b. copyright custom and practice
The rise of copyright is inextricably intertwined with the development of printing. In England copyright began in the same way as patents of monopoly for invention did, as an adjunct of the royal prerogative. Printing was introduced in 1476, [FN64] and as early as 1518 there is a record of royal grant for an exclusive privilege with respect to a printed book which protected the printer against reprinting within the kingdom or importation for a period of *332
(Cite as: 7 J. Intell. Prop. L. 315, *332)
two years. [FN65] This practice continued throughout the sixteenth century [FN66] with Elizabeth I in particular using it as a means of rewarding her favorites at no expense to the crown. These patent grants of printing monopolies with respect to a particular work or class of works were given to printers as well as courtiers or other royal favorites who were obviously not printers in their own right, and who farmed out the privilege to printers, for an appropriate fee of course. Nowhere in these monopoly grants was there any recognition that the author might have property rights with respect to the work being printed.
In the same manner as other patents of monopoly, these printing monopolies came to be looked on with suspicion. They gradually came to be restricted to the printing of books over which the crown claimed control by virtue of its authority as head of both state and church. [FN67] In particular, the rise of printed matter threatened the predominance of the sovereign in both the political and religious arenas. For the first time, a ready avenue was available for the wide dissemination of dissenting views with respect to the existing order. Therefore, it is not surprising that developing a mechanism for the control of printed matter became a matter of some urgency for the crown.
Early in the fifteenth century, a craft guild was formed of those who wrote text letters, and those who served as limners or illustrators, and those who bound and sold books. [FN68] Thereafter, those who made or dealt in books and were associated with this guild came to be known as stationers. In the latter part of the century, the stationers naturally came to be those who bought from the printers the books which they bound and sold. Perhaps not *333
(Cite as: 7 J. Intell. Prop. L. 315, *333)
surprisingly, the printing craft quickly came to be allied with that of the stationers. [FN69]
In 1556, the crown chartered the company of stationers and granted to it general supervision of the trades of printing, binding, publishing, and dealing in books. [FN70] In return for this right of supervision, the stationers agreed to royal censorship, supervision, regulation, and licensing of books to be printed. The stationers' company quickly established a register which recorded the works for which copying rights or privileges had been obtained. Unless a printer or publisher had obtained a printing patent from the crown, the work to be printed had to be registered with the stationers' company. [FN71]
This system of registry would ultimately result in the unintended and certainly unanticipated (at least by the crown) legal consequence of the judicial determination of the common law right of copyright. By registration the printer or publisher got an essentially exclusive copying right which for all intents and purposes gave an incontestable title to the work being copied, i.e., printed. It gave substance to the idea of literary property which came to be known as copyright. The copying right was protected by imposition of penalties for infringement. It could be assigned, sold, settled, given in trust, and had all the various attributes of property. Moreover, since unlike the privilege granted by printing patents the registration almost never carried a time limitation, it came to be regarded as a perpetual form of property. [FN72]
During the seventeenth century, a variety of ordinances and parliamentary acts were passed for the purposes of regulating printed material. While in force these assured control of the stationers' company over the printing, publishing, and booksellers' trades and permitted the registered copying rights to be maintained as monopolies. They tacitly, if not specifically, acknowledged a common law right of property in copyright. [FN73] But the last licensing act expired in 1694, and from then on until 1710 those holding *334
(Cite as: 7 J. Intell. Prop. L. 315, *334)
exclusive copying rights from the stationers' company found themselves essentially in limbo. Furthermore, they were faced with a rising tide of opposition to the monopolies conferred by their exclusive copying rights. Thus, influential members of the book trade and the stationers' company pushed for new legislation. It was not until 1710 that they got it, but when they did so it was not what they had anticipated and hoped for.
The bill that would become the first English copyright statute, the Statute of Anne, [FN74] was first introduced on January 11, 1710. It was entitled "A Bill for the Encouragement of Learning and for securing the property of Copies of Books to the rightful Owners thereof." As introduced, it contained no reference to any limitation on the term of protection for literary property. [FN75] This lack of a term, coupled with the use of the word "securing" in the title, suggested an intent to create a permanent and perpetual property right, which of course was precisely what the booksellers so desperately wanted.
During debate in the House of Commons, there was considerable concern expressed that a perpetual or unlimited term would result in monopoly of the worst sort and an inevitable restraint of trade. As a result, the bill as passed by Commons set the term of protection at fourteen years for new books and twenty one years for books already in print. Rose is persuasive in suggesting that these terms were identical to those provided for patents for invention in the Statute of Monopolies and were likely copied therefrom. He notes that when printing patents and patents for invention first appeared, they were not different inkind and were treated similarly. If the bill truly intended to treat copyright by analogy with patents, then there was a clear implication that the right to copy was not property at all, but rather a privilege emanating from the royal prerogative. The issue would then become one of why a literary invention was different from a mechanical invention, i.e., why should authors be treated differently than inventors? [FN76] This, of course, is an issue that continues to be debated to this day.
Given the decision to limit the term of copyright, it is perhaps not surprising that the title of the bill was changed in an effort to avoid any *335
(Cite as: 7 J. Intell. Prop. L. 315, *335)
impression that an extant right was being confirmed, but rather to emphasize that a new right was being created. It then became "A Bill for the Encouragement of Learning by Vesting the Copies of Printed Books in the Authors, or Purchasers, of such Copies, during the Times therein Mentioned" and that, with minor grammatical changes, became the title of the Statute of Anne. Unfortunately, the term "securing" continued to appear in the preamble to the second section so that proponents of perpetual copyright would seize on the inconsistency in arguing their cause. [FN77]
Limiting the term of copyright was not a happy thought for the booksellers, and they immediately filed a petition with Parliament, wherein they stated:
But it is said, That it is sufficient for us to enjoy a Term of Years in our Sole Right of Printing. To this we answer, That if we have a Right for Ten Years, we have a Right for Ever. A Man's having possess'd a Property for Ten or Twenty years, is in no other Instance allow'd, a Reason for another to take it from him; [FN78] and we hope it will not in Ours. [FN79]
Perhaps as a sop to the booksellers, or perhaps because they felt the proposed copyright term of fourteen years was too short, the House of Lords amended the bill to provide for a single fourteen-year term of renewal if the author was still living at the end of the first term. This language became a part of the Statute of Anne. [FN80]
One of the more remarkable aspects of the Statute of Anne was that it was styled "An act for the encouragement of learning. . . ." Never before had copyright been declared to be for this purpose, either by the crown or by the stationers. Where, then, did this purpose originate? The preamble to the bill which became the Statute justified it by stating that piracy of printed works "is . . . a real discouragement to learning in generll [sic] which in all Civilized Nations ought to receive ye greatest Countenance and *336
(Cite as: 7 J. Intell. Prop. L. 315, *336)
Encouragement. . . ." [FN81] The preamble to the Statute itself says merely that it is for the purpose of preventing piracy "and for the encouragement of learned men to compose and write useful books." [FN82] Nothing in the parliamentary debate indicates why the emphasis on the encouragement of learning came about. Moreover, the petitions presented to Parliament during the debates make "no reference to, or even tacit support of, the encouragement of learning." [FN83] Rose, however, states that the "priority given to the encouragement of learning" was a direct result of a series of articles published in 1709 by Daniel Defoe and Joseph Addison arguing that the rights of authors had to be protected. [FN84] But irrespective of who was responsible for it, this justification for copyright quickly found favor with Parliament and would ultimately find its way into the Intellectual Property Clause.
Regardless of its title, more than anything else, the Statute of Anne was a trade-regulation statute, aimed at controlling and limiting the rampant monopolies then extant in the booksellers trade. Its purpose was to act "in the interest of society by preventing monopoly, and in the interest of the publisher by protecting public works from piracy." [FN85] Although there is nothing to indicate that Parliament literally intended it as such, it would ultimately come to be judicially interpreted as providing for an author's right. It was in the context of this interpretation that it would serve as an antecedent, along with the Statute of Monopolies, for the Intellectual Property Clause.
One immediate consequence of the Statute was that "the traditional character of the stationers' copyright was radically altered by the introduction of a limited term." Not surprisingly, the stationers and the booksellers strongly argued against the concept of a limited term, [FN86] and:
*337
(Cite as: 7 J. Intell. Prop. L. 315, *337)
When the issue of limiting the term of protection arose, the booksellers objected that, if they had a property in their copies, they had it forever. This assertion rested on the claim that theirs was a common law right based on ancient trade practice. Thus the question of whether a limited term was compatible with a common law right was introduced. [FN87]
But almost six decades would pass before a common law court would specifically be called upon to answer the twin questions of whether authors or their assigns retained a perpetual property right at common law in their writings after their publication and what effect the Statute of Anne had on any such property right. [FN88] The case was Millar v. Taylor, [FN89] decided in 1769. But before reviewing that case, it is useful to briefly review why these issues were before the court.
Simply put, the stationers' company had acted so effectively to protect copyright over the long years that its registration system was in effect, that protection afforded by registration had come to be perceived as a form of property. [FN90] Indeed, the power of the stationers to protect the rights afforded by registration had been recognized repeatedly by both crown ordinance and parliamentary act through almost all of the seventeenth century, such that there was arguably a good ground for holding that a right of copyright existed at common law. [FN91]
The right to copy also arose from royal patents granting an exclusive right to print. These patents were dependent on the royal prerogative which *338
(Cite as: 7 J. Intell. Prop. L. 315, *338)
conferred a privilege and not a common law property right as such. The issue was further complicated by the fact that, as a practical matter, both the rights gained by registration and by patent were routinely sought to be protected in the early part of the seventeenth century by the courts of High Commission and Star Chamber, [FN92] and in the latter part of the century by the remedies provided under the licensing acts. This recourse to other than common law remedies [FN93] gave rise to the view that copyright was not so much a property right recognized at common law, as it was a right dependent upon royal grant exercised directly in favour of a patentee, or indirectly through the powers conferred by the crown upon the company.
During the seventeenth century, almost all the copyright cases reported turned on the rights of royal patentees. As a result, the right was treated rather straightforwardly by the courts as dependent on the royal grant. But the fact that there were no reported cases of common law actions for infringement of copyright prior to the Statute of Anne [FN94] is not conclusive that such a remedy was not perceived to exist, but merely of the fact that more convenient remedies were available.
Be that as it may, by 1760 when Tonson v. Collins was argued but not decided, [FN95] the debate on the meaning of copyright had become inextricably intertwined with more fundamental arguments concerning property itself. As has been nicely summarized:
The gradual exploration of the meaning of the concept of copyright was therefore caught up in a wider debate about *339
(Cite as: 7 J. Intell. Prop. L. 315, *339)
the nature of property itself. On the one hand, there was the prevalent view that property was a natural right, partially ceded to the state, which could be created and, having been created, existed in perpetuity. On the other, there was the view that all property derived from the Crown, and was therefore subject to the authority of the Crown and its agents, including laws made by the Crown-in- Parliament. [FN96]
However, the question remained: which concept of property would be controlling with respect to defining copyright?
The facts of Millar v. Taylor were straightforward. Millar had been assigned the copyright to a particular book, printed two thousandcopies, and placed them on sale. Taylor, at the expiration of the statutory copyright term, proceeded to print and sell the same book. Millar argued at trial that
[t]here is a real property remaining in authors, after publication of their works; and . . . they only, or those who claim under them, have a right to multiply the copies of such their literary property, at their pleasure for sale . . . this right is a common law right, which always has existed, and does still exist, independent of and not taken away by the statute. [FN97]
A majority of the four judge panel, including Lord Mansfield, held that a perpetual property right based on common law existed. Mansfield dismissed the Statute of Anne with the remark that "[w]e are considering the common law, upon principles before and independent of that Act." [FN98] For the first time, he used the phrase "incorporeal substance" to describe the property right found in copyright. He went on to state that "it is just that an author should reap the pecuniary profits of his own ingenuity and labour; it is just that another should not use his name without his consent." [FN99]
*340
(Cite as: 7 J. Intell. Prop. L. 315, *340)
Just or not, five years later in Donaldson v. Becket, [FN100] the House of Lords decided that whatever may have been the case originally at common law, the Statute of Anne effectively limited the term for which copyright could be enforced at common law to a maximum of twenty-eight years. During the debate in Donaldson Lord Chief Justice De Grey could not accept the argument made by Mansfield in Millar v. Taylor that a perpetual property right should exist because it was just that it exist. According to De Grey, "[t]his idea of moral fitness is indeed an amiable principle and one cannot help wishing all claims derived from so pure a source might receive all possible encouragement." But "[b]eautiful as it may be in theory, to reduce it into the practice and execution of the common law would create intolerable confusion; it would make laws vain, and judges arbitrary." [FN101]
To this day, what was actually decided in Donaldson remains a subject of considerable dispute among scholars and commentators. On a very pragmatic level, the House of Lords did "no more than to declare that copyright henceforth would be limited in term." [FN102] But there were other questions of significant interest raised by the case, to wit:
But on what basis did the peers make their determination? What understanding of the nature of copyright did they adopt? Were they persuaded that there never was a common-law right? Or did they believe that there was but that it ended with publication? Or that it was taken away by the statute? [FN103]
One commentator suggests that although the law lords did indeed discuss the principles involved, they couched their holdings in terms of precedent and *341
(Cite as: 7 J. Intell. Prop. L. 315, *341)
not whether an inherent or natural law right ought to prevail. [FN104] A second commentator in turn, argues that the lords "grounded their decision on the position that copyright had never existed as a right at common law." [FN105] A third commentator says merely that: "In general, all agreed that the 1710 Act superseded whatever common law might have existed before that time." [FN106]
Of more immediate interest for the purpose of the present work is the manner in which Donaldson was perceived in the following decades when the Constitution was drafted and American copyright law came into being. To understand this perception, it is useful to look at the facts of the case as well as how it was reported. Although not technically so, Donaldson was in effect an appeal of the determination in Millar v. Taylor. Millar had sold his copyright at issue in Millar v. Taylor to Becket who had had it pirated by Donaldson. Becket immediately obtained an injunction against Donaldson, and the latter appealed to the House of Lords. [FN107]
The manner in which the House of Lords functioned at this time as a court of last resort has been set forth as follows:
In 1774 the House of Lords decided cases by a general vote of the peers, lawyers and laymen alike. Great weight was usually given to the opinions of the lawyers, but the practice of lay peers not being recognized when the House of Lords set as a court had not yet been instituted. In important cases such as Donaldson v. Becket, however, the twelve common-law judges of the realm-the judges of King's Bench, Common Pleas, and the Exchequer-would be summoned to the House to hear the arguments of counsel and to give their advice on matters of law, after which the peers would debate the issue and vote. [FN108]
This was exactly what occurred in Donaldson. The common law judges were asked to answer five specific questions posed by the peers, to wit:
*342
(Cite as: 7 J. Intell. Prop. L. 315, *342)
1. Whether at common law, the Author of any Literary composition had the sole first Right of printing and publishing the same for Sale, and could bring an Action against any Person for publishing the same, without his consent?
2. If the Author had such right originally, did the Law take it away upon his printing and publishing the said literary composition, or might any Person reprint and publish the said literary composition, for his own Benefit, against the Will of the Author?
3. If such Action would have laid at Common Law, is the same taken away by the Statute of Anne? Or is an Author precluded by such Statute from any Remedy, except on the foundation of such Statute?
4. Whether the Author of any literary Composition, or his assigns, had the sole Right of printing and publishing the same in perpetuity by the Common Law?
5. Whether this Right is in any way impeached, restrained or taken away by the 8th of Anne? [FN109]
Eleven of the judges answered these questions. Mansfield, who was both a common law judge and a peer, declined to do so. However, because of the position he had taken in Millar v. Taylor, it was generally assumed that he would have answered them in a manner favoring a common law right in perpetuity. [FN110]
Perhaps it was to be expected that the judges would split in their views. On the first question of whether a common law right existed, eight voted affirmatively. On the second question as to whether publication adversely affected the right, seven answered affirmatively. On the third question, there is some confusion in the record. Both the Journal of the House of Lords and the standard historical references indicate that by a slim majority of six to five the judges were of the opinion that the Statute took away the author's right at common law. However, contemporary newspaper reports and other *343
(Cite as: 7 J. Intell. Prop. L. 315, *343)
accounts indicate the vote was six to five the other way, and that the clerk of the House made an error in tallying the votes. [FN111]
Modern commentators give conflicting views on what these answers and the accompanying advisory opinions by the judges meant, although they would undoubtedly all agree with the statement that "[d]etermining the grounds for decision in Donaldson v. Becket is no simple task." [FN112] Thus, Patterson & Lindbergh indicate that based on these opinions, "American courts and commentators assumed that (and have since acted as if) the House of Lords had held that the author had a common law copyright." [FN113] Abrams phrases it somewhat differently, saying that, based on the opinions, "Donaldson has been consistently interpreted as holding that copyright was recognized by the common law, but was 'impeached' or preempted by the Statute of Anne." [FN114] But, according to Feather: "the judges were rather more decisive than some of the more ambiguous responses might suggest. In general, all agreed that the 1710 Act superseded whatever common law might have existed before that time." [FN115] Rose, however, has quite a different perspective, suggesting that "[h]ad Mansfield voted, the tally would have been a substantial seven to five in favor of the common law right surviving the statute." [FN116]
All agree, however, that views expressed by the common law judges were advisory only and not binding in any way on the lords. The decision was by vote of the entire House, and "the floor debate appears to have been very important." [FN117] But the content of that debate was not officially reported, because the reporters were constrained by law from reporting it. [FN118] Thus, the most commonly cited report on the case, i.e., the fourth edition of Burrow's Reports, makes no mention of the debate, but instead reports only the arguments of counsel, the advisory opinions of the common law judges, and the decision against the continuance of the injunction against Donaldson. The issue was further confused by the fact that Burrow appended his report *344
(Cite as: 7 J. Intell. Prop. L. 315, *344)
on Donaldson v. Becket at the end of his much longer and much more detailed report on Millar v. Taylor. [FN119]
There are three accounts extant, however, which do include statements made during the debate by the peers. [FN120] They indicate that five of them actually spoke, with four of them arguing against any common law copyright and one speaking in favor of such a right. For reasons known only to him, Mansfield declined to voice his opinions. When the issue came to a vote, the peers decisively supported a reversal of the Chancery decree upholding the injunction. [FN121] The literal effect was simply to reverse the ruling in Millar v. Taylor, but, as has been rather artfully stated, "when we ask what doctrine, precisely, the Lords preferred to that which had been cast aside, Clio (that coy muse) simply shrugs." [FN122]
What was developed in the years after 1774 was the belief that Donaldson had established that there was indeed a common law property right in copyright, but one which had been merged into and could only be enforced in accordance with the Statute of Anne. [FN123] Be that as it may, based on *345
(Cite as: 7 J. Intell. Prop. L. 315, *345)
perspectives of common law property right in copyright, arguments would be made that there is no logical distinction between literary works and invention, in that both involve the use of the mental facility and the ideas derived from such should result in similar property rights. But the life of the law is not always logic. [FN124] Thus, in Donaldson it was the lack of a common law property right in invention which provided a fixed point in the debate about common law property in copyright. [FN125] Those who argued for such property in perpetuity deemed themselves obligated to distinguish between literary work and invention, whereas those who denied it found themselves arguing that the two were analogous. While two of the law lords were prepared to admit the possibility that "previous to the monopoly statute, there existed a common law right, equally to an inventor and the author of a book," they argued that the only property right that existed after the Statute of Monopolies and once an invention was disclosed to the public was that granted by the crown for a limited time in the form of a patent. [FN126]
With this in mind, Baron James Eyre opined that the "Exactitude . . . of the Resemblance between a Book and any other mechanical Invention" was clear:
There is the same Identity of intellectual Substance; the same spiritual Unity. In a mechanic Invention the Corporation of Parts, the Junction of Powers, tend to produce some one End. A literary Composition is an Assemblage of Ideas so judiciously arranged, as to enforce some one Truth, lay open some one Discovery, or exhibit some one Species of mental Improvement. A mechanic Invention, and a literary Composition, exactly agree in Point of Similarity; the one therefore is no more entitled to be the Object of Common Law Property than the other. [FN127]
*346
(Cite as: 7 J. Intell. Prop. L. 315, *346)
In his view it was plain that the Statute of Anne treated copyrights similarly to patents. Likewise, Lord Camden gave as his opinion that copyrights should not be distinguished from patents in that there was no real difference between authors and inventors, and both were beneficial to society. Because no common law claim could be made for inventors, none should be made for authors. [FN128]
Beginning with Tonson v. Collins and continuing through Donaldson v. Becket, the arguments have been summarized as follows:
First, the proponents of perpetual copyright asserted, the author's natural right to own his creation. Second, their opponents replied that ideas could not be treated as property and that copyright could only be regarded as a limited privilege of the same sort as a patent. Third, the proponents responded that the property claimed was neither the physical book nor the ideas communicated by it but something else, an entity consisting of the style and sentiment combined. [FN129]
As a practical matter, those who argued that a copyright was similar to a patent ultimately prevailed, but this was not immediately apparent in the young United States.
Unlike the situation with the patent term where Parliament not infrequently acted to extend the term, there seems to have been no instance in the eighteenth century after the Statute of Anne was enacted wherein Parliament ever sought to extend the term of a copyright beyond the maximum of twenty- eight years set by the Statute. In England in the eighteenth century there is nothing to indicate that the terms of patents or copyrights were in any way based on the life expectancy of the inventor or author. While the Statute of Anne granted an automatic right of renewal for an additional term, such could only occur if the author was still living at the end of the initial fourteen- year term.

*347

(Cite as: 7 J. Intell. Prop. L. 315, *347)
IV. The Constitutional Convention and Its Immediate Backdrop
At the time the Framers drafted the Constitution in 1787 they were aware of more than merely the British patent and copyright practice which they desired to give Congress the power to emulate. Thus, they were fully cognizant that under the Articles of Confederation, Congress had no power with respect to either patents or copyrights. The problem resided in Article II thereof, which read: "Each State retains its sovereignty, freedom and independence, and every power, jurisdiction and right, which is not by this confederation expressly delegated to the United States, in Congress assembled." [FN130]
The use of the term "expressly" in Article II was what made it so supremely restrictive of the authority of the national government, i.e., "the United States, in Congress assembled." For by the literal language of Article II, if a power, jurisdiction, or right was not expressly delegated to Congress, that authority could not be exercised by it. It was for this reason that the Continental Congress never attempted to legislate with respect to patents or copyrights or to grant any form of exclusive rights to inventors in their inventions or authors in their writings. The power to do so was simply not delegated to Congress by the Articles.
If the Continental Congress had no power to legislate with respect to or grant patents and copyrights, it could recommend that the individual states take action in such regard. While it never presented any recommendations concerning patents, it did resolve on May 2, 1783:
That it be recommended to the several states, to secure to the authors or publishers of any new books not hitherto printed, being citizens of the United States, and to their . . . executors, administrators and assigns, the copyright of such books for a certain time, not less than fourteen years from the first publication; and to secure to the said authors, if they shall survive the term first mentioned, and to their . . . executors, adminstrators and assigns, the copyright of such books for another term of time not less than *348
(Cite as: 7 J. Intell. Prop. L. 315, *348)
fourteen years, such copy or exclusive right of printing, publishing and vending the same, to be secured to the original authors, or publishers, or . . . their executors, administrators and assigns, by such laws and under restrictions as to the several states may seem proper. [FN131]
Perhaps the most striking feature of this congressional resolution is that it recommends a floor of at least fourteen years for the term of the copyright but suggests no ceiling whatever. Apparently, insofar as the Continental Congress was concerned, there was no objection if a state wanted to issue a copyright in perpetuity; the concern was that the copyright term not be too short, rather than that it might be too long. This is a significant distinction from what would be incorporated into the Constitution four years later, namely, the power to enact laws securing to writers the exclusive right to their works "for limited times."
The resolution says not a word about any justification for copyright. But a March 10, 1783 resolution creating the committee that proposed it stated the purpose of the committee to be "to consider the most proper means of cherishing genius and useful arts through the United States by securing to the authors or publishers of new books their property in such works." [FN132] The committee presented its recommendation resulting in the resolution to the states after "being persuaded that nothing is more properly a man's own than the fruit of his study, and that the protection and security of literary property would greatly tend to encourage genius, to promote useful discoveries and to the general extension of arts and commerce." [FN133]
The committee language is of interest both for what it says and for what it does not say. It clearly seems to adopt the natural law view that writers have an inherent property right in their works. It also seems to confuse the role of copyrights and patents in assuming that copyright will in and of itself "promote useful discoveries." But it says nothing about the promotion of learning, which was stated to be a primary purpose of copyright in the *349
(Cite as: 7 J. Intell. Prop. L. 315, *349)
Statute of Anne. Nor does it make any reference to copyright being a common law property right.
The May 2, 1783 resolution is limited to copyright and says nothing about letters patent for invention. Yet the remarkable thing about the committee language quoted above is that if the phrase "literary property" were replaced with "property in invention," it would have provided an equally admirable justification for a congressional recommendation that the states protect the rights of inventors "by such laws and under such restrictions as the several states may deem proper." Obviously, this did not occur, possibly because of a mistaken belief that copyright would encourage discovery and protect property rights in invention. More likely, however, inventors had at this point in time made no concerted effort to seek protection of supposed property rights in their inventions, whereas "sundry papers and memorials from different persons on the subject of literary property" had been submitted to the Continental Congress by early 1783. [FN134]
Between the beginning of 1783 and the close of 1786 twelve states enacted general copyright statutes, [FN135] although the suggestion has been made that these statutes apparently never became operative. [FN136] As a practical matter, all the states adopting copyright statutes limited the term to either that set forth in the Statute of Anne or set a fixed term of twenty or twenty-one years. No state was disposed to view copyright as creating a perpetual property right.
The Massachusetts statute had an eloquent preamble which, by today's standards, could fully as well have served as a justification for a patent statute. [FN137] It read:
Whereas the Improvement of Knowledge, the Progress of Civilization, the public Weal of the Community, and the Advancement of Human Happiness, greatly depend on the Efforts of learned and ingenious Persons in the various Arts *350
(Cite as: 7 J. Intell. Prop. L. 315, *350)
and Sciences: As the principal Encouragement such Persons can have to make great and beneficial Exertions of this Nature must exist in the legal Security of the Fruits of their Study and Industry to themselves; and as such Security is one of the natural Rights of all Men, there being no Property more peculiarly a Man's own than that which is produced by the Labour of his mind. [FN138]
This same preamble was copied into the acts of Rhode Island and New Hampshire. [FN139] The preamble to North Carolina's act expressed similar sentiments although more succinctly. [FN140] But neither Massachusetts nor any other state enacted a general patent statute assuring the right of inventors to obtain exclusive rights in their inventions for some limited period of time.
One state, however, did address the issue, but did so in the context of its copyright statute. In 1784, South Carolina enacted a copyright law which contained the following clause: "The Inventors of useful machines shall have a like exclusive privilege of making or vending their machines for the like term of fourteen years, under the same privileges and restrictions hereby granted to, and imposed on, the authors of books." [FN141] It is unclear whether the fourteen-year term was taken from the Statute of Monopolies or from the Statute of Anne. [FN142]
Whereas the general legislative enactments, with the exception of that of South Carolina, were limited to copyright, after the end of the Revolutionary War various states began to grant patents to inventors for their *351
(Cite as: 7 J. Intell. Prop. L. 315, *351)
inventions through private laws and acts. [FN143] It is difficult to know exactly how many state patents were actually granted, but the number is unlikely to have exceeded forty. [FN144] The terms of these state patents varied from five years to twenty-one years, with the term increasingly being fourteen years, apparently patterned after the British practice. [FN145] Clearly, the states had determined to limit the term of any patent grant in much the same fashion as had occurred in Great Britain and for many of the same reasons.
In 1787 the Framers were undoubtedly aware of both the state enactments concerning copyright and the state practices regarding the issuance of patents. These practices and enactments, along with the British practice, were part of the immediate backdrop to the constitutional convention. As evidenced by the ultimate content of the Intellectual Property Clause, they were quite prepared to give Congress power to act with respect to patents and copyrights, but at least initially this deference was not high on their list of priorities. [FN146] It was not until August 18, 1787 that the proposals which would ultimately be transformed into the Intellectual Property Clause were presented to the convention.
*352
(Cite as: 7 J. Intell. Prop. L. 315, *352)
On that date, the Journal of the Convention lists twenty additional powers "proposed to be vested in the Legislature of the United States," which include the following:
To secure to literary authors their copy rights for a limited time; To encourage, by proper premiums and provisions, the advancement of useful knowledge and discoveries; To grant patents for useful inventions; To secure to authors exclusive rights for a certain time; [and] To establish public institutions, rewards, and immunities for the promotion of agriculture, commerce, trades, and manufactures. [FN147]
Madison's Notes indicate that he and Charles Pinckney presented these proposals. [FN148]
Several aspects of the proposals relating to patents and copyrights are of interest. First of all, the reference to "patents" clearly indicates an intent to give Congress power to emulate and follow the British practice of granting limited-term exclusive rights to inventors in their inventions. [FN149]Secondly, unlike in the context of copyright, there is no specific reference to either "a limited time" or " a certain time" as the term of a patent. The reason for this is that, unlike the case with copyright, there was no uncertainty as to whether the patent term was limited. The Statute of Monopolies clearly indicated that it was limited, [FN150] and there was thus no need to specifically require a limited time as long as there was a specific reference to "patent." *353
(Cite as: 7 J. Intell. Prop. L. 315, *353)
But it was unclear to the Framers whether there was in fact a perpetual common law property right in copyright or whether the Statute of Anne had limited the copyright term as set forth therein. What is clear is that both Pinckney and Madison did not want a perpetual copyright term but rather wanted something along the lines set forth in the Statute of Anne, that is to say, a limited term. [FN151]
There is nothing to indicate how the August 18th proposals by Madison and Pinckney were transmogrified into the Intellectual Property Clause. Madison obviously knew, but never said, although it is quite likely that he authored it. [FN152] To aid in understanding the clause, it is useful to turn to its grammatical form because the aesthetics of the form may have, in no small measure, influenced the actual language used. The clause is generally taken as an example of the balanced style of composition much favored in the eighteenth century, [FN153] and generally viewed as "a consolidation of two proposals which got packaged together." [FN154] The manner in which the term "respective" is used in the clause lends credence to this interpretation. [FN155] What is common to a balanced composition of the clause are the terms "promote," "progress," "securing," and "limited times." The usual interpretation is that Congress is given two separate powers involving the common use of these terms. In this view, it is given power (1) "to promote the progress of science . . . by securing for limited times to authors . . . the exclusive right to their . . . *354
(Cite as: 7 J. Intell. Prop. L. 315, *354)
writings," and (2) "to promote the progress of . . . useful arts by securing for limited times to . . . inventors the exclusive right to their . . . discoveries." [FN156] The balanced composition of the clause explains why the terms "patents" and "copyrights" do not appear therein. [FN157]
A careful comparison of the actual language of the clause with the proposals submitted August 18th by Madison and Pinckney suggests that the conventional wisdom is wrong, and that the clause is actually a consolidation and incorporation of three separate and distinct proposals presented by Madison and Pinckney. The reference to securing to authors for limited times an exclusive right to their writings incorporates the essentially identical proposals first from Madison to secure to literary authors their copyrights for a limited time and second from Pinckney to secure to authors exclusive rights for limited times. The reference to securing to inventors for limited times an exclusive right to their discoveries incorporates Pinckney's proposal to grant patents for useful inventions. This much is generally accepted. What is not generally recognized is that the clause incorporates a third proposal, namely, Madison's proposal to encourage by premiums and provisions the advancement of useful knowledge and discoveries. This is closely similar to the actual language used, i.e., to promote the progress of science and useful arts. Clearly, this proposal by Madison is much broader in scope than the proposals to provide for patents and copyrights, and the incorporation of language closely analogous to it [FN158] in the clause suggests that *355
(Cite as: 7 J. Intell. Prop. L. 315, *355)
the Framers viewed the clause as providing more than merely power to grant patents and copyrights. [FN159]
The final draft of the Constitution appears on its face to have a last minute correction indicating a change of heart by the Framers concerning the meaning of "for limited times" in the Intellectual Property Clause. As originally written in the September 17th draft the clause contained the phrase "for a limited time." This was corrected by drawing a line through the "a" and adding an "s" to "time" by a caret with the "s" above it. The impression is left from the document itself that this change was intended to give Congress authority to extend the term of the grant beyond that originally set. [FN160] A look at the language of the clause as initially proposed on September 5th and incorporated into the Constitution on September 12th indicates, however, that the change was made to correct a typographical error in the final draft and to render the language consistent with that which had been earlier approved. Thus, no attempt was made to broaden the meaning of "limited time" at the close of the proceedings, even though the final draft may give such an impression. [FN161]
Although nothing in the contemporaneous record indicates why the Framers adopted the phrase "for limited times," it can only be assumed that their intent was to give Congress some flexibility in setting both the patent and copyright term, while at the same time assuring that neither the patent grant nor the copyright grant could be in perpetuity. They likely took it for granted that Congress would set the term of the exclusive right along the lines followed in the British practice with respect to both patents and copyrights. [FN162] In any case, they determined that ultimately the subject matter of both the patent grant and the copyright grant must become a part of the public domain.
The Framers must be presumed to have been aware of the British practice of granting patent term extensions and of the term renewal for copyright *356
(Cite as: 7 J. Intell. Prop. L. 315, *356)
authorized in the Statute of Anne. It can safely be assumed that by using the phrase "for limited times" they contemplated that Congress should have similar authority. Thomas Jefferson certainly assumed this to be the case and did not like it at all. Thus, in August 1789 he informed Madison that he preferred a provision in the proposed Bill of Rights stating: "Monopolies may be allowed to persons for their own productions in literature and their own inventions in the arts for a term not exceeding-years but for no longer term and no other purpose." [FN163] Such language would clearly have precluded term extension and term renewal. Jefferson also assumed that Congress had discretion in setting the term of patents and copyrights. Thus only a month later in September 1789, for reasons peculiarly his own, he asked Madison to seek to have the patent and copyright term in the new United States law be longer than that set forth in the contemporaneous British practice "by securing the exclusive right for 19. instead of 14. years." [FN164]

V. Powers and Limitations

The phrase "for limited times" is clearly a limitation on the power to grant exclusive rights to authors and inventors in their writings and discoveries. There is clearly some term of the grant beyond which Congress cannot constitutionally proceed. But what is it and how is it to be determined? The Supreme Court has addressed the meaning to be given to "for limited times" only in an indirect sense. In 1829 in Pennock v. Dialogue, [FN165] Justice Story referred to this language, saying: "It contemplates . . . that this exclusive right shall exist but for a limited period, and that the period shall be subject to the discretion of [C]ongress." [FN166] In more recent times, the Court has stated that "Congress may not create patent monopolies of unlimited duration. . . ." [FN167]
Nonetheless, the discretion afforded to Congress with respect to the patent and copyright term is not unbounded, and Justice Story does not *357
(Cite as: 7 J. Intell. Prop. L. 315, *357)
provide support for any view that courts may not interpret the meaning to be given to "for limited times." In Pennock, he made the following point:
The words of our statute [FN168] are not identical with those of the statute of James, [FN169] but it can scarcely admit of doubt, that they must have been within the contemplation of those by whom it was framed, as well as the construction which had been put upon them by Lord Coke. [FN170]
Although these words refer to the language of the patent statute, there is little doubt but that they are fully applicable to the language of at least the patent provision of the Intellectual Property Clause. It is thus useful to recall what Lord Coke had to say about the patent term as set forth in the Statute of Monopolies. He argued that the patent privilege was proper as long as it was for "a convenient time" [FN171] which he perceived as the time required to bring a "new manufacture" into free practice in the realm. [FN172] Simply put, in interpreting the patent term Story agreed with Coke that it should be interpreted as providing a term adequate to encourage the social progress at the root of the patent system, [FN173] but no longer.
In his Commentaries, published four years after his Pennock opinion, Story made the point clear with regard to both the patent and the copyright term by his statement that short terms are beneficial in that they "admit the people at large, after a short interval, to the full possession and enjoyment of all writings and inventions without restraint" (emphasis added). [FN174]
In the context of the copyright provision, the Supreme Court in 1975 in Twentieth Century Music Corp. v. Aiken emphasized that:
The limited scope of the copyright holder's statutory monopoly, like the limited copyright duration required by *358
(Cite as: 7 J. Intell. Prop. L. 315, *358)
the Constitution, reflects a balance of competing claims upon the public interest: Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts. [FN175]
In so stating, the Court noted that Lord Mansfield's statement of the problem, now more than 200 years ago, bears repeating:
[W]e must take care to guard against two extremes equally prejudicial; the one, that men of ability, who have employed their time for the service of the community, may not be deprived of their just merits, and the reward of their ingenuity and labour; the other, that the world may not be deprived of improvements, nor the progress of the arts be retarded. [FN176]
The views expressed by the Court in Aiken are remarkable in several respects. First of all, they accept the ideas that were becoming prevalent in England at the time the Constitution was drafted, namely, that there are two separate and competing rationales for both the patent and the copyright systems and that the patent and copyright terms are derived from a balancing of the tensions between these two competing justifications. The first justification, which emphasizes the public interest, may broadly be called the "social benefits" rationale, and the second, which emphasizes the interest of the inventor or author, can be divided into two categories, the "inherent property right" rationale and the "reward for genius" rationale. Secondly, the Court assumed without any citation of authority that these competing rationales were also the justifications for-and indeed the purposes of-the Intellectual Property Clause.
In so doing, the Court made no reference whatever to the language of the clause taken as a whole. Even a cursory look indicates that its purpose is "to promote the progress of science and useful arts." Nothing in it states that creating a property right or rewarding genius is its purpose. Yet from the *359
(Cite as: 7 J. Intell. Prop. L. 315, *359)
earliest days of the republic this has been assumed to be a purpose, if not the primary purpose, of the clause. Such an assumption, however, appears to confuse the means with the end and appears at odds with the literal language of the clause. Thus, the purpose is clearly stated to provide benefits for society by promoting the progress of science and useful arts. No other purpose is set forth. A means for achieving the stated purpose is expressly stated to be creation of limited-term exclusive rights in authors and inventors. While this means may also be viewed as an incentive or reward for the creations of genius, i.e., inventions or writings, the clause does not in any way state that providing such incentive or reward is the purpose of the grant of authority to Congress. [FN177]
Be that as it may, in the context of defining a constitutional boundary for the term of patents and copyrights, which justification for the limited-term exclusive right is accepted as paramount in no small measure determines what length of term will be considered to be constitutionally acceptable. Thus, e.g., if the "social benefits" rationale is considered more important, then "limited times" should be interpreted to be that length of term which provides an appropriate incentive to authors and inventors "to promote the progress of science and useful arts" but is not so long that this purpose ceases to be met or is actually deterred. In this view, ultimate removal of the writing or invention into the public domain is the more critical factor, and long copyright and patent terms will be considered constitutionally suspect. Alternatively, if "reward for genius" is considered the more important rationale, then there is a pronounced tendency to lengthen the term of patents and copyrights to better assure that the "reward" will actually occur. Long terms will not be constitutionally suspect, and the property interest of authors and inventors becomes more important than the public interest in promoting the progress of science and useful arts.
A basic issue in determining the upper bounds of constitutionally permissible patent and copyright terms is the extent, if any, to which the stated purposes of the Intellectual Property Clause act as a limitation on the *360
(Cite as: 7 J. Intell. Prop. L. 315, *360)
discretion of Congress to set patent and copyright terms. While not specifically addressing this issue, certain commentators have argued that the statement of purpose in the clause does not create any limitation on the power of Congress to act with respect to patents and copyrights. Thus, e.g., Nimmer and Nimmer in the copyright context state "the phrase 'To promote the progress of science and useful arts . . .' must be read as largely in the nature of a preamble, indicating the purpose of the power but not in limitation of its exercise." [FN178] The only authority cited for this view is Jacobson v. Massachusetts, wherein the Supreme Court stated only that the Preamble to the Constitution itself "has never been regarded as the source of any substantive power conferred on the Government of the United States or on any of its Departments." [FN179] But the Intellectual Property Clause is in fact a substantive grant of power to Congress, and the introductory portion thereof may not be read out of it and rendered meaningless.
In the patent context, Burchfiel has presented a similar argument, contending that in interpreting several other enumerated congressional powers the Supreme Court has rejected the view that a statement of purpose should be construed to express an implied limit on congressional exercise of the power. [FN180]But in each example he cites, the Court has not held that the statement of purpose places no restriction on the exercise of the particular congressional power. Rather in each instance, the Court adopted an expansive definition of purpose, rather than holding that the purpose places no limitation on the exercise of the particular power.
Moreover, from early in the republic the Court has accepted the view that a statement of purpose is highly relevant in construing the nature and extent of powers granted to Congress. Thus, e.g., in 1824 in Gibbons v. Ogden Chief Justice Marshall stated:
As men, whose intentions require no concealment, generally employ the words which most directly and aptly express the ideas they intend to convey, the enlightened patriots who framed our constitution, and the people who adopted it, must be understood to have employed words in their natural sense, and to have intended what they have said. If, from the imperfection of human language, there should be serious doubts respecting the extent of any given power, it is a well *361
(Cite as: 7 J. Intell. Prop. L. 315, *361)
settled rule, that the objects for which it was given, especially when the objects are expressed in the instrument itself, should have great influence in the construction. . . . We know of no rule for construing the extent of such powers, other than is given by the language of the instrument which confers them, taken in connection with the purposes for which they were conferred. [FN181]
In the context of the Intellectual Property Clause these views have particular significance, for they clearly indicate that a statement of purpose or objects set forth in the clause itself "should have great influence" on the interpretation of the clause. Phrased somewhat differently, the statement of purposes, i.e., "to promote the progress of science and useful arts," constitutes a limitation on the power of Congress granted by the clause which must be taken into account in interpreting it.
Indeed, the Supreme Court has expressly recognized this in the patent context and implicitly in the copyright context. Thus, in 1966 in Graham v. John Deere Co. the Court relied heavily on the introductory language of the clause to support its view that there is a constitutional standard of invention that must be met for there to be patentability. It began by noting that the qualified authority given to Congress with regard to the issuance of patents "is limited to the promotion of advances in the 'useful arts,' " and went on to state that "Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose." According to the Court, " 'promot[ing] the Progress of . . . useful Arts' . . . is the standard expressed in the Constitution and it may not be ignored." [FN182]
The import of this is that, with regard to patents, the Court has most emphatically stated that the introductory language is a limitation which sets forth a constitutional standard that Congress may not ignore. This is as true with respect to the patent term as it is with respect to the nature and type of invention that may be protected. Simply put, there is a term beyond which the progress of useful arts is no longer promoted and beyond which such progress may actually be said to be hindered. At that point the discretion of Congress to set the patent term becomes constitutionally limited. The Court made this point implicitly in Aiken by noting the competition or tension *362
(Cite as: 7 J. Intell. Prop. L. 315, *362)
that exists between the public interest and the interest of authors when it comes to issuance of copyrights. At some copyright term, the public interest must predominate over that of the author, and Congress does not have constitutional authority to grant a longer term.
Despite the views expressed by the Supreme Court in Gibbons, Graham, and Aiken, several circuit courts have declined to treat the introductory language of the clause as a limitation on congressional power regarding copyrights. [FN183] Although they were not addressing the specific issue of whether the introductory language containing the statement of purposes acts as a limitation on the power of Congress in setting the copyright term, the language they used is sufficiently broad as to indicate they would hold that it is not a restriction or limitation on the length of the copyright term. [FN184]

VI. Delineating the Term of the Grant

I have suggested that the extent to which the phrase "for limited times" is viewed as setting constitutional limits on the length of the copyright and patent term depends in no small degree on whether the "social benefits" or "rewards for genius" rationale is considered more important as a justification for the Intellectual Property Clause. [FN185] The only justification for the clause given by any Framer was that set forth by Madison in The Federalist No. 43. Therein he stated:
The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to inventors. The public good fully coincides in both cases with the claims of individuals. The States cannot separately make effective *363
(Cite as: 7 J. Intell. Prop. L. 315, *363)
provision in either of the cases, and most of them have anticipated the decision on this point by laws passed at the instance of Congress. [FN186]
Unfortunately, this language sheds little light or no light on what the Framers contemplated by "for limited times." [FN187]
The ordering of the language used by Madison rather strongly suggests that a major-if not the primary-justification for the clause was to assure that Congress would in fact have authority to legislatively protect property rights of authors in their writings and inventors in their discoveries. [FN188] But Abrams argues that "[t]he stress on the 'utility' of the power and the 'public good' reinforces the notion of public interest as a justification for the copyright system" and presumably the patent system as well. [FN189] Perhaps the most intriguing comment by Madison from the perspective of this work is his statement that: "The public interest fully coincides in both cases with the claims of individuals." This, however, would seem to be true only if the term of the grant is such as to comply with both the public interest in having the subject matter of the grant go into the public domain at some defined time not detrimental to the public, and the interest of the grantee in having a property interest created for some length of time which would insure a good rate of return on his time and investment. As a matter of their own pragmatic interests, the grantees would always want the term of the grant to be as long as possible, without reference to the public interest. If there was to be a true "coincidence" of interest, it would have to be predicated on some form of balancing the divergent interests of the public and those of the grantees. Madison, however, made no attempt to address this issue.
The initial statutory terms of the copyright and patent grants were simply copied from the existing British law, both because this was the easiest thing to do, and because Congress had no basis on which to make any determination *364
(Cite as: 7 J. Intell. Prop. L. 315, *364 )
that American conditions were sufficiently different from British conditions as to justify the setting of different lengths of the terms. But the constitutional language did not preclude term extension or renewal and in the case of copyright the statute early on expressly provided for term 
(Cite as: 7 J. Intell. Prop. L. 315, *364)
renewal. I turn now to the factors which have influenced the length of the patent and copyright term from 1790 to the present.

a. the patent term
Before specifically addressing how the patent term has been delineated, it is useful to review perceptions on the nature of the patent grant during the nineteenth century, because those perceptions influenced how the term should be treated both legislatively and judicially. More often than not the issue was perceived as one of whether patents were to be treated as monopolies. The Framers clearly viewed these limited-term exclusive rights as monopolies, albeit of a desirable and acceptable type. Indeed, this was precisely why they deemed it necessary to ensure that the exclusive right was granted only "for limited times." [FN190]
Nonetheless, there would soon be fierce arguments-which have continued to this day-as to whether the "exclusive right[s]" authorized by the Intellectual Property Clause are in fact monopolies. Those who argued that they were monopolies tended to favor more restrictive interpretations of the patent law, while those who contended that they were not monopolies generally did so for the purpose of advocating a more liberal interpretation of this law. Those who argued that they were monopolies more often than not contended that this law was intended to favor the public interest whereas those who avoided the use of the term "monopoly" generally argued that an important purpose of this law was to reward inventors for their efforts.
As William Robinson would point out in his massive patent treatise published in 1890, "[t]he question whether a patent privilege is a monopoly is not merely a question of words." [FN191]
He noted that:
*365
(Cite as: 7 J. Intell. Prop. L. 315, *365)
In legislative bodies, which recognize the patent-right as a monopoly, the interests of the public will naturally be preferred to those of the inventor; legislation on the subject will be cautious and conservative; and the powers conferred upon the patentee will be subordinated to the free enjoyment by all other citizens of every privilege that is not inconsistent with the protection to which his inventive skill and genius are entitled. In courts where the same theory prevails such rules will be followed as tend to limit the monopoly of the inventor to the exact letter of his grant, and hold him to a strict compliance with all its conditions as an essential requisite of validity. [FN192]
In the context of the present work, this view suggests that attempts to extend the term of the grant beyond that expressly set by statute or to create a greater statutory term will be looked on with suspicion at best and refused in most instances.
But Robinson went on to point out that if a patent is not treated as a monopoly, it is considered favorably by the law, with the following consequences:
Being intended principally, if not entirely, for the benefit of the grantee, and conflicting with no public interest either actual or possible, the law construes it liberally in order to secure to the grantee all the advantage which the grantor might have proposed to bestow upon him. And hence, where legislators and the courts adopt this theory of the exclusive privilege created by a patent, and lose sight of its true character as a monopoly, legislative acts in favor of the inventor will be sweeping and extravagant, and the decisions of the courts will sustain him in claims which seriously abridge the rights of others, and will afford him a protection and redress far beyond that which justice and the public interest demand. [FN193]
*366
(Cite as: 7 J. Intell. Prop. L. 315, *366)
Although using extravagant language, Robinson made clear that whether a patent was actually treated as a monopoly, as opposed to simply being called one, depended in no small measure on whether the intent of the grant was perceived to be primarily for the benefit of the public or primarily for the benefit of the patentee. [FN194]
Robinson's basic premise was that in the absence of some defined property right set by society an idea once communicated to the public is freely available for use by the public, and an inventor has no right or power to restrain its use by the public. [FN195] By granting a right or power to restrain the use of an invention by the public, a patent, Robinson contended,
. . . is a true restriction of pre-existing public rights. It may not, and ordinarily it does not, take away from the people the actual enjoyment of any benefit which they already had in their possession, but it does prohibit their immediate exercise of that perpetual and natural right by virtue of which every new discovery, when openly practised or proclaimed, becomes at once the possession and property of all. [FN196]
While patents may be granted to stimulate inventive activity and to reward inventors, "[t]he duty which the state owes to the people to obtain for them, at the earliest moment, the practical use of every valuable invention in the industrial arts is, however, a higher and more imperative duty than any which it owes to the inventor." [FN197] In other words, the term of a patent is limited to that required to actually "promote the progress of . . . useful arts," and there is no proper basis for making it any longer. [FN198] Her view that the *367
(Cite as: 7 J. Intell. Prop. L. 315, *367)
purpose of the patent system is to encourage invention is one that was prevalent in the first half of the nineteenth century, but one which has been largely discredited today. Nonetheless, her point that the patent system ought to give "the inventor the minimum actual reward consistent with continued credibility" [FN199] is a valid one. The length of the patent term is certainly a critical factor in making this determination.
With this introduction, it is appropriate to turn now to what Congress has actually done concerning the patent term. The first patent statute, the Patent Act of 1790, authorized the issuance of a patent "for any term not exceeding fourteen years." [FN200] This was exactly equivalent although not identical to the language of the Statute of Monopolies. [FN201] The patent board authorized under the Act of 1790 to issue patents [FN202] determined a standard term of fourteen years. [FN203] It quickly became apparent that having high government officials responsible for issuing patents was an inefficient and ineffective way to proceed, particularly in view of the fact that these officials had to determine whether the invention was deemed "sufficiently useful and important" to warrant a patent, and less than three years later Congress opted for a registration system under which a patent would automatically issue if the fees were paid and the ministerial requirements met. This Patent Act of 1793 also provided "for a term not exceeding fourteen years," [FN204] but the Secretary of State, who was responsible for seeing that the ministerial *368
(Cite as: 7 J. Intell. Prop. L. 315, *368)
requirements were met, quickly established a standard term of fourteen years which would be the term during the forty-three years that the Act of 1793 remained in effect.
The language of the Acts of 1790 and 1793 seemed literally to indicate that no patent could have a term in excess of fourteen years. Congress, however, would interpret the statutory language as placing a limitation on the executive branch from issuing a patent with a term of more than fourteen years, but not on the ability of Congress to extend or renew the term of an issued patent beyond fourteen years as it saw fit. The issue of congressional authority in this regard was for all intents and purposes moot until 1804 when the first patents issued under the Act of 1790 expired.
The issue was brought to the attention of Congress by Oliver Evans, who in 1791 obtained the third United States patent for his invention concerning improvements in the milling of flour. His improvements constituted a major advance in the art of milling. Not only did they materially increase the efficiency of the milling process and thereby lower costs, they also produced a more uniform and cleaner product. Although his improvements were slow to catch on, by 1804 many millers were licensing his invention and many others were infringing on his patent.
Evans, like most inventors of his time, thought that the fourteen-year term of a federal patent was too short, and that, at the very minimum, each patent holder should have an automatic right of renewal for some period of time. [FN205] On December 21, 1804 he became the first patentee to formally petition Congress for an extension of his patent right when he sought a seven- year extension "without injuring those who have already purchased the right of using it." [FN206] Much to his surprise and dismay, Congress failed to act on this petition. On January 22, 1805, the House Committee on *369
(Cite as: 7 J. Intell. Prop. L. 315, *369)
Commerce and Manufactures recommended the term extension but also recognized that this was the first of what were likely to become frequent requests. Accordingly, it recommended that the patent law be amended to allow for term extensions. [FN207] A bill was prepared which would have accomplished both of these purposes, but on February 6th the House rejected it. [FN208] It would not be until 1832 that Congress would pass any general legislation pertaining to term extension. [FN209]
Evans tried again in the next session of Congress, even though his patent had now expired, but was again unsuccessful. [FN210] He now changed his strategy and on December 13, 1806, presented a more general petition seeking modification of the patent law to extend the statutory term of patents. [FN211] Therein he had the temerity to propose a much more extreme position, namely, that inventors, their heirs, and assigns be granted the patent right forever. [FN212] A week later, he wrote to President Jefferson stating that: "To represent the patentees petition to Congress for redress, I am making my last effort to draw the attention to the oppressed and aggrieved state of the inventive genius of this country. . . ." He hoped that Jefferson would look favorably upon this letter, because "one word from you would promote it more than all my feeble exertions." [FN213] That word was not forthcoming, however, and Congress did nothing.
But Jefferson did belatedly respond to this letter. On May 2, 1807, he set forth his perspective as follows:
*370
(Cite as: 7 J. Intell. Prop. L. 315, *370)
Certainly an inventor ought to be allowed a right to the benefit of his invention for some certain time. It is equally certain it ought not be perpetual; for to embarrass society with monopolies for every utensil existing, & in all the details of life, would be more injurious to them than had the supposed inventors never existed: because the natural understanding of its members would have suggested the same things or others as good. How long the term should be is the difficult question. Our legislators have copied the English estimate of the term; perhaps without sufficiently considering how much longer, in a country so much more sparsely settled, it takes for an invention to become known & used to an extent profitable to the inventor. [FN214]
Here Jefferson comes out solidly against any perpetual right in an inventor, although he does leave open the possibility of chang