The jurisdiction of patent validity cases in England, 1700-1883

Research Project

The project is concerned with investigating whether the common law had the exclusive jurisdiction in patent validity cases in England in the eighteenth and nineteenth centuries. Conventionally, it has been argued that it did not. In particular, it has been commonly supposed that the Privy Council, a central part of the executive, retained the right to annul patents for invention throughout the period. It has also been suggested that the Court of Chancery, a predominantly equity court, could also adjudicate the validity of patents.

Conversely, working with Tomás Gómez-Arostegui, we seek to show that the jurisdiction of the Privy Council fell into abeyance during the eighteenth-century. It last revoked a patent in 1779, and this was more the outcome of wartime exigencies than what was by that point the usual legal procedure. Prior to this, the last time the Privy Council had revoked a patent was in 1746. Moreover, Chancery did not have a jurisdiction in patent validity cases. Instead, these were invariably decided by juries at common law and we are now undertaking an exhaustive review of all available Privy Council, Chancery, common law and law officer manuscript records to embellish this account.

This has important repercussions for modern American patent law. In 2011, the America Invents Act created an administrative process at the United States Patent and Trademark Office (USPTO), whereby the validity of patents could be decided. It was subsequently argued in Oil States Energy Services, LLC v Greene’s Energy Group, LLC, (2018) that this violated Article III and the Seventh Amendment of the US Constitution, which guaranteed the right to jury trials at common law for certain types of civil cases, including patent validity cases. The Supreme Court, though, partly under the misapprehension that the Privy Council had retained its jurisdiction in patent validity cases and so provided a direct antecedent for the USPTO’s recently instituted review procedure, confirmed its constitutionality.