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USING INSIGHTS FROM THE HISTORY OF SCIENCE TO REDEFINE PATENTABLE SUBJECT MATTER UNDER THE IP CLAUSE OF THE U.S. CONSTITUTION

Sean M. O’Connor 1

INTRODUCTION

Over the past few years, Congress, the Supreme Court, academics, and the public in the United States have become increasingly concerned with the scope of patentable subject matter. Various critiques based on notions of “patent thickets,” “anti-commons,” and “upstream patents” in particular argue that research is being hindered by excessive patenting of scientific and technological innovation. While empirical evidence supporting these claims is scant – indeed some recent research rebuts the claims – the concern that too much scientific innovation is being patented still resonates across society. This paper argues that a re-examination of the scope of the Progress (or IP) Clause in the U.S. Constitution with the aid of research and insights from the

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Associate Professor of Law, Director of the Entrepreneurial Law Clinic, & Associate Director of CASRIP, University of Washington School of Law. The author thanks Professors Toshiko Takenaka and Ryu Takabayashi for the opportunity to present and publish this paper as part of “The Pros and Cons and Result of Strengthening Intellectual Property Protection” Symposium sponsored by the Research Center for the Legal System of Intellectual Property (RCLIP) of Waseda Law School, Waseda University and the Center for Advanced Study and Research in Intellectual Property (CASRIP) of the University of Washington School of Law in Tokyo (December, 2006). Earlier versions of this paper were presented at the Third Annual Intellectual Property Law Seminar hosted by the Institute for Intellectual Property and Social Justice at Howard University School of Law, Washington D.C. (October 20, 2005); the “What’s Ahead on Highway 101” conference at George Washington University School of Law, Washington, D.C. (November 3, 2006); and the 2006 IP Scholars Conference held at the University of California Berkeley School of Law (Boalt Hall) (August 10-11, 2006). See Speaker Calls for Rethinking Whether Science Should Be Protected by Patents, BIOTECH WATCH (BNA, November 2, 2005); Law School Symposium Explores Scope of Protection Under Patent Statute, 73 PATENT, TRADEMARK & COPYRIGHT J. 1 (BNA, November 17, 2006). Comments are encouraged and should be sent to [email protected].

Electronic copy available at: http://ssrn.com/abstract=1104899

interdisciplinary field of history and philosophy of science opens the door for a new approach to patentable subject matter. While originalist interpretations of the Progress Clause – coupled with the understanding that the Framers of the U.S. Constitution used the word “science” in a manner different from its popular use today – are not new, previous versions of these approaches failed to adequately understand and employ the rich and ongoing field of the history of science in particular. The author draws upon his own advanced training in the history and philosophy of science to argue that the patent system was not set up to protect the work of scientists and natural philosophers. Rather, it was established to protect the commercially useful artifacts invented by tradesmen and others that did not necessarily rely on a deep understanding of underlying principles of nature. These tradesmen needed only to be skilled at the useful arts that allowed them to manipulate natural phenomena in useful ways. Scientists and natural philosophers, on the other hand, desired primarily to understand the fundamental rules of nature and the cosmos, with only secondary considerations as to the practical import of their discoveries. Accordingly, the main output of scientists and natural philosophers was learned books and treatises outlining their grand theories and laws of nature. Thus, copyright was primarily established to protect this scientific output as evidenced by the subject matter of the first Copyright Act of the United States in the 1790s. The paper asserts that only by returning to this original subject matter division can we hope to make meaningful progress on patentable subject matter reform. Further, it addresses the challenge created by the conflation of science and technology beginning in the nineteenth century and continuing to the present day. Nonetheless, the paper

2 Electronic copy available at: http://ssrn.com/abstract=1104899

concludes that science can be (re)extricated from technology such that scientific advances can be kept out of the patent system and available for all scientists to use to advance the knowledge of all.

I. THE “PROGRESS” OR “IP” CLAUSE OF THE U.S. CONSTITUTION

The U.S. Constitution grants Congress a number of specific and limited powers. 2 Congress may not act outside of these powers, in large part to strike a very certain balance of power between the federal and state governments – the heart of the U.S. federalist governance system. One such enumerated power has come to be called either the “Progress Clause” or “IP Clause”: “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;” 3 Interestingly, this clause does not specify the form of the U.S. IP system, nor does it even call out a patent or copyright system by name. Accordingly, given the current agitation over the scope of IP rights, we should return again to this clause and take a first principles approach in interpreting it. To accomplish this we will be guided only by the actual language of the IP Clause and a nuanced understanding of the intellectual environment existing in the United States and Europe at the time the IP Clause was drafted and ratified as part of the Constitution. Given the breadth of the powers granted to Congress under the IP Clause, efforts to suggest or catalog all new systems that might be consistent with the clause’s general

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See U.S. Constitution, art. I, § 8. Id. at cl. 8.

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requirements would be a mammoth undertaking. Yet, it is critical that Congress and commentators consider the full range of options permitted under the IP Clause. While the then new Congress opted to pass laws under the IP Clause creating patent and copyright systems that were fairly similar to others already in place in Europe, it was not required to do so. To use a form of argumentation that crops up in constitutional, statutory, regulatory, and contract interpretation: if the Constitutional Congress that created the Constitution had intended for our IP system to necessarily conform to the then well known existing systems of copyrights and patents in Europe, then they could or should have said so. That they did not is strong evidence that they intended no such limitation and desired to grant Congress a free hand in adopting IP type systems. Indeed, the Constitution does not even mandate that any such systems are adopted by Congress, it simply gives Congress the power to create such systems if and when it chooses, so long as the systems are adopted for the expressly utilitarian purpose of promoting the progress of science and the useful arts. In parsing the content of the IP Clause, the most compelling scholarship has been that which harks back to the linguistic devices of the time and emphasizes the “balanced sentence” interpretation of the Clause that suggest two similar but separate powers authorized by the Framers. 4 First, “Congress shall have Power . . . to promote the Progress of Science . . . by securing for limited times to Authors . . . the exclusive rights to their Writings . . . .” Second, “Congress shall have Power . . . to promote the Progress . . . of the Useful Arts, by securing for limited Times to . . . Inventors the exclusive Right

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See, e.g., Karl B. Lutz, Patents and Science: A Clarification of the Patent Clause of the U.S. Constitution, 18 GEO. WASH. L. REV. 50 (1949-1950); Edward C. Walterscheid, The Nature of the Intellectual Property Clause: A Study in Historical Perspective (Part I), 83 J. PAT. & TRADEMARK OFF. SOC’Y 763 (2001); Giles S. Rich, Principles of Patentability, 28 GEO. WASH. L. REV. 393 (1960).

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. . . to their Discoveries.” However, this distinction has been blurred repeatedly by the Supreme Court and may indeed not be fully comprehended by past or present Justices. 5 Further, in the early Twentieth Century many scholars treated it as a fait accompli that the Framers were simply authorizing Congress to create patent and copyright systems. 6 Thus, the broader powers clearly given to Congress by the IP Clause have become erroneously narrowed to the power(s) to create patent and copyright systems. Scholarship beginning in the 1990s has better plumbed the historical depths of the IP Clause and its multiple parts. Edward Walterscheid arguably led this contemporary vein of scholarship with his series of articles on the antecedents and historical background of the U.S. patent system. 7 However, his analysis is as much focused on the details of antecedent patent systems – including questions about the basis of natural law principles in justifying patents (and copyrights) – as it is about the proper interpretation of the scope of “science” or the “useful arts” as pivotal terms in the IP Clause. Walterscheid also tracks the evolution of common law copyrights and begins questioning the previously accepted dogma of Thomas Jefferson’s role in the development of the patent system in the United States. To wit, while it is undoubtedly true that Jefferson had a role in the administration of the early U.S. patent system, it now seems equally true that he had little role in the drafting and inclusion of the IP Clause in the Constitution because he was Minister to France during the relevant time period. Accordingly, Walterscheid (re)introduces the importance of The Federalist #43 as evidencing the intent behind the 5

See Walterscheid, supra Note 4 at 763. See, e.g., Karl Fenning, Copyright Before the Constitution, 17 J. PAT. OFF. SOC’Y 379 (1935); Frank D. Prager, Historic Background and Foundation of American Patent Law, 5 AM. J. LEGAL HIST. 309 (1961); Jeremiah Lee MacAuliffe, Patents and Their Purpose, 14 J. PAT. OFF. SOC’Y 253 (1932); 7 Walterscheid’s articles – The Early Evolution of the United States Patent Law, serialized in the Journal of the Patent & Trademark Office Society in the mid 1990s – culminated in his 1998 book, To Promote the Progress of Useful Arts: American Patent Law and Administration 1787-1836. 6

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IP Clause, as well as James Madison’s role in it. Finally, he also helped bring to the fore the debate over what the exact nature of the term “securing” meant in the Clause. Some other interesting additions to this new literatures include Malla Pollack’s writing focusing on the nature and usage of the term “Progress” in the IP Clause. 8 She contends that it should be understood as a form of dissemination or spreading of the subject matter in interest, e.g., “the fire progressed from one field to another.” Thus, “to promote the progress of science and the useful arts” would mean systems of exclusive rights whose aims were to promote the dissemination or spreading of science and useful arts across the country. This sort of analysis speaks more to the balance between proprietary rights and the public domain of course, which is admittedly one of Pollack’s goals. Finally, Adam Mossoff recently published an article expanding upon Walterscheid’s questioning of the near mythical status that Thomas Jefferson’s views on the patent system have obtained, particularly with the Supreme Court. 9 Mossoff articulates a natural law/rights basis for patents that is equally well supported by the historical sources as the Jeffersonian “odious monopoly” story which posits that patents are tolerated solely for utilitarian ends. The distinction is not trivial: a solely utilitarian justification allows Congress to reconsider patents and the scope of patentable subject matter essentially at any time and primarily in light of current economic realities; a natural law/rights justification for patents would require Congress to consider whether it would be engaging in a form of “takings” of private property if it were to significantly change the scope of patentable subject matter or exclusive rights granted to patentees.

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Malla Pollack, The Democratic Public Domain: Reconnecting the Modern First Amendment and the Original Progress Clause (a.k.a. Copyright and Patent Clause), 45 JURIMETRICS J. 23 (2004). 9 Adam Mossoff, Who Cares What Thomas Jefferson Thought About Patents? Reevaluating the Patent "Privilege" in Historical Context, 92 CORNELL L. REV. __ (forthcoming 2007).

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There is substantially more exciting scholarship currently underway in the area of patentable (and copyrightable) subject matter. However, much of it focuses on the statutory language in the codified patent (and copyright) law of the United States and is thus not discussed here. To sum up, the assessment of patentable subject matter in the United States must consider at least three levels: the IP Clause in the Constitution; Section 101 of the codified Patent Act of 1952; 10 and federal court case law (both that of the Supreme Court and the Federal Circuit, to the extent the latter has interpreted some aspect of subject matter not clearly addressed by a Supreme Court ruling). Arguably, case law from England may be used as an interpretive aid as well, but only to the extent that one believes that the Framers and/or Congress intended to interpose a patent system based largely on the English precedent into the then new federal government. This paper is primarily concerned with interpreting the scope of the IP Clause and the remainder of it seeks to place the Clause and its terminology into proper historical context.

A FULLER PICTURE OF THE ORIGINS AND CONSTRUCT OF “SCIENCE”

Despite the focus on nearly all parts of the IP Clause, oddly relatively little attention has been paid to the terms that have the most direct relevance for determining the proper scope of patentable and copyrightable subject matter: “science” and the “useful arts.” This paucity of analysis makes some sense for those who either reject or simply have never considered the “balanced sentence” structure of the Clause. For them, it is a unitary construct promoting the progress of “science and the useful arts” by empowering Congress to create patent and copyright systems for authors and inventors. 10

35 U.S.C. § 101.

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This casual reading further coheres around the likely assumption that patents are for inventors working in the field of science while copyrights are for authors working in the arts. Of course, this very assumption – while superficially satisfying – is actually what makes this sort of perspective on the IP Clause unravel. Even under contemporary definitions, much of what falls within the scope of “science” is basic research that specifically does not contain practical applications. Fields of applied science of course focus their attention on practical applications of scientific principles, as do the technology oriented fields of engineering. That the term “science” is qualified by the term “applied” for these fields underscores the need to distinguish them from those involved with pure or basic science research – as discussed further below. Further breaking down the coherence of this unitary view of the IP Clause is the fact that the “useful arts” would be an odd way of capturing what we think of as the contemporary subject matter of copyright. Although it will be shown below that the contemporary focus of copyright on things like novels, movies, music, paintings, and sculpture is likely an improper aberration, there is no sense that the term “useful arts” has any direct application to the current or historical subject matter of the copyright system. For these contemporary categories of copyrightable subject matter the term “fine arts” is likely a much better match. Perhaps more importantly, this exercise begins one thinking through the distinctions among the various “arts” and recollecting the terms which apparently collects some arts together in groups: “fine arts,” “liberal arts,” “technical arts,” “healing arts,” etc. These categories of arts in fact have great import for our understanding of the proper scope of patentable subject matter under the IP Clause.

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Because the term “useful arts” is not currently in regular use, while “science” is, this paper will first treat the history and scope of the latter. Further, a theme of this paper is that we might actually get a better sense of what the “useful arts” contain – and thus what constitutes proper patentable subject matter – by first understanding what constitutes “science” and thus is properly captured only by copyright and not by patents. No less an authority on the U.S. patent system than Giles Rich, chief architect of the Patent Act of 1952 (the last major overhaul of the U.S. patent law) and one of the first judges on the Federal Circuit, weighed in on the definition of “science” as used in the IP Clause in an article in 1960. 11 Rich primarily relied on the well known dictionary of Samuel Johnson from the period of the drafting of the Constitution. While Johnson’s dictionary correctly identifies that “science” refers to a broader ranges of things than the hard physical sciences, or even life sciences, that seem to exhaust the definition of “science” today, it fails to capture the true essence of “science” as primarily a kind of epistemological approach to gaining true knowledge, rather than a category of fixed content or “knowledge.” Thus, Rich adopts what he believes to be Johnson’s definition that “science” simply is synonymous at the time of the drafting of the Constitution with the term “knowledge.” Anticipating the reader’s responsive question as to what term was then used for what we would consider “science” today, Rich explains that the term “natural philosophy” was used historically to capture this field of endeavor. That this interpretation is a bit off base is only part of the story for this paper. Equally intriguing is that neither Rich nor any other past commentators on the IP Clause have invoked the academic discipline of History of Science to consider what the definition of “science” would have been at the time of the Constitution. The discipline 11

Giles S. Rich, Principles of Patentability, 28 GEO. WASH. L. REV. 393 (1960).

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certainly existed at the time Rich was writing – in fact, Indiana University created an entire Department of History and Philosophy of Science in 1960, 12 the same year that Rich published his article Principles of Patentability which included his analysis of both the IP Clause and the definition of “science” at the time of the Constitution. While the discipline has waxed and waned in popularity to some degree in the intervening decades. it is still alive and well, with departments devoted to it not only at Indiana, but also at Cambridge, Oxford, Harvard, and Pittsburgh, to name the most notable ones. Thus, current scholars should avail themselves of its extensive insights and literature, rather than attempt to recreate them in a vacuum solely for purposes of the legal and IP scholarship. At best, this leads to wasted, duplicative effort; at worst it risks engaging in amateur history of science that may do more harm than good by misunderstanding and thus potentially misrepresenting the past. My own graduate studies in history and philosophy of science focused on the development of scientific methods in the early modern period, up through the nineteenth century. This period represents the beginnings and ultimate convergence and coherence of a group of activities that we would today call “science.” However, the path of this development of the modern scientific enterprise was neither direct nor inevitable. One of the greatest dangers of research in the history of science is that of engaging in “whig history” whereby one interprets sources from the past through the lens of today and seeks to show some essentially necessary or pre-determined evolution from early roots to practices of today. 13 At the same time, past practices clearly have played some role in the development of contemporary practices. So the question is what to make of the twists 12

See Indiana University Bloomington, Department of History & Philosophy of Science available at http://www.indiana.edu/~hpscdept/. 13 See Peter Dear, What is the History of Science the History of? 96 ISIS 390 (2005).

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and turns between the past and the present practices. In essence, the important consideration is to take the past on its own terms and try to understand past practices in the context of the worldview of actors of the time period. Thus, for example, rather than dismissing Isaac Newton’s dabbling in theology and alchemy as embarrassing irrational episodes in an otherwise archetypal rational scientific career, the contemporary historian of science embraces all of these activities as part and parcel of Newton’s experiences, wellspring of insights, and worldview. 14 Calling on my own and others’ research in history of science from the relevant period then, we can better understand the meaning of the term “science” at the time of the drafting of the U.S. Constitution. It did not simply mean “knowledge,” nor was it a body of knowledge. The first is demonstrable in a simple linguistic exercise by considering that at the time the phrase “scientific knowledge” was used: if “science” was simply synonymous with “knowledge,” then what could the qualifier “scientific” add to the phrase? The second is a bit more obscure but can be understood by considering common locutions from the time such as “make a science out of x” as well as engaging in “scientific studies”: the point was that the so-called Scientific Revolution was really a revolution of epistemological methods not ontological content or knowledge. 15 Accordingly, the connection of “science” to “knowledge” that Johnson was fumbling towards in his dictionary was likely the narrow sense of “to know” as it was historically defined in contrast with “to believe.” In other words, while we currently use the term “know” in a loose and casual sense – “I know it will rain today” – the proper use among 14

See, e.g., RICHARD WESTFALL, NEVER AT REST: A BIOGRAPHY OF ISAAC NEWTON (Cambridge Univ. Press, 1983). 15 See, e.g., THOMAS KUHN, THE STRUCTURE OF SCIENTIFIC REVOLUTIONS (University of Chicago Press, 3rd ed. 1996); RICHARD S. WESTFALL, THE CONSTRUCTION OF MODERN SCIENCE (Cambridge University Press, 1977).

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Enlightenment thinkers such as the Framers of the U.S. Constitution would have been far more serious and only based on definitive evidence such as scientific or other empirical experiments or truths of logical/mathematical/geometric necessity (e.g., I can know that the angles of any particular triangle add up to 180 degrees because the angles of all triangles add up to 180 degrees as demonstrable by Euclidean proofs). Thus, “knowledge” is broader than just “scientific knowledge,” but scientific endeavors are one way to obtain (further) knowledge. Similarly, Rich was on to something when he declared that what we think of as “science” today was referred to as “natural philosophy” at the time of the framing of the Constitution, but the picture is more complicated than he may have realized. All inquiries into the nature of the world, both physical and metaphysical, were considered part of the discipline of philosophy as Europe emerged from the Scholastic period preceding the Renaissance. Natural philosophy was thus that part of philosophy concerned with understanding natural and observable physical phenomena of the world, as distinguished from metaphysical occurrences which were at best not directly observable and at worst simply unknowable to mortal humans. Further, natural philosophy descended from the Aristotelian tradition that sought to determine the true nature and essences of natural things or kinds. This could be contrasted with the idealized Platonic tradition of other parts of philosophy that sought to access perfect forms of abstract or metaphysical objects such as those contemplated by logic, mathematics, and geometry. At the same time, both traditions were concerned almost exclusively with the true nature of things or kinds quite apart from any application or utility of the knowledge of those things or kinds. Essentially, the multiple branches of

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philosophy were driven by the goal of knowledge for its own sake, and not as instrumental to achieve other, more practical goals. Natural philosophy, so understood, is a far cry from our modern notion of “science” though. In its earliest instantiations, such as during the Scholastic period, it is not necessarily experimental nor based on quantitative, mathematized rigor. It covers a broad range of subject matter – essentially all natural kinds in the world – and methods. “Science,” on the other hand, begins as a mode of inquiry that sought to organize a field of knowledge. Thus any number of “sciences” could (and did) exist. “Scientific knowledge” then was not any particular body of knowledge other than knowledge attained or organized through a scientific method (not “the” scientific method, which is a popular misconception about the nature of both contemporary scientific activities and the so-called Scientific Revolution that postulates strict adherence to a unitary method as the proper indicia of true science). The emerging scientific methods of the seventeenth century are then employed to “make a science out of” a particular observable phenomena based field of interest. One could use these methods to gain real knowledge – as opposed to mere belief – about the true nature of the phenomena and the natural principles or laws that led to the observed results. Accordingly, “science” could help natural philosophers understand the workings of the natural world, while “the sciences” were to become specific disciplines with particular methods directed at discovering the deep natural principles behind observed phenomena in specific areas of interest such as mechanics or alchemy/chemistry. On another, and equally important, level all of this can be contrasted with an “art” or “the arts” which are better understood as the roots of the terms “artifact” and “artisan,”

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rather than the unfortunate contemporary use of “Art” to mean only the fine arts. Instead, “art” or “the arts” are broader terms directed towards any activities in which artisans manipulate natural phenomena for particular, often practical, ends or applications. The key distinctions between classifying something as a “science” or as an “art” then consist of the end or goal of the activity on the one hand, and the sort of knowledge or methods that must be drawn upon to achieve that end, on the other. Therefore, while an art requires an artisan to employ knowledge or methods on how to manipulate observed natural phenomena to achieve some particular application, whether that be practical or aesthetic, a science requires a scientist to employ knowledge or methods on how to experiment with observed phenomena to infer and then test a hypothesis about how the natural world works. Further, the artisan can attempt to apply the principles discovered by the scientist, but she need not do so to be perfectly competent and successful at her art. Likewise, the scientist can attempt to use the artisan’s skills at manipulating phenomena to help him design and conduct his experiments, or even seek to directly apply the principles he discovers to achieve practical effects in the world, but he need do neither of these things to be perfectly competent and successful at his science. In a recent article entitled What is the History of Science the History of?, the historian of science Peter Dear describes the current state of his field as well as key insights into nuanced understandings of the relationship of art, science, and natural philosophy during the so-called Scientific Revolution. 16 In particular, he asserts that most fields of knowledge based activities except natural philosophy are divided into theorica (technical apparatus of the science or art) and practica (use of theorica to achieve purposeful goals). Natural philosophy, by contrast, is initially entirely 16

Peter Dear, What is the History of Science the History of? 96 ISIS 390 (2005).

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contemplative, and does not embrace craft production or the creation of physical effects (which of course is the realm of art, or Aristotle’s techne). Yet, natural philosophy was traditionally seen as the most prestigious academic discipline, including during the period in which the Scientific Revolution got underway. However, the “new” natural philosophers of the Scientific Revolution such as Francis Bacon added instrumentality to traditional natural philosophy as well as production of works as a justification of the pursuit of natural philosophy. They further developed a kind of “experimental philosophy” that began the mandatory wedding of experimental and/or empirical components to the emerging scientific natural philosophy. Bacon in particular subverts the regressus hybrid method that Galileo adapted from his teacher, Jacob Zabarella, to argue that the demonstrable effects of the new scientific natural philosophy must be practical uses of the hypothesized principles. What was really happening during the so-called Scientific Revolution now appears to be two fold: i) dramatic innovations in classical methods of inquiry (particularly the regressus which combined traditional analytic and synthetic methods into what would become the hypothetico-deductive method often incorrectly billed as the scientific method); 17 coupled with ii) a largely successful attempt to revise the purposes and goals of philosophical inquiry – especially that of natural philosophy – to include the creation of actual and predictable outcomes that might benefit the public in practical ways. 18 In a way, this second part was a replaying, on a larger scale, of one of the apocryphal stories of ancient Presocratic philosophy, known to most students of Aristotle,

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Id. at 395; Sean M. O’Connor, Regressus and the Scientific Revolution: A Defense of Zabarella’s Contribution to Scientific Methodology (1995) (unpublished M.A. thesis on file with author). 18 Peter Dear, What is the History of Science the History of? 96 ISIS 390, 394-96 (2005).

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who relates the tale in his Politics. 19 Thales of Miletus, the first of the Greek Presocratics and one of the seven sages of the ancient world, is credited with attempting to create explanations for natural phenomena that did not rely on external or transcendent divine intervention. 20 However, as the story goes, despite Thales general success in these endeavors, he made little attempt to use his growing knowledge of natural phenomena and their causes to enrich himself with material things. 21 According to Aristotle, Thales decided to show that philosophers 22 could be rich if they wanted to, even though that was not their normal goal. 23 He used his knowledge of astronomy and its effect on weather to determine what the coming year’s olive crop would be, even though it was still winter. After deciding that it would be a banner year, he approached all of the owners of olive presses, still in the midst of winter, and essentially purchased exclusive options to all of the presses for harvest time. The owners were apparently happy enough to make some unexpected cash in the middle of winter. The following summer sure enough the olive crop was good and Thales had the exclusive rights to all the presses in the local area. According to Aristotle, he was then able to “hire them out at any price he liked to ask.” 24 The digression to recount this tale is not an idle one. Besides operating in Aristotle’s Politics as a moral that true philosophers really do live by a variation of “virtue is its own reward” – perhaps “knowledge is its own reward” – it also serves to explain the general principle of commercial gambits to corner a market. Thus while the 19

ARISTOTLE, 1 POLITICS ch. 11. See Patricia Curd, Presocratic Philosophy: The Milesians, STANFORD ENCYCLOPEDIA OF PHILOSOPHY available at http://plato.stanford.edu/entries/presocratics/; Richard McKirahan, Thales, ROUTLEDGE ENCYCLOPEDIA OF PHILOSOPHY (E. Craig, ed., Routledge, London, 1998) available at http://www.rep.routledge.com/article/A114. 21 ARISTOTLE, 1 POLITICS ch. 11. 22 This is a little misleading as it is unlikely that an individual such as Thales would have self-identified as a “philosopher,” a construct put in place much later in antiquity. 23 ARISTOTLE, 1 POLITICS ch. 11. 24 Id. 20

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true philosopher shows disdain for commercial entrepreneurial activities, to the extent someone has to engage in them the philosopher’s methods and knowledge can be extremely valuable. Further, lest we suspect that this is simply the justification that philosophers use to comfort themselves about the relevance of their field, note that the story of Thales is used to open a wide array of contemporary articles on entrepreneurship and investing that range from academic high brow to “how to make a million bucks overnight” low brow. 25 Thus, from the earliest point in the Western philosophical tradition, we see a curious intersection and tension between “pure” non-commercial inquiry and opportunistic entrepreneurship based on specialized knowledge. To make the puzzle that much more intriguing, another section of Aristotle’s Politics is sometimes also cited as the first mention of a patent type system proposal in the West. 26 However, Aristotle rejected the proposal as both potentially problematic for the patentee and the sovereign in what may be an early formulation of the private ownership of public goods problem. 27 Complicating this picture a bit, as mentioned above many academic fields of study (except natural philosophy itself) were divided between theorica and practica. More concrete definitions of the terms are given by Professor Dear: “theorica concerned the technical apparatus of the science or art in question, such as how to compute planetary orbits in astronomy, or compound ratios in music theory, or talk about the 25

See, e.g., Vasiliki Makropoulou and Raphael N. Markellos, What is the Fair Rent Thales Should Have Paid (paper presented at the 7th Hellenic-European Conference on Computer Mathematics and its Applications at Athens University of Economics and Business, Athens, Greece, 2005) available at http://www.aueb.gr/pympe/hercma/proceedings2005/H05-FULL-PAPERS-1/MAKROPOULOUMARKELLOS-1.pdf; ALEXANDER M. INEICHEN, ABSOLUTE RETURNS: THE RISKS AND OPPORTUNITIES OF HEDGE FUND INVESTING 3-4 (Wiley, 2002); Steve Sarnoff, Turning a Good Olive Harvest Into a Fortune, PENNY SLEUTH (May 1, 2007) available at http://www.pennysleuth.com/issues/2007/05_01_07.html. 26 See, e.g., ROBERT PATRICK MERGES AND JOHN FITZGERALD DUFFY, PATENT LAW AND POLICY: CASES AND MATERIALS 1-2 (Matthew Bender & Co., Inc., 2002) 27 Id.

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humors in medicine; whereas practica was the part of the discipline that used that technical apparatus to achieve certain purposeful goals, such as casting horoscopes or calculating calendrical questions in astronomy, composing polyphony in music, or applying a cure in medicine.” 28 This suggests a different alternative to knowledge for its own sake: knowledge for the betterment of human health or welfare. Indeed, arguably the rise of the notion of “professions” – as contrasted with the practices of mere tradesmen or merchants – stems from those who engaged in practica based on theorica from an academic discipline.29 By the end of the 1500s and the Aristotelian Scholastic and Renaissance periods in the European universities, purely contemplative inquiry into the true nature or essence of things in the world – unencumbered by any interest in using the resultant knowledge to produce direct tangible effects in the world – sat at the top of the academic hierarchy. 30 It is because of this privileged position of the discipline that Francis Bacon and Galileo Galilei tried to hitch their new programs of essentially arts based inquiry to natural philosophy. Whether this ploy was primarily to garner acceptance for the new program by positioning it as simply an improvement on natural philosophy, to clothe themselves in the prestige of natural philosophy for the sake of the prestige itself, or some combination, is hard to know. But, a critical component of the modern hypotheticodeductive scientific method emerged from the forced marriage of the two. Bacon and Galileo rested the core of their new method of “natural philosophy” on the regressus 28

Peter Dear, What is the History of Science the History of? 96 ISIS 390, 394-96 (2005). Although, even this is a complicated story. See, e.g., Thomas Broman, Rethinking Professionalization: Theory, Practice, and Professional Ideology in Eighteenth-Century German Medicine, 67 J. MODERN HIST. 835 (1995). 30 As Professor Dear describes it, “The content of natural philosophy was essentially and solely speculative because it was about understanding things, not doing things.” Peter Dear, What is the History of Science the History of? 96 ISIS 390, 394 (2005). 29

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developed by Jacob Zabarella and other Scholastic and Renaissance thinkers over the course of a few hundred years. 31 Briefly, the regressus was a method of inquiry which combined resolutive and compositive phases into a single process. 32 Originating with ancient Greek thinkers such as Aristotle, and kept alive and retransmitted to the West by Arabic Islamic scholars such as Averroes, these phases represented different perspectives on how to order our inquiry into the world around us. A resolutive phase traced observed phenomena back through their causes to the first principles of the particular subject matter under consideration. A compositive phase, on the other hand, began with the first principles of a subject, and then proceeded to deduce effects (including observed phenomena) from them. The method of regressus was proposed by the Paduans as a means to overcome a central problem in natural philosophy wherein we cannot directly intuit the first principles of a subject, and need rely on the observed phenomena for indications towards what those principles might be. Prior to the introduction of regressus theory by the Paduans, the Aristotelian tradition had utilized resolutive and compositive – as well as divisional and definitional – phases as individual, complete methods. Because these methods used separately had proven unequal to many of the demands of the natural philosophy enterprise, the Paduans advanced the idea that a combination of resolutive and compositive phases just might be the fruitful method of inquiry eagerly sought by natural philosophers. The Paduans’ work on the regressus culminated in the late sixteenth 31

For a full discussion of the development of the regressus and the contemporary historical debates over its role in the development of the modern hypothetico-deductive scientific method, see Sean M. O’Connor, Regressus and the Scientific Revolution: A Defense of Zabarella’s Contribution to Scientific Methodology (1995) (unpublished M.A. thesis on file with author). 32 The resolutive and compositive methods have also been referred to, respectively, as: analytic and synthetic; and demonstration a posteriori and a priori. Peter Dear, What is the History of Science the History of? 96 ISIS 390, 395 (2005).

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century when Jacob Zabarella articulated a version that clearly described what would become known as the hypothetico-deductive “arc of science,” albeit in the language of Renaissance Averroistic Aristotelianism. However, Bacon twists Zabarella’s method, and indeed the very nature of natural philosophy, when he pronounced in his 1605 treatise Advancement of Learning, “These be the two parts of natural philosophy, the inquisition of causes, and the production of effects; speculative, and operative; natural science, and natural prudence. For as in civil matters there is a wisdom of discourse, and a wisdom of direction; so is it in natural.” 33 As Professor Dear explains it: Bacon thus attempted to represent natural philosophy, quite against its usual academic Aristotelian grain, as necessarily having a practical or utilitarian dimension. As he tried to justify this picture, he proceeded, artfully, to conflate two different things. He began by taking the scholastic notion of analysis and synthesis (also known as resolution and composition, or demonstration a posteriori and a priori) and explicated it in relation to natural philosophy in a fashion perfectly consistent with the standard late sixteenth-century treatment by Jacopo Zabarella. However, he did so in such a way as to imply that “effects” or phenomena were tantamount to practical uses of natural philosophy’s explanatory principles. 34 Bacon appeared to have another goal in mind as well, “[his] artful conflation of phenomena with uses served potentially to open up new, different ways of promoting and 33

FRANCIS BACON, THE ADVANCEMENT OF LEARNING, reprinted in BACON, THE ADVANCEMENT OF LEARNING AND THE NEW ATLANTIS, 88 (Oxford: Clarendon, 1974). 34 Peter Dear, What is the History of Science the History of? 96 ISIS 390, 395 (2005).

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developing a particular kind of natural philosophy—one that would be judged not on whether it successfully explained aspects of the world but on whether it could produce desired effects on command.” 35 Yet, despite this fundamental conceptual shift in the discipline called “natural philosophy” from one that was entirely contemplative and only designed to understand and explain the causes of observed natural phenomena to one that was also expressly oriented towards producing useful effects in the world, the overarching impetus of the discipline was still a belief that a discovery of first principles and causes could explain all observed “natural” phenomena. Bacon’s project was taken up by others in the seventeenth century, notably Robert Hooke – another early modern thinker generally associated with the “Scientific Revolution.” Perhaps best known for his refinement and use of optical lenses in microscopes to discover a whole new world of microscopic organisms, Hooke emphasized the crucial role of intermediating technical instruments to enhance human senses (and hence understanding). He thus arguably ushered in the era of science and natural philosophy that necessarily relies on technological research tools. Further, at times Hooke seemed equally mesmerized by the technological inventions and advancements of these research tools as by the actual scientific inquiry that might result from their use. However, he also maintained the trappings and importance of the contemplative first principles pedigree of natural philosophy in this new “experimental” or “mechanical” philosophy. In the end, his program helped initiate the practice of attempting to understand natural phenomena and causes, oddly enough, in terms of artificial tools and machines created by humans: “The logical incommensurability between natural philosophy and utility is short-circuited by having natural philosophy 35

Id.

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speak only in the terms of mechanical tools: the invisible causes of various qualities and effects are taken to be tiny machines, scaled-down versions of those artifacts that facilitate operational, or mechanical, effects on the everyday human scale.” 36 This, of course, resonates with practices today of conceptualizing the human brain as essentially an information processor like a computer, or genetic information encoded in DNA as “data” to be similarly processed by cellular mechanisms. Hooke continues the odd tethering of the contemplative ends of natural philosophy and practical utility when describing the goals of the Royal Society in the following passages from the Preface to his major work, Micrographia: “the ends of all these Inquiries they intend to be the Pleasure of Contemplative Minds, but above all, the ease and dispatch of the labours of men’s hands. . . . They do not wholly reject Experiments of meer light and theory; but they principally aim at such, whose Applications will improve and facilitate the present way of Manual Arts.” 37 Thus, it becomes clear that the intertwining of the contemplative and the practical, or what we might think of today as basic science research and applied science research, has some origins in the Baconian program to bring an element of utility into natural philosophy. While it is beyond the scope of this paper, it is intriguing to wonder what drove these seventeenth century thinkers to work so hard at creating new justifications for natural philosophy – it is not unreasonable to suspect that changes in sources or needs of funding, perhaps based in part on the introduction of even relatively simple technical apparatus and research tools, as well as possible changes in the views of wealthy donors and

36

Id. at 397. ROBERT HOOKE, MICROGRAPHIA; OR, SOME PHYSIOLOGICAL DESCRIPTIONS OF MINUTE BODIES MADE BY MAGNIFYING GLASSES (London, 1665). 37

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patrons, would have severely curtailed the emerging regressus based experimental natural philosophy without some new, practical justification. During the seventeenth century yet another formerly distinct discipline became tethered to the rapidly changing enterprise of “natural philosophy,” that of the mathematical “sciences.” Prior to its hybridization with the new mechanized and instrumental natural philosophy, the mathematical “sciences” were abstract quantitative practices that studied how to manipulate purely logical, geometric, and mathematical objects. In many cases, these mathematical sciences referenced objects in the observable world – such as the heavenly bodies studied by astronomy – but, as strictly practiced, the science did not focus on the nature or qualities of the objects, rather only on the quantitative relationships of the objects. 38 However, by the end of the century Isaac Newton controversially and famously folded even these practices into the new “natural philosophy” in his watershed 1687 treatise Mathematical Principles of Natural Philosophy. Yet, despite the dominance that Newtonian physics – and indeed a Newtonian world view of mathematized natural philosophy – achieved in the eighteenth and nineteenth centuries, the conflict among instrumentality/utility, mathematical “sciences,” and qualitative natural philosophy endured. Newton and some of his followers freely admitted that mathematical objects were artifices of human making and thus not directly representative of natural objects. And yet the mathematical disciplines of astronomy, mechanics, and geometry were so clearly linked to highly practical arts such as navigation, engineering, architecture, fortification, surveying, and gunnery that mathematics could be argued to have even greater practical utility than experimental, 38

See Peter Dear, What is the History of Science the History of? 96 ISIS 390, 397 (2005).

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mechanical natural philosophy of Galileo and Bacon that actually did not yield many truly useful applications. 39 Thus, while Christiaan Huygens famously critiqued Newton’s account of gravity in the Principia as mathematics and not natural philosophy (because Newton only gave account of the relationships among heavenly bodies and not the nature of the postulated gravitational force), this was an intellectual critique of what was essentially a category mistake in Newton’s framing of his work and not a critique of the practical value of it. In sum, the human enterprise that we think of today as “science” did not emerge as a unitary discipline from the Scientific Revolution of the seventeenth century. Instead, the pre-existing term “science” – which is better understood as a generic descriptor of any methods by which humans can attempt to obtain true knowledge, as opposed to mere belief, about any subject matter – begins to be used in conjunction with the changing premiere academic field of natural philosophy. The renowned figures of the Scientific Revolution were variously trying to graft onto the purely contemplative and qualitative tradition of natural philosophy the tools of experimental instrumentalism and mathematics to find a more fruitful way forward not just to better discover knowledge for its own sake, but also to better justify natural philosophy as the sort of activity that can have practical application. Accordingly, they are really no different from Thales in the possibly apocryphal story of his demonstration of the value of (proto)philosophy by cornering the olive oil market in Ancient Greek times, or, contemporary scientists who must justify their basic science research in terms of practical applications that it may facilitate. However, once the playing field has been even partly ceded to utilitarian science, it is hard to maintain any part of it for purely knowledge based science. Even the 39

See id. at 394-98.

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founders of the Scientific Revolution – Bacon, Galileo, Hooke, and Newton – could not control the forces they unleashed with their reconceptualization of the natural philosophy enterprise in the seventeenth century despite the fact that they remained quite committed to the quest for knowledge for its own sake. At the same time, the disparate strands of a mathematized, experimental natural philosophy that they collectively created served as the foundation for an ideology of a unitary discipline termed “science” that would become ascendant and dominant in the nineteenth century, in turn, coloring our contemporary views on what constitutes “science.”

(RE)EXTRICATING SCIENCE FROM PATENT LAW

The intellectual battles over whether any particular new conceptual system or contents of a treatise were properly part of the vaulting ambitions of “natural philosophy” or merely an applied “art” – perhaps even a “scientific art” – continued throughout the eighteenth century. However, the most crucial aspect of these debates and endeavors for this paper was that in nearly all cases the artifact of dispute was a written work and not a useful machine or other object. In other words, the output of all of these figures of the Scientific Revolution was in the form of writings. In some cases, such as Galileo’s telescopes or Hooke’s microscopes, machines or other physical artifacts were created, but they were essentially always research tools for the philosopher-scientist’s lab, not devices of practical utility for tradesmen or farmers. Further, as exemplified by the cases of both Galileo and Hooke, it was not their manufacture of telescopes and microscopes

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respectively that garnered them fame, but their use of these research tools to create new methods of knowledge and inquiry as recorded in their great written treatises. By contrast, the “useful arts” encompassing such things as tannery, blacksmithing, glassblowing and the like, remained almost completely separated in terms of methods and practitioners from the educated, affluent world of natural philosophers and early “scientists.” While Bacon et al talked about the utility of their research program, it was not clear that any of their results or grand system building had any direct impact on artisans and tradesmen in the real world. And yet, there was a long lineage of very useful improvements in techniques and apparatus for the useful arts – better plowshares, bellows for glassblowing and blacksmithing furnaces, etc. These had little to do with advancements in natural philosophy, though, and much more to do with simple trial and error as well as artistic talent and know how in manipulating observed phenomena. Advancements in the useful arts also had direct economic or commercial value in that they could lead to better agricultural yields and more efficient use of raw materials for manufacturing useful objects which in turn helped raise the standard of living of communities that developed or employed them. Thus, other than the occasional Thales-like instances of abstract knowledge being cleverly exploited for individual commercial gain, the vast majority of economic development up through the eighteenth century came from incremental trial and error advancements in the useful arts. Accordingly, this clear and wide distinction between the emerging scientific natural philosophy whose output was primarily written works of abstract knowledge on the one hand, and the continually evolving useful arts whose outputs were primarily specific practical techniques or artifacts, on the other, set the background for the Framers

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work on the IP Clause in the U.S. The Clause thus empowers Congress to “promote the progress” of both the writings of authors engaged in a mathematical, experimental form of natural philosophy (covering any number of fields) that was being transformed into a unitary ideology of “Science” and the discoveries of inventors in the fields of practical useful arts. The former was essentially a non-commercial academic exercise, while the latter was almost exclusively a commercial enterprise. This interpretation also works well with the early patent and copyright acts passed by Congress. The Patent Act of 1790 – notably entitled “An Act to promote the progress of useful Arts” – thus limited its subject matter to “any [new] useful art, manufacture, engine, machine, or device” or improvements thereon. 40 The Copyright Act of 1790, as an appropriate companion piece of legislation, contained its scope of subject matter within its very title, “An Act for the encouragement of learning, by securing the copies of maps, Charts, And books, to the authors and proprietors of such copies, during the times therein mentioned.” 41 There is, of course, no mention of fine arts such as music, painting, sculpture, drama, or dance, nor is it even clear if the term “books” was intended to include novels or other works of fiction, particularly if they were of the popular kind not especially useful for the “encouragement of learning.” Accordingly, one of the most intriguing questions beyond the scope of this present paper is how the U.S. copyright laws were twisted beyond recognition of this original Constitutional purpose to promote the progress of Science to then encompass artifacts of popular arts and culture. Certainly learned works on, say, the nature of vibration of strings that explained the observable phenomena of music should have been included in this original copyrightable subject

40 41

Patent Act of 1790, 1 Stat. 109. Copyright Act of 1790, 1 Stat. 124.

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matter. But particular artifacts such as a popular song or play seem a stretch for Constitutional copyrightable subject matter. At the same time, Congress took the relatively easy path of adopting fairly standard versions of patent and copyright laws as the same already existed in Europe (and especially England), rather than acting on the full potential of a broader or different rights system authorized by the IP Clause. This has led some commentators to suggest that judicial interpretation of U.S. statutory patent and copyright law should look as much to case law of these antecedent systems as to parsing the peculiarities of the IP Clause.42 There certainly is some logic to this, and yet it cannot be that Congress’ decision to essentially import versions of antecedent patent and copyright systems usurps the scope and limitations of the specific power(s) granted to Congress in the IP Clause. Thus, the real question is whether these systems – and some or all of the principles and interpretations established in the related case law – could properly have been legislated by Congress under the IP Clause. In some ways, this issue is potentially more problematic for the U.S. copyright system than its patent system. The U.S. patent system as authorized under the IP Clause could indeed look quite similar to antecedent European patent systems as most of those also took as their goal some version of the encouragement of innovation in the useful arts, particularly after the Statute of Monopolies was passed in England. However, copyright in England and the Continent was not so severely limited to promoting the progress of Science, and so Congress had to

42

See, e.g.. Adam Mossoff, Who Cares What Thomas Jefferson Thought About Patents? Reevaluating the Patent "Privilege" in Historical Context, 92 CORNELL L. REV. __ (forthcoming 2007); Joshua D. Sarnoff, Shaking the Foundations of Patentable Subject Matter, or Taking Exclusions for Science, Nature, and Ideas, Principles of Invention, and Parker v. Flook Seriously, paper presented at “What’s Ahead on Highway 101” conference at George Washington University School of Law, November 3, 2006 (on file with author).

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take care in not overstepping its Constitutional authority with regard to copyrightable subject matter as it adopted a version of European antecedent copyright systems. This paper therefore proposes that copyright and patent law should be seen as both complementary and conflicting systems or spheres of subject matter. In the normal course of things, the two spheres are quite different yet potentially complement each other analogously to how their respective subject matter can be complementary. To wit, scientific or natural philosophical principles regarding causes and explanations of natural phenomena, as set forth in learned treatises, can help the artisan craft better useful artifacts, while certain kinds of useful artifacts – essentially research tools like telescopes and microscopes – can assist the scientist-philosopher is his quest for further scientific principles. However, the two spheres of Constitutionally mandated subject matter may also act to cabin each other, lest the expansion of one set of rights by Congress impedes the progress of the other area of subject matter. In other words, the full exercise of the Constitutional authority to promote the progress of the useful arts (e.g., through a robust patent system) may hinder science, which is essentially “protected” by the Constitutional authority to promote the progress of science (e.g., through a copyright system). This unique conceptualization may also finally shed light on the contested value of the Framers’ decision to link the useful arts/inventions and science/writings enumerated powers in one clause by means of the “balanced sentence” structure discussed above. In particular, the decision to link together the two purpose concepts in one preamble – “to promote the progress of Science and the useful Arts” – and then entwine the grant of powers throughout the remainder of the IP Clause may well have been because they intended that both powers be executed, if at all, as a package deal.

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Thus, readings of the preamble as one concept – promoting progress of science and useful arts – are then accidentally correct after all. Congress is not required to act under the IP Clause, but if it does it must simultaneously promote the progress of both science and the useful arts by securing exclusive rights to authors of scientific materials and to inventors of discoveries in the useful arts. It may not pick and choose between the two purposes and grants of power. Given the increasing intertwining of scientific inquiry and the creation of useful artifacts around areas of mutual interest such as steam power and electromagnetic or galvanic current phenomena towards the latter half of the eighteenth century, it would have been prudent for the Framers to tread carefully when authorizing Congress to create exclusive rights in either sphere of research, i.e., academic/scientific/philosophical on the one hand, and commercial artisan/mercantile on the other. This coupling and cabining interpretation may also evidence mutual support with the sensibility of Justice Story in his famous quote from 1813 that laid the foundation for the controversial “common law” research use exception in U.S. patent law: “. . . it could never have been the intention of [Congress] to punish a man, who constructed [the patented] machine merely for philosophical experiments, or for the purpose of ascertaining the sufficiency of the machine to produce its described effects.” 43 Indeed, prior to this there were famous cases in England at the end of the eighteenth century as to whether certain patented inventions had really impermissibly patented a scientific principle – most notably the 1799 case involving Watt’s patent for a steam engine. 44 The Framers of the U.S. Constitution, as generally educated and scientifically minded 43

Whittemore v. Cutter, 29 F. Cas. 1120, 1121 (C.C.D. Mass. 1813) (No. 17,600). Hornblower v. Boulton, 8 T. R. 95 (K. B. 1799) (finding Watt’s patent for a steam engine to claim a manufacture and not a philosophical principle, the latter which would have been prohibited). 44

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individuals, would in almost all certainty have known about these controversies in the British patent system and the threats to free scientific inquiry that patents could pose if not properly cabined. Likewise, overly strong or extensive rights to scientific or engineering works of authorship under copyright could hinder the beneficial development of the useful arts by locking up ideas and their applications to an author who may have neither the ability nor inclination to actually make, use, or sell products embodying them. Of course, most European copyright systems at the time, and as it is today, did not give the copyright owner the exclusive rights to the idea per se, but the ability to tightly control copies of works describing the ideas and their applications, and thus the practically necessary conduit for transmitting the ideas and applications, could have been exploited by copyright owners in a heavy-handed manner, perhaps not unlike the seminal U.S. copyright case of Baker v. Selden which limited the reach of a copyright owner’s rights to exclude others from practicing a system of bookkeeping described and reproduced in forms in his treatise.45 Accordingly, the scope of appropriate subject matter of both the Patent Act and the Copyright Act in the U.S. may need to be reconsidered, and ideally perhaps modified, under the fuller sense of the term “science” as informed by research in the history of science as well as the reconceptualization of the coupling and cabining of the two spheres of inquiry in the IP Clause. Improbably, copyright needs to be restricted back to “scientific” subject matter – which could plausibly include any type of knowledge or learning so long as it is obtained through scientific inquiries. However, popular or fine arts such as music, fiction, dramatic works, etc. simply do not fit in the clear schema of the IP Clause as articulated herein. Patent law needs to be restricted to only inventions 45

101 U.S. 99 (1879).

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arising in the useful arts, which may largely overlap with what me might consider “technology” today. Thus, changes in the scope of patentable subject matter need not be as dramatic as those in the scope of copyrightable subject matter, but the clearer explication herein of “science” and the “useful arts” should provide a better heuristic device for patent examiners and judges in determinations of patentable subject matter. One major challenge to the tidy conceptual story I have told so far in this paper is that ever since Francis Bacon twisted Zabarella’s regressus into an argument for natural philosophy to be “useful,” significant portions of the formerly distinct fields of natural philosophy/basic science and useful arts/technology have become almost inextricably intertwined. Admittedly, this convergence has been fruitful in many cases and arguably this very “technoscience” is that which the public thinks constitutes “science” today. Further, the convergence of science and technology helped to create both a unitary ideology of “science” in the nineteenth century as well as the model of expensive “big science” that came to dominate major research universities and non-profits in the twentieth century. Of course some of the key turning points in the wedding of science and technology highlight the dark potential of both fields: military armaments and technologies beginning in the U.S. Civil War of the mid-nineteenth century increasingly brought to bear both cutting edge scientific principles and technological know-how to create increasingly deadly weapons, culminating tragically in the collaboration of prominent theoretical physicists and whiz kid technicians in the Manhattan Project of World War II which led to the development of the atomic bomb. On the positive side, cutting edge research in the life sciences has continuously been married to chemical and engineering know how to engage in research agendas that have simultaneously pushed

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forward the boundaries of what we know about the workings of the human body and directly led to the creation of new diagnostic and therapeutic devices and compounds that have brought relief to millions of previously untreatable patients. Further legal developments such as the Bayh-Dole Act of 1980 have also helped blur the line between basic science researchers and their solely copyrightable writings, on the one hand, and “translational” researchers engaged in applied science or engineering and their patentable inventions. Both kinds of activities go on at the modern research university, and the university or its faculty routinely secure both copyrights in writings and patents in inventions often arising from the same research project. In no small part, Bayh-Dole seems to have ushered in the era of the university as business enterprise, a belief that seems to be shared by judges on the Federal Circuit who held that the common law research use exception is not available to university researchers because their institution is essentially a commercial venture. 46 In fact, the only individuals who might be able to avail themselves of the common law research use exception are dilettante amateur researchers engaged in purely philosophical inquiry. 47 Nonetheless, it is still possible to (re)extricate science from technology, which would have strong implications especially for so-called “upstream patents” that some critics believe are improperly locking down what are essentially critical building blocks of the scientific enterprise with dire consequences for free scientific research going forward. In conclusion, this paper has endeavored to show that the use of research and insights from the field of history of science can be usefully employed to resolve difficult issues at the interface of science, technology, and IP. In particular, the paper argued that

46 47

See Madey v. Duke, 307 F.3d 1351 (Fed. Cir. 2002). See Roche v. Bolar, 733 F.2d 858, 862 (Fed. Cir. 1984).

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judges and commentators have by and large failed to appreciate the historical context for both “science” and the “useful arts” even though both of these terms are the linchpins for understanding the proper scope of copyrightable and patentable subject matter under the IP Clause of the U.S. Constitution. Once the proper context for these terms was determined with reference to scholarship from the history of science, it became clear that the IP Clause serves to both couple and cabin the two complementary and sometimes conflicting fields of science and the useful arts. This in turn led to a new understanding of the reasons behind the “balanced sentence” structure of the IP Clause that has never been fully justified by all the commentators who have nonetheless adopted it.

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