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Making and Unmaking Intellectual Property: Creative Production in Legal and Cultural Perspective

Making and Unmaking Intellectual Property: Creative Production in Legal and Cultural Perspective

by Mario Biagioli (Editor), Peter Jaszi (Editor), Martha Woodmansee (Editor)

Rules regulating access to knowledge are no longer the exclusive province of lawyers and policymakers and instead command the attention of anthropologists, economists, literary theorists, political scientists, artists, historians, and cultural critics. This burgeoning interdisciplinary interest in “intellectual property” has also expanded beyond the


Rules regulating access to knowledge are no longer the exclusive province of lawyers and policymakers and instead command the attention of anthropologists, economists, literary theorists, political scientists, artists, historians, and cultural critics. This burgeoning interdisciplinary interest in “intellectual property” has also expanded beyond the conventional categories of patent, copyright, and trademark to encompass a diverse array of topics ranging from traditional knowledge to international trade. Though recognition of the central role played by “knowledge economies” has increased, there is a special urgency associated with present-day inquiries into where rights to information come from, how they are justified, and the ways in which they are deployed.  


Making and Unmaking Intellectual Property, edited by Mario Biagioli, Peter Jaszi, and Martha Woodmansee, presents a range of diverse—and even conflicting—contemporary perspectives on intellectual property rights and the contested sources of authority associated with them. Examining fundamental concepts and challenging conventional narratives—including those centered around authorship, invention, and the public domain—this book provides a rich introduction to an important intersection of law, culture, and material production.

Editorial Reviews

Lewis Hyde
“Here's a simple prayer:  Let no new law regarding ‘intellectual property’ be passed until all legislators have absorbed the treasures contained in this wonderful collection of essays.”

Lionel Bently
Making and Unmaking Intellectual Property gathers a wonderful collection of essays on the theme of intellectual property: its origins, its practices and materialities, its preoccupations, its assumptions and ways of thinking, its limitations and effects, and its alternatives. Filled with fascinating research and clear insights, this book will be of great importance not only to intellectual property scholars but to those in many of the disciplines that engage this subject, including literature, film studies, business law, and the history of science. The body of innovative work presented here will become a key reference point for scholars over the next decade.”

Matthew Jones
“I have little doubt that this collection—with its wide-ranging, multidisciplinary approach—will join the ranks of intellectual property’s most defining works. A lucid survey of the field, Making and Unmaking Intellectual Property will serve as a point of entry for readers of various disciplines interested in going beyond the popular but often unsophisticated and uninformed debates around general intellectual property. The essays presented here illuminate in deep ways the genealogy and nature of the questions posed by IP, while engaging in diverse methodologies. Insightful, smart, and great fun, this book will be extremely useful for intellectual property’s rich history and current predicaments.”

“The essays . . . [shed] light on particular, sometimes quixotic, twists and turns in modernity’s efforts to nourish and reward the fruits of human invention. Making and Unmaking Intellectual Property is worth having on the shelf . . . because it brings between covers essays by many prominent historians, anthropologists, and literary scholars working on IP.”
"Offers compelling insights that challenge central ideas and primary narratives about intellectual property (IP); it also presents new perspectives and methodologies for some well-known areas of IP that dominate scholarly and popular literature and consistently confronts simplified dichotomous IP positions, such as the individual versus the collective, private versus public domains, tangible versus intangible properties, and legality versus illegality, revealing more complex dynamics at work. . . . This book presents exceptional research, perceptive conclusions, and new knowledge that could help influence the future production of culture and formation of IP law."

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University of Chicago Press
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New Edition
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Creative Production in Legal and Cultural Perspective

The University of Chicago Press

Copyright © 2011 The University of Chicago
All right reserved.

ISBN: 978-0-226-90709-3

Chapter One


Patent Specification and Political Representation How Patents Became Rights

In colonial America and early modern Europe, patents were gifts the sovereigns could grant or withhold from their subjects. Today, instead, we are entitled to intellectual property rights in our inventions, provided we fulfill certain legal requirements. The transition from patents as privileges to patents as rights parallels the demise of political absolutism, the emergence of the modern political subject, and the development of liberal economies. I want to look at such large-scale changes through the genealogy of a mundane document of patent bureaucracy: the specification of the invention. This is the section of the application in which the inventor describes the invention in sufficient detail to enable a third party to repeat it—a requirement central to patent law in the United States and virtually every country in the world. A key reason for the ubiquity of this requirement is that specifications make the modern patent system politically acceptable by distinguishing it from traditional monopolies.

The differences between patents and monopolies were central to the founding document of anglophone patent law, the 1624 English Statute of Monopolies. While outlawing most monopolies, the statute made an exception for patents of new inventions. Patents for new inventions were seen as harmless because they took nothing away from the public which it had before. They were still monopolies, but monopolies on techniques that the public had not known or practiced—grants, so to speak, of newly discovered and uninhabited lands. But if patents of inventions could be cast as harmless because they did not take anything away from the public, today it is not uncommon to hear that patents are good and that they should be understood not as monopolies but as publications—tools for the public disclosure of new and potentially useful knowledge. The real enemies of public knowledge, we are told, are not patents but trade secrets.

It is the specification that, by making the invention known to the public, has allowed a "harmless monopoly" to be recast into the win-win situation that William Robinson, the renowned U.S. jurist, described in 1890: "A patent is a contract between the inventor and the public, by which the inventor, in consideration that the exclusive use of his invention is secured to him for a limited period of time, confers upon the public the knowledge of the invention during that period and an unrestricted right to use it after that period has expired.... The specification is the instrument in which the terms of these mutual considerations and promises are declared, and on its completeness and accuracy depends the validity and the value of the contract itself."

This contract—the "patent bargain"—was alien to early modern inventors and their rulers. While inventions were often described to state officials, those descriptions were not required to be either public or sufficiently detailed to enable the replication of the invention. During the eighteenth century, especially in England, the descriptions included in the body of the patent grew in size, but they never approached the length and detail of a modern specification. 5 Enabling specifications became necessary in England only toward the end of the century—a requirement that was then codified in U.S. and French patent law around 1790 when, with the introduction of new political regimes, patents became rights. Inventions, I argue, gained specifications when people gained political representation.

Galileo to Jefferson

Two examples, two hundred years apart, capture this dramatic transformation. The first dates from September 1594, when the senate of the Republic of Venice granted Galileo a twenty-year privilege for a water pump. The entire description of the invention in the application and final text of the privilege boils down to two lines in which the pump is said to "raise water and irrigate land, [and] with the work of a single horse it will keep twenty water spouts connected to it going at the same time." In Venice—but also in early modern Florence, Germany, France, England, the Netherlands, as well as colonial America—state officials expected inventors to provide basic descriptions and models of their devices but seemed to use that information primarily to assess possible overlaps between a new application and preexisting patents or to develop an archive of prior art to adjudicate possible future infringement disputes. These summary descriptions were not meant to enable the reproduction of the invention after the patents' expiration—a function that was typically taken up by provisions about the training of workers and artisans to build and operate the invention in loco—a "disclosure" through bodies rather than texts. In securing a patent, the invention's local utility was vastly more important than its detailed description. Terminally swampy Venice had a soft spot for water pumps, and Galileo was granted a patent for a design he promised to be a particularly efficient one.

It is therefore striking that, when we fast-forward two centuries to the first U.S. Patent Act of April 1790, we find that applicants had to

deliver to the Secretary of State a Specification in Writing, containing a description, accompanied with drafts or models ... of the thing or things by him or them invented or discovered, and described as aforesaid in the said Patents, which specifications shall be so particular, and said models so exact, as not only to distinguish the invention or discovery from other things before known and used, but also to enable a Workman or other person skilled in the Art or Manufacture ... to make, construct, or use the same, to the end that the public may have the full benefit thereof after the expiration of the Patent term.

Interestingly, the first French Patent Law of 1791 introduced comparable specification requirements. Also striking was the U.S. 1790 Patent Act's provision that the newly required specifications could be accessed and studied by any interested citizen even while the patent was valid, not just after its expiration. The invention itself could not be copied while protected by the patent, but the knowledge included in the specification became public at the time the patent was issued—a change found in the French Patent Law of 1791 as well.

What changed radically between 1594 and 1790 were not just the standards of patent descriptions but their political economy. Patents did not simply become more descriptive, but, together with their inventors and their users, they entered a brand new legal regime that hinged on representation. The transformation of the subjects of political absolutism into a politically sovereign "public" set the conditions of possibility of the patent bargain—the contract between inventors and citizens. At the same time, it was the introduction of patent specifications that made that contract politically defensible by distancing it from the "odious monopolies" of the ancien régime.

More stark differences emerge when we compare privileges and modern patents. Like most privileges, Galileo's was to expire within a year unless the invention was put to work. So strict reduction to practice requirements fit well the logic of the privilege and are found, in fact, in many other early modern countries. Privilege-granting authorities wanted to maximize local utility, not to disclose knowledge about the invention. (In the absence of international patent agreements, public disclosure of an invention could facilitate easy and undesirable transfer to nearby countries.)16 What mattered was that inventions worked, not how they worked. If inventors could show that they had reduced their devices to practice or could provide working models for them, why would the king or the state care about how they worked?

The 1790 Patent Act turned this upside down. It specified no reduction to practice requirements but stated that a patent would be voided if the specification "does not contain the whole of the truth concerning his invention or discovery; or that it contains more than is necessary to produce the effect described." 17 This does not mean that the reduction to practice requirement had disappeared but rather that it was being reconceptualized in relation to the newly introduced specification requirements. By 1841 in Hildreth v. Heath, the court stated that "if a machine be invented and described in such a manner that it may be made and used ... the invention may be said to be reduced to practice." It appears, then, that specification requirements entail reduction to practice requirements in the sense that the applicant is either asked to show evidence of an actual embodiment of the invention (actual reduction to practice) or to describe in detail what she/he takes to be the best way to construct his/her invention (constructive reduction to practice). In the patents-as-privileges regime, reduction to practice or working requirements performed the role we now give to specifications. But in the patents-as-rights regime reduction to practice requirements have been logically subsumed under specification requirements to the point that they may be fulfilled not by showing an actual device but a detailed textual and pictorial description of a possible device. Reduction to practice has gone virtual.

That specifications were absent in the colonial period but began to emerge after the Declaration of Independence to become eventually codified in the first U.S. Patent Act reinforces a correlation between political representation and patent representations. The hypothesis gains further strength when we notice that while the 1790 act marked a sharp departure from both earlier European and colonial American patent practice, its provisions were closely matched by the first French postrevolutionary patent law. Passed in January 1791, that law stated that the applicant had to provide a complete, enabling disclosure of the invention; the disclosure was to be accessible to the public; and the patent would be voided if the specification was found wanting. Comparable specification requirements were eventually adopted throughout Europe.

Introducing Originality, Reinventing Novelty

Together with the shift from reduction to practice to specification came an equally drastic reframing of what it meant for an invention to be new. While related in practice, originality and novelty are logically distinct: the former concerns the authorship of the invention, while the latter refers to the differences between an invention and others that preceded it. One may be the original inventor of a device (in the sense of inventing it oneself), but that does not rule out the possibility that someone else might have already invented an equivalent device.

In 1790, U.S. patent law linked patentability to originality, saying that a patent would be void if it was proven that the patentee was not the "first and true inventor or discoverer" of the invention. But it also added a novelty requirement: an "Art, Manufacture, Engine, Machine, or Device, or any improvement therein" could be patented only if "not known or used before." Although the act did not specify where the invention was supposed to be unknown and unused prior to its patenting, legislative history indicates that the lawmakers meant "anywhere in the world." Two important consequences followed from these requirements. First, no U.S. patent could issue for an invention previously patented somewhere else. Second, an invention could be rendered unpatentable in the United States not only by operating it prior to the application, but also by making it publicly known. Though not always applied, the originality and novelty requirements of the 1790 Patent Act represented a sharp break from previous doctrine. Until then the granting of privileges (in England, continental Europe, and colonial America) had been utterly independent from the determination of whose mind had first produced the idea of the invention. Privileges went to the first person to put a certain invention to work in a certain country. It was quite reasonable to focus on novelty relative to a place (rather than on originality or absolute novelty) because privileges were initially aimed at obtaining useful manufactures that were previously unavailable in a specific country. It was therefore immaterial whether the inventor had extracted the invention from his/her mind or from the country next door—"whether it is learned by travel, or by study it is the same thing."

Seen against this background, the shift inscribed in the first U.S. Patent Act was literally categorical: it substituted a geographical construct (local novelty) with a mentalistic one (originality). It also turned novelty (a notion that had been previously local and relative) into an absolute one—novelty anywhere. Thus it changed the very referent of novelty, not only its geographical scope. While the patents-as-privileges regime was primarily concerned with the novelty of an invention in a certain place, early U.S. patent law started to conceive of novelty in terms of the difference between a patent and another that preceded it. It looked at the relationship between patent and prior art, not at whether a material invention had or had not been brought to a certain place. The shift was so radical that the notion of geographical novelty central to the patents-as-privileges regime has become oxymoronic in modern patent law. Modern patent law construes novelty in strictly temporal, not spatial, terms.

Authors in Space, Not Things in Place

The introduction of specifications redefined the notion of invention in textual terms. Specification requirements mandated that the inventor write down the invention in order to describe it in a way that could be understood and made replicable by the public as represented by the "person of ordinary skill in the art." This created the conditions of possibility for treating the actual material invention (the entity that used to be protected by early modern privileges) as separate from its "idea" (the entity protected by modern patent law). It was a paper item—the specification—that put the "intellectual" into "intellectual property." Creating a space for the idea as distinct from its material embodiment, specifications made it possible for that idea to become the immaterial "essence" of the invention. This in turn recast the material invention (which had previously been the sole instantiation of the invention) as just one of the possible (and therefore inessential) embodiments of such an idea. This was not a process of abstraction from particular to general but rather one of separation between form and matter—a process discussed by Pottage and Sherman in chapter 15 of this volume.

Like the 1790 Act, modern patent law does not allow for the patenting of ideas or principles in and of themselves. Much as in copyright, where the author is granted IP rights in his/her "personal expression" conceived not as a free-standing abstract entity but as something fixed in a medium, modern patents protect "inventive ideas" only when they are embodied in something material. This view was implicit in the specification requirements introduced in 1790 but became explicit in the 1793 Patent Act: "in the case of any machine, he [the inventor] shall fully explain the principle and the several modes in which he has contemplated the application of that principle or character." The invention becomes neither the abstract idea of the philosopher nor the immanent material device of the early modern engineer but rather a principle with various possible embodiments. Its two halves, however, began to lead separate lives. Inscribed on a piece of paper, the "inventive idea" moved into the halls of soon-to-be-established patent offices to become the primary focus of patent law and practice, while its material embodiments stayed outside, in the world of manufacture and commerce.


Excerpted from Making and Unmaking INTELLECTUAL PROPERTY Copyright © 2011 by The University of Chicago . Excerpted by permission of The University of Chicago Press. All rights reserved. No part of this excerpt may be reproduced or reprinted without permission in writing from the publisher.
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Meet the Author

Mario Biagioli is distinguished professor of law and science and technology studies and director of the Center for Innovation Studies at the University of California, Davis. Peter Jaszi is professor of law and director of the Glushko-Samuelson Intellectual Property Clinic at American University's Washington College of Law. Martha Woodmansee is professor of English and law at Case Western Reserve University and a founding director of the International Society for the History and Theory of Intellectual Property. 

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