We think of the protection of intellectual property (patents, trademarks, copyrights, trade secrets) as matters of Federal law. What about the states? Can, say, Pennsylvania protect an invention by state law independent of the Federal government?
“…This Constitution, and the laws of the United States… shall be the supreme law of the land…”
The Federal protection of inventions is specifically authorized by the U.S. Constitution:
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.”
Independent of Federal patent law, California enacted a state law to prohibit the direct copying of a product by using an example of the product to create a mold. California concluded that using a competitor’s product to create a mold was unfair competition. The California law did not prohibit copying the product, just doing so using a mold taken from the product itself.
Was the California statute preempted by the Federal patent statute and unenforceable under the Supremacy Clause?
In Interpart Corp. v Imos Italia, the Federal Circuit Court of Appeals upheld the California law, concluding that the purpose and effect of the California law was to prevent competition that California considered unfair, not to prevent copying the product, and that California’s statute was not preempted by the Supremacy Clause.
But, fans of states’ rights, don’t get too comfortable.
Florida, the land where water is never far away, enacted a state statute to protect boat manufacturers. The Florida statute prevented a competitor from using someone else’s boat hull to make a mold for a competing boat hull. The statute contained no time limitations – a boat hull was protected forever. The Florida statute also did not require the developer of the boat hull to demonstrate that there was anything new about the boat hull.
Bonito Boats sued Thunder Craft Boats under the Florida statute, alleging that Thunder Craft used a Bonito boat to create a mold for a Thunder Craft boat. Bonito’s hull was not protected by any U.S. patent. The case made it to the U.S. Supreme Court, which slapped down the Florida statute and disapproved of Interpart v Imos Italia. The Supreme Court concluded that if a patent is expired, or no patent is issued at all, then:
“…ideas once placed before the public without the protection of a valid patent are subject to appropriation without significant restraint.”
The Supreme Court had little sympathy for the argument that Florida, like California in Interpart v Italia, was not preventing all copying, just the copying that was unfair. The Court concluded that using another boat as a mold was the most effective way to copy a boat hull and that such copying is the public’s right, absent a U.S. patent.
“The Florida law substantially restricts the public’s ability to exploit an unpatented design in general circulation, raising the specter of state-created monopolies in a host of useful shapes and processes for which patent protection has been denied or is otherwise unobtainable. It thus enters a field of regulation which the patent laws have reserved to Congress. The patent statute’s careful balance between public right and private monopoly to promote certain creative activity is a “scheme of federal regulation . . . so pervasive as to make reasonable the inference that Congress left no room for the States to supplement it.” “
In short, the Federal patent system leaves no room for patent-like rights granted by a state. Thunder Craft was free to copy Bonito’s boats and Bonito was out of luck. More generally, reverse engineering using any means is perfectly fine for un-patented designs and technologies.
Bonito Boats went out of business two years after the decision.
Seven years after the demise of Bonito Boats, Congress addressed copying of boat hulls in the Digital Millennium Copyright Act of 1998. That Federal statute allows the developer of a new hull to register the design and receive ten years of protection.
To answer our original question, no, Pennsylvania cannot protect inventions. The only way to protect an invention in the U.S. is with a U.S. patent.
— Robert Yarbrough, Esq.