The Government Giveth, and the Government Taketh Away: Patents, Takings, and 28 U.S.C. § 1498


The argument over whether patents are protected by the Fifth Amendment’s Takings Clause has largely been confined to normative grounds. To the extent that these arguments reference the 1910 Patent Act, the statute that enables patentees to recover “reasonable and entire” compensation for infringement by the government (later codified as 28 U.S.C. § 1498), they conclude that the provision adds little to the argument. And in Zoltek Corp. v. United States, the Court of Appeals for the Federal Circuit determined that the very existence of § 1498 indicates that there is no Fifth Amendment claim for patent infringement, since an independent Constitutional claim would render § 1498 superfluous. This Note argues that the Federal Circuit’s decision misreads its own and Supreme Court precedent, and the history of § 1498. Before and after 1910, Congress and the Supreme Court never deviated in their assertions that patents are property protected by the Fifth Amendment. Further, the Supreme Court and the Court of Claims (predecessor to the Federal Circuit) both applied the same legal rules to patent and real property takings prior to 1910. But the 1910 Patent Act was written before the re-interpretation of the Takings Clause as a self-executing provision. As enacted, it contains at its core a now-superseded understanding of the Fifth Amendment. This dynamic drove the Federal Circuit’s erroneous decision in Zoltek. The Note concludes with an alternative reading of § 1498 that saves it from superfluity while giving effect to its intent, to provide patentees just compensation for infringement by the government.


Intellectual Property Law

Date of this Version

February 2007