Giles Sutherland Rich
Encyclopedia
Giles Sutherland Rich was a judge on the United States Court of Customs and Patent Appeals
(CCPA) and later on the United States Court of Appeals for the Federal Circuit
(CAFC), and arguably had more influence than any other individual on modern U.S. patent law.
Rich was born May 30, 1904 in Rochester, New York
. He graduated from Columbia Law School
in 1929, and began working as a patent attorney
at his father's New York City
law firm that same year. He soon also began guest lecturing on patent law, and during the late 1940s, he became the president of the New York Patent Law Association, and in 1947 became part of a two-person committee to draft a new U.S. patent statute, all while continuing to practice law full time. His partner on the statute drafting committee was Pasquale Joseph Federico
, the chief patent examiner of the U.S. Patent Office
. After four years of work, Rich and Federico's statute draft was introduced in Congress by Joseph Bryson (D-SC) in 1951. After passing both houses without debate, as part of a "consent bill", it was signed into law by President Truman
in 1952, to take effect in 1953. It was the first full revision of U.S. patent law since the Patent Act of 1836.
In 1956, Rich was nominated by President Dwight Eisenhower to become a judge on the U.S. Court of Customs and Patent Appeals (CCPA), which had jurisdiction for certain cases from the U.S. Patent Office, the U.S. Customs Court, and the U.S. International Trade Commission
. He served as chief judge of the CCPA for part of that time. Upon passage of the Federal Courts Improvement Act of 1982, the CCPA and the appellate division of the Court of Claims were merged into the new Court of Appeals for the Federal Circuit
(CAFC), and six judges from the CCPA, including Judge Rich, were transferred to the CAFC. Judge Rich served on the CAFC until his death in 1999. At 95, he had become the oldest living federal judge; he never took senior status
, by which most judges of advanced age effectively retire.
Judge Rich's judicial opinions include some of the most groundbreaking, influential, and controversial to modern U.S. patent law. He wrote opinions in which the court struck down prior rules against the patenting of living things (Chakrabarty v. Diamond), software-implemented inventions (In re Diehr), and business methods (State Street Bank v. Signature Financial Group), saying those rules did not have a proper basis in the patent statute (which he had co-written), and opening the way for inventors to receive patents in those areas of subject matter. (The earlier two of these decisions were later affirmed by the U.S. Supreme Court
; see Diamond v. Chakrabarty
and Diamond v. Diehr
.)
In re Diehr and especially State Street Bank v. Signature Financial Group are highly controversial decisions. Many in the academic and legal community think that the cases were wrongly decided and are examples of judicial activism on the basis of a pro-patentee agenda, and the legal reasoning utilized in these decisions has been severely criticized. For example, in State Street Bank v. Signature Financial Group, Judge Rich justified his conclusion on the basis that the business method exception to patentability was abolished by the 1952 Patent Act. However, this line of reasoning is contradicted by Judge Rich himself, among others. He had earlier stated, in a law review article written not long after the passage of the 1952 Patent Act -- "The Principles of Patentability", 28 Geo. Wash. L. Rev. 393 (1960) -- that Section 101 of the Act denied patent protection to business methods, observing that the diaper service, "one of the greatest inventions of our times," was patent-ineligible because it was a business method. The State Street decision was substantially overruled in the Federal Circuit's 2008 decision in In re Bilski
.
A prominent annual intellectual property moot court competition, run by the American Intellectual Property Law Association
, starting in 1973, was named after him.
United States Court of Customs and Patent Appeals
The United States Court of Customs and Patent Appeals is a former United States federal court which existed from 1909 to 1982 and had jurisdiction over certain types of civil disputes.-History:...
(CCPA) and later on the United States Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
(CAFC), and arguably had more influence than any other individual on modern U.S. patent law.
Rich was born May 30, 1904 in Rochester, New York
Rochester, New York
Rochester is a city in Monroe County, New York, south of Lake Ontario in the United States. Known as The World's Image Centre, it was also once known as The Flour City, and more recently as The Flower City...
. He graduated from Columbia Law School
Columbia Law School
Columbia Law School, founded in 1858, is one of the oldest and most prestigious law schools in the United States. A member of the Ivy League, Columbia Law School is one of the professional graduate schools of Columbia University in New York City. It offers the J.D., LL.M., and J.S.D. degrees in...
in 1929, and began working as a patent attorney
Patent attorney
A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing an opposition...
at his father's New York City
New York City
New York is the most populous city in the United States and the center of the New York Metropolitan Area, one of the most populous metropolitan areas in the world. New York exerts a significant impact upon global commerce, finance, media, art, fashion, research, technology, education, and...
law firm that same year. He soon also began guest lecturing on patent law, and during the late 1940s, he became the president of the New York Patent Law Association, and in 1947 became part of a two-person committee to draft a new U.S. patent statute, all while continuing to practice law full time. His partner on the statute drafting committee was Pasquale Joseph Federico
Pasquale Joseph Federico
Pasquale Joseph Federico was a lifelong mathematician and longtime head of the United States Patent Office.-Biography:He was born in Monessen, Pennsylvania...
, the chief patent examiner of the U.S. Patent Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
. After four years of work, Rich and Federico's statute draft was introduced in Congress by Joseph Bryson (D-SC) in 1951. After passing both houses without debate, as part of a "consent bill", it was signed into law by President Truman
Harry S. Truman
Harry S. Truman was the 33rd President of the United States . As President Franklin D. Roosevelt's third vice president and the 34th Vice President of the United States , he succeeded to the presidency on April 12, 1945, when President Roosevelt died less than three months after beginning his...
in 1952, to take effect in 1953. It was the first full revision of U.S. patent law since the Patent Act of 1836.
In 1956, Rich was nominated by President Dwight Eisenhower to become a judge on the U.S. Court of Customs and Patent Appeals (CCPA), which had jurisdiction for certain cases from the U.S. Patent Office, the U.S. Customs Court, and the U.S. International Trade Commission
United States International Trade Commission
The United States International Trade Commission is an independent, bi-partisan, quasi-judicial, federal agency of the United States that provides trade expertise to both the legislative and executive branches. Further, the agency determines the impact of imports on U.S...
. He served as chief judge of the CCPA for part of that time. Upon passage of the Federal Courts Improvement Act of 1982, the CCPA and the appellate division of the Court of Claims were merged into the new Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
(CAFC), and six judges from the CCPA, including Judge Rich, were transferred to the CAFC. Judge Rich served on the CAFC until his death in 1999. At 95, he had become the oldest living federal judge; he never took senior status
Senior status
Senior status is a form of semi-retirement for United States federal judges, and judges in some state court systems. After federal judges have reached a certain combination of age and years of service on the federal courts, they are allowed to assume senior status...
, by which most judges of advanced age effectively retire.
Judge Rich's judicial opinions include some of the most groundbreaking, influential, and controversial to modern U.S. patent law. He wrote opinions in which the court struck down prior rules against the patenting of living things (Chakrabarty v. Diamond), software-implemented inventions (In re Diehr), and business methods (State Street Bank v. Signature Financial Group), saying those rules did not have a proper basis in the patent statute (which he had co-written), and opening the way for inventors to receive patents in those areas of subject matter. (The earlier two of these decisions were later affirmed by the U.S. Supreme Court
Supreme Court of the United States
The Supreme Court of the United States is the highest court in the United States. It has ultimate appellate jurisdiction over all state and federal courts, and original jurisdiction over a small range of cases...
; see Diamond v. Chakrabarty
Diamond v. Chakrabarty
Diamond v. Chakrabarty, , was a United States Supreme Court case dealing with whether genetically modified organisms can be patented.-Background:...
and Diamond v. Diehr
Diamond v. Diehr
Diamond v. Diehr, , was a 1981 U.S. Supreme Court decision which held that the execution of a physical process, controlled by running a computer program was patentable...
.)
In re Diehr and especially State Street Bank v. Signature Financial Group are highly controversial decisions. Many in the academic and legal community think that the cases were wrongly decided and are examples of judicial activism on the basis of a pro-patentee agenda, and the legal reasoning utilized in these decisions has been severely criticized. For example, in State Street Bank v. Signature Financial Group, Judge Rich justified his conclusion on the basis that the business method exception to patentability was abolished by the 1952 Patent Act. However, this line of reasoning is contradicted by Judge Rich himself, among others. He had earlier stated, in a law review article written not long after the passage of the 1952 Patent Act -- "The Principles of Patentability", 28 Geo. Wash. L. Rev. 393 (1960) -- that Section 101 of the Act denied patent protection to business methods, observing that the diaper service, "one of the greatest inventions of our times," was patent-ineligible because it was a business method. The State Street decision was substantially overruled in the Federal Circuit's 2008 decision in In re Bilski
In re Bilski
In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , was an en banc decision of the United States Court of Appeals for the Federal Circuit on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of...
.
A prominent annual intellectual property moot court competition, run by the American Intellectual Property Law Association
American Intellectual Property Law Association
The American Intellectual Property Law Association is a national bar association that was formed in 1897 to improve intellectual property laws and educate the public about such issues....
, starting in 1973, was named after him.