Allen v. Riley

Background

A Kansas law required anyone selling a patent right in a county to file an authenticated copy of the patent with the county clerk, make an affidavit about the patent’s genuineness, and, in some cases, mark purchase notes as for a patent right. Patent owners challenged the law, saying Congress has the power over patents and a federal statute governs assignments and recordation in the Patent Office.

Reasoning

The Court considered whether the Kansas requirements conflicted with the Constitution’s grant of patent power to Congress and the federal assignment statute. The majority said Congress had not clearly taken away the States’ power to make reasonable rules to prevent fraud in the sale or assignment of intangible patent rights. The Court explained that state police powers may be used to protect citizens from deceit, so long as a state law does not nullify Congress’s power or strip essential features of federal patent rights.

Real world impact

Because the Court upheld the Kansas statute, sellers and buyers of patent rights in Kansas can be required to follow local filing and affidavit rules intended to reduce fraud. The decision leaves federal patent ownership intact and recognizes that Congress could later override state rules by enacting clear national legislation. The opinion also notes that some other States have similar laws while some courts have found such laws invalid.

Dissents or concurrances

Two Justices dissented. They believed the recording and affidavit requirements conflicted with Congress’s constitutional authority and federal patent laws. One dissenter thought the provision requiring a note to state it was for a patent right might be a valid state police measure.