28 U.S.C. § 1498(a) and the Unconstitutional Taking of Patents

Joshua I. Miller, George Washington University

Abstract

Eminent domain requires a showing of two elements: a property right; and a proper venue to bring suit against the government. 28 U.S.C. § 1498(a) grants patent owners the right to sue the United States for the unauthorized use of patents. This statute and its predecessors have long been viewed as an exercise of eminent domain over the patent property.

The Federal Circuit ignored this view in Zoltek v. U.S., holding that patents are not subject to eminent domain. However, Congress has acknowledged that litigation costs are a necessary part of a patent taking. If, as precedent established long before Zoltek, § 1498(a) is an eminent domain statute, its grant of litigation costs to only some entities is unconstitutional under the Fifth Amendment’s just compensation requirement.

This article presents the argument that § 1498(a) is unconstitutional. It argues that patents are a species of property and that § 1498(a) was intended to provide the proper venue for a patent owner to bring suit against the government for its exercise of eminent domain in using a patent without authorization. It then discusses the just compensation requirement and the constitutional infirmity within § 1498(a) and presents an amendment to cure that infirmity.