WHAT HAVE AIA GOTTEN INTO?

This is the opening post in a series of blog posts examining the current state of the United States patent system, which is statutorily framed by the America Invents Act ("AIA")[1].  The AIA was signed into law on September 16, 2011.  Since that time, the AIA and its phased-in-over-time provisions have had a dramatic impact – much of it negative – on the United States patent system.

At Toikka Law Group, we pay close attention to such developments, so that we can offer our clients the best legal protection at the lowest cost.

Today I want to discuss first principles, including the Constitutional origin of the granting of patents by the United States federal government.  This particular power is enumerated in Article I, Section 8, Clause 8 of the Constitution:

The 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.

Parsing the sentence is educational, as it reveals how the Framers and Ratifiers of the Constitution referred to the specific types of intellectual property ("IP") that they wished to protect by copyright and patents, and how they referred to the owners of that IP.  Here's the sentence presented in table form:

       The Congress shall have Power … To promote the Progress of

Technology:                     Science                 and            useful Arts

                                                 by securing for limited Times to

IP Owner:                         Authors                 and             Inventors

                                            the exclusive Right to their respective

IP Type:                            Writings                and           Discoveries

Thus it is evident that the Framers and Ratifiers of the Constitution did not regard "Science" as merely the province of "Discoveries" that would be eligible for patent protection, but wished for "Authors" to receive protection for their "Writings," which historically has been provided through copyright laws, in order "To promote the progress of Science and useful Arts."

Another item of note based on the Constitutional language is that as written, the "exclusive Right" to be protected is that of Authors and Inventors, respectively.  The practical effect of this grant of an exclusive right to inventors is that US patent protection may only be granted to a true inventor.  Many other nations' patent systems grant patents to the first applicant to file, regardless of whether the applicant is the inventor.

Finally, I'll run through a quick review of the history of US patent laws, to help understand the path followed to reach the situation we're in today.

A Brief History of US Patent Laws

The Constitution was signed on September 17, 1787, and on June 21, 1788, New Hampshire became the ninth state to ratify, thereby giving effect to the Constitution.  The outgoing Confederation Congress established March 4, 1789, as the date for the new Constitutional government to begin operation.

One early act of the first Congress was the Patent Act of 1790[2], which granted the patentee, for fourteen years "the sole and exclusive right and liberty of making, constructing, using and vending to others to be used, the said invention or discovery."  This basic framework – a right to exclude others from making, using, and selling – has continued in US patent law for over 225 years.  Over that time, the breadth of patent protection has ebbed and flowed, often in line with the level of respect given to other property rights, primarily as reflected in the combination of the politics and Supreme Court rulings of the day.  For example, patent rights received extensive protection during the first third of the twentieth century, at a time when the "old" Supreme Court generally afforded extensive protection to all property rights.  During the New Deal, as protection of individual property rights diminished, so too did the Supreme Court chip away at patent rights.  That downward course prompted the commissioning and passage of the Patent Act of 1952, which ultimately reversed the trend of weakening patent rights.

The Patent Act of 1952 was commissioned to and drafted by just two lawyers.  The first was patent attorney prodigy Giles Sutherland Rich, who later served for 42 years on the two patent courts of the United States. The second was Pasquale Joseph Federico, who at the time was the chief U.S. patent examiner.  Their joint bill was enacted into law, as is, without debate, by a unanimous vote in both houses of Congress.

In future blog posts I'll explore why and how Congress chose to revamp the patent system by drafting and passing the America Invents Act.

© Russell O. Paige 2017

[1] Pub. L. No. 112-29: http://www.govtrack.us/congress/bills/112/hr1249/text.

[2] 1 Stat. 109.