Part 2: What Was Here Before AIA Got Here?

This is the second 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 – in my view, 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.

In my last post, I discussed first principles, including the Constitutional origin of the granting of patents by the United States federal government.  I also discussed the drafting of the Patent Act of 1952, which was drafted by experts and enacted into law, without debate, by a unanimous vote in both houses of Congress.  This post discusses the framework of the 1952 Act, and some of the changes to that law, leading to the drafting and passage of the AIA.

Three Requirements

The Patent Act of 1952 codified three requirements that an invention must meet in order to obtain patent protection:

  • patentable subject matter,

  • novelty (and utility), and

  • non-obviousness.

The requirements of novelty and utility are typically not matters of contention.  Utility is generally easily shown, and novelty can be established by applying for a patent before one year has elapsed since the invention was publicly known.

Patentable Subject Matter

Patentable subject matter is defined by Section 101 of the Patent Act:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.[2]

(italics added) This definition of patentable subject matter is nearly unchanged from the Patent Act of 1793, which was drafted largely by Thomas Jefferson, who was at the time Secretary of State.


Section 103 of the Patent Act of 1952 codified the requirement that in order to be patented, an invention could not be obvious:

A patent for a claimed invention may not be obtained … if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

(italics added)  By virtue of this section of the law, a "person having ordinary skill in the art" is the standard by which an invention must be judged to be non-obvious.  It is important to note that the skill level is ordinary, not expert.  This is consistent with the disclosure requirements of a patent, which I will discuss later.

Term of the Patent

The Patent Act of 1952 continued the 1861 Patent Act's grant of 17 years of protection from the date a patent is granted.

Changes to the Patent Act of 1952

Over the years, although the 1952 Act retained its basic structure, significant changes were made to the Act to accommodate international patent developments or address flaws in the 1952 Act.

1975: Amendments to accommodate the Patent Cooperation Treaty, which was signed in 1970 and went into effect in 1978.  The most impactful primary amendments were related to further definitions of novelty, particularly related to applications involving foreign inventors.

1984: Applicants were given the opportunity to extend the term of a patent to compensate for delays associated with securing permission from the Food and Drug Administration to bring a product to market.

1994: To implement patent harmonization aspects included in the Uruguay Round of Negotiations of the General Agreement on Tariffs and Trade (GATT), the term of a patent was changed from its historical length of 17 years from issue, to 20 years from the earliest application date.

The above amendments, combined with increasing pressure from the international community to harmonize the US patent system with international patent systems, created the climate that led to the drafting and passage of the America Invents Act.

© 2017 Russell O. Paige, All rights reserved.

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

[2] 35 U.S. Code § 101.