IP: A historical perspective on the America Invents Act

A look at what led up to the landmark legislation

Widely hailed as the most sweeping change to American patent law since 1956, the Leahy-Smith America Invents Act (AIA) became law on Sept. 16, 2011, but most of its provisions don’t take effect until March 16, 2013.

The Copyright Clause of the U.S. Constitution authorizes Congress to promote the advancement of science by securing for inventors the exclusive rights to their discoveries, for a limited time. The nation's first patent issued on July 31, 1790, for an improved process of making potash. Two other patents were issued that year, one to a man named Evans who was a serial inventor. Thomas Jefferson implemented the Patent Act of 1793 in his capacity as Secretary of State. Evans later accused Jefferson of patent infringement. Jefferson groused about Evans's entitlement to the claim, but then settled. It seems that ambiguities in patent claim language cut two ways even back then.

But patents do not always end up encouraging innovation. Many experts believe that the Wright brothers procured a patent position on their airplane then used the grant to stifle competition. This meant that the U. S. lagged far behind Europe in aviation technology at the outbreak of World War I. There is much concern over the quality of existing patents, many of which are invalidated only after expensive litigation. The quality problem is exacerbated when examination suffers because the Patent Office does not have budgetary authority to set its own rates, and Congress may divert fees collected by the Patent Office. The U. S.s patent system operates under a different philosophy than does that of other countries, so there is a movement to harmonize.

The AIA addresses these problems by reform. While maintaining a one year grace period for inventors who publish their inventions before filing a patent application, the AIA harmonizes with other countries’ policies by adopting a 'first to file' philosophy—departing from the uniquely American 'first to invent' philosophy of the past. Post-grant review processes are changed making it easier to invalidate an issued patent. It will be possible for third parties to submit materials for consideration by a patent examiner for a limited time before the patent issues. The Patent Office now has authority to set its own fees in recouping its aggregate expenses.


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Dan Cleveland Jr.

Dan Cleveland Jr. is a partner in the Boulder, Colorado office of Lathrop & Gage and practices exclusively in the intellectual property field of law,...

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