Memo: Patent Law | jdickins | July 23, 2012


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Memo: Patent Law

As you may know, in early September, 2011, President Obama signed the “America Invents Act” (“AIA”) into law. The bill represents a major overhaul of U.S. patent law (the first such overhaul since 1952), and contains, within its 110 pages, substantial changes to the text of the Patent Act.1

This makes for something of a nightmare when it comes to teaching introductory patent law. We could focus on the new statute, as amended, for the obvious reason that that is, at the moment, the law of the land. There are, however, serious difficulties with this approach. To begin with, the new statute has many provisions that have not yet been interpreted by the courts (or the Patent and Trademark Office, the primary administrative agency charged with enforcing the Patent Act), and there is a great deal of confusion about what many of them mean. A significant fraction of the IP legal community – practicing lawyers, the PTO, members of the business community in industries affected by the changes – are, as I write this, engaged in a furious attempt to figure out exactly what Congress has done, what the new statute means, and what its implications are going to be for patent law going forward. It will take a considerable time for the legal system to digest these changes, and it is my belief that you will be better served by learning the baseline from which the changes were made than in trying to learn a body of law that is, at the moment, confusing even to experienced practitioners.

Furthermore, “old” law will continue to be applied for many years to come. The AIA itself expressly provides that some of its provisions are to take effect immediately, but many others are to be “phased in” over the next several years In addition, a patent infringement case filed in 2013 (or 2020, for that matter) might be based on a patent issued in 2010 (or 2005, or 2000); if a defendant in that case were to argue (as defendants in patent infringement cases almost invariably do argue) that the patent was invalidly granted, that defense will be assessed against the law in effect at the time of the issuance of the patent (i.e., 2010, 2005, or whichever date applies in the particular case).

Finally, although the overhaul accomplished by the AIA is substantial, it most emphatically does not sweep away the body of patent law that came before it. The changes that the new statute has made will be implemented, over the next several years and even decades, against the background of the law as it had developed up to September, 2011. To put it differently: the new statutory provisions will take their meaning with reference to the old statutory provisions (and the court decisions interpreting those earlier provisions).

As a consequence, we will actually spend most of our time in this Unit looking at the “old” Patent Act – the statute that was in effect as of September 15, 2011 (the date preceding the date upon which the AIA entered into force). There are several other reasons for taking this rather unusual step:

I have prepared (and posted on Blackboard) two documents to help us through this material. the first (entitled “Patent Act – Excerpts) contains an excerpt of key provisions from the old Patent Act; the statutory references in the syllabus below all refer to this document. I have also posted a good, brief summary of the AIA, and the changes it implements, reprinted from the Pennsylvania Bar Association’s Intellectual Property Newsletter.

1If you are interested, the full text of the statute can be downloaded here:
There has been, as you might imagine, an enormous amount of commentary about the changes made by the statute; good starting points, if you are interested in this issue, can be found here: obama-for-signature.ars and


Text Information

June 11, 2013

Professor David Post


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