If you are interested in the legislative history of the America Invents Act (AIA), I recommend reading Joe Matal's A Guide to the Legislative History of the America Invents Act: Part I of II and Part II of II. Here are links to download Part I and Part II of the Guide. This article should be helpful to applicants for US patents and parties seeking to challenge issued US patents in the PTO.
As a brief summary, Part I describes the legislative history and origins of the first-to-file system and the modifications to 35 USC 102 (novelty and statutory bars), 35 USC 103 (obviousness), 35 USC 115 (inventor's declaration), 35 USC 122 (confidential status and publication of applications), and 35 USC 135 (derivation).
Part II describes the legislative history and origins of the new laws that apply to US patents. Thus, it describes the post-grant procedures, inter partes proceedings, supplemental examination, business method patent review, the new defense of prior commercial use, partial repeal of the best mode, virtual and false marking, advice of counsel, court jurisdiction, PTO funding, and rules for patent term extensions.
Although the article should prove useful, legislative history can be misleading. Indeed, the Supreme Court has warned against relying on legislative statements not anchored in the text of the statute. First, the statements may not pertain to a law that passed. It is also difficult to identify who drafted the law. Given we don't know who drafts the laws, how do we assign weight to the statements of various members of Congress? Also the legislative history of the AIA is lengthy as it stretches from 2005 to 2011. Nonetheless, organizing the legislative history of the AIA is a major undertaking so the article is a welcome start.
Copyright © 2012 Robert Moll. All rights reserved.
