Chapter §7A.02 Sense of Congress and Legislative History for Post-AIA 35 U.S.C. §102

• Jurisdiction: United States

§7A.02 Sense of Congress and Legislative History for Post-AIA 35 U.S.C. §102

Relevant to interpretation of the amended 35 U.S.C. §102 are two "sense of Congress" provisions included in §3 of the AIA. These provide:

(o) SENSE OF CONGRESS.—It is the sense of the Congress that converting the United States patent system from "first to invent" to a system of "first inventor to file" will promote the progress of science and the useful arts by securing for limited times to inventors the exclusive rights to their discoveries and provide inventors with greater certainty regarding the scope of protection provided by the grant of exclusive rights to their discoveries.

(p) SENSE OF CONGRESS.—It is the sense of the Congress that converting the United States patent system from "first to invent" to a system of "first inventor to file" will improve the United States patent system and promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote greater international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries. ¹⁶

Although Congress's stated intent of "provid[ing] inventors with greater certainty regarding the scope of protection"¹⁷ provided by patents is laudable, it is not clear that the AIA will actually achieve this goal. The post-AIA version of 35 U.S.C. §102, for example, is just as complicated and riddled with ambiguity (if not more so) than its pre-AIA counterpart. The byzantine wording of post-AIA §102 stands in sharp contrast to the straightforward manner in which other countries define patentable novelty (viz., the European Patent Convention's streamlined Article 54¹⁸).

Moreover, although Congress speaks of promoting harmonization between the U.S. patent system and foreign patent systems,¹⁹ it is not clear that the AIA achieves this goal, either. As described below, §3 of the AIA did not implement a European-style system of first to file with absolute novelty. Rather, the post-AIA version of §102 puts into place a unique hybrid system that preserves many aspects of the pre-AIA grace period found in 35 U.S.C. §102(b) (2006). Rather than a true "first to file" system, the AIA created what is better described (at least in some circumstances) as a "first inventor to disclose" system.²⁰

The two "sense of Congress" provisions quoted above are an...