Evolution of the U.S. Patent System

August 08, 2017

Starting as a collection of colony-specific patent councils, the patent system in the United States has evolved dramatically from its origins as a model of the 1624 English Statute of Monopolies and the Letters Patents system characteristic of 17th century England.

The U.S. Patent Act of 1790 was the first federal patent statute of the United States. This act vested the power to grant patents to the “Patent Board”; which consisted of the Secretary of State (who, at the time, was Thomas Jefferson); the Secretary of War (Henry Knox); and the Attorney General (Edmund Jennings Randolph). The Patent Act of 1836 formally established the Patent Office as an organization under the Department of State and appointed a Commissioner. Henry Leavitt Ellsworth, the first commissioner, immediately began building a fire-proof building to house the office in Washington, D.C. near the existing building. Before the fire-proof site was finished, a fire erupted in the existing offices and destroyed 7,600 of the 10,000 patents issued in the patent system’s forty-six years of existence, as well as several thousands of models and other documents.[1] This destruction resulted in an 1837 amendment to the Patent Act of 1836 requiring two copies of a patent application to be submitted, a requirement that was discontinued when the office began printing copies of the applications as it received them. The Patent Office moved to the fire-proof office in 1864 and quickly filled it with new applications, models, and documents. Even though the building was fire-proof, its contents were not. On September 24th 1877, another blaze broke out in the offices, destroying tens of thousands of models and drawings. Finally, in 1880, patent models were no longer required to accompany applications when the patent office officially adopted a congressional ruling from ten years prior that abolished the legal requirement for models.

The relationship between public disclosure and patent filing also evolved. Around 1800, the definition of a “new” invention depended on whether the invention was known before it was claimed to have been invented. This approach was abused by applicants who delayed filing an application until competition was imminent and, in the 1829 Supreme Court case Pennock v. Dialogue, the old statutes were formally construed to deny patent protection to anyone who had publicly used the technology before.  This was changed in 1839, when a grace period of two years was instituted between initial public disclosure and filing[2]. Eventually, this grace period was deemed too long and the Patent Act of 1939 reduced it to one year[3].

One reason for the 1800s definition of “new” patents was that the U.S. patent system started its life as a “first-to-invent” system. “First-to-invent” means that if contesting parties tried to acquire patents on the same invention, the patent is granted to who can prove he invented the innovation earlier. This proof was presented in what was known as “Interference Proceedings.” With the 2011 Leahy-Smith America Invents Act, the U.S. system changed to a “first-to-file.” The first-to-file system gives patent rights to the first inventor who files a patent application on an invention, regardless of whether she was the first to think of the idea. This change eliminated the long, expensive Interference Proceedings and enabled the Patent Office to direct its limited resources to helping more applicants.

The term (lifetime) of a patent has also seen some change. Established by the English system and reinforced by the U.S. Patent Act of 1790, the original term of a patent was exactly 14 years (from grant date)[4]. This allowed two full apprenticeships (each seven years long[5]) to be completed before the invention became public domain. After the patent examination process was established in the U.S. Patent Act of 1836, a demand for longer patent terms emerged to make up for the increased difficulty in obtaining a patent. In 1861, Congress extended utility patent terms to seventeen years (from grant date)[6]. In 1948, the United States joined the General Agreement on Tariffs and Trade (GATT). When, in 1994, the United States incorporated GATT’s Marakesh Agreement into its legal system, the term of a utility patent changed to the globally agreed upon twenty years (from filing date)[7]. Where patent terms once reflected an apprenticeship-to-apprenticeship handoff of intellectual property rights, the extension of the term symbolizes a generation-to-generation transition. The first generation to possess a new invention pays communal royalties through the restriction of use associated with a patent so that the subsequent generations are able to enjoy the benefits their parents have arranged for them. As patents of drugs and medical devices became more common, lengthy FDA trials became a concern because the twenty-year term begins upon filing of the patents. The Drug Price Competition and Patent Term Restoration Act of 1984 allowed the term of a patent covering an invention to be extended by a fraction of the time it is under review by the FDA.

Recent changes to the U.S. patent system reflect adaptation to an increasingly interconnected world. The Patent Law Treaties Implementation Act of 2012 activated two patent treaties, the Hague Agreement Concerning International Registration of Industrial Designs (“Hague Design Treaty”) and the Patent Law Treaty. This act established an “international design application” and extended the term of design patents to fifteen years. It also allowed the extension of the twelve-month period for filing a non-provisional application that claims the benefit of a foreign-filed application by an additional month.

The 2015 “Support Technology and Research for Our Nations Growth Patents Act” (STRONG Patents Act) was a strongly pro-patentee reform that protects inventors against frivolous lawsuits. This act eliminated non-informing (i.e. Notice pleading) complaints, lawsuits that allege infringement without specifying detailed assertions. It also granted the Federal Trade Commission (FTC) a greater ability to pursue authors of fraudulent or misleading demand letters.

In late June 2017, a new bill was proposed in the U.S. Senate. The “Support Technology and Research for Our Nations Growth and Economic Resilience Patents Act” (STRONGER Patents Act) suggests pro-patentee changes to several aspects of patent litigation, including the standardization of patent review criteria, protection against a petitioner filing new challenges to the same claims multiple times, and limitations on a petitioner’s ability to challenge a patent’s validity in district court proceedings.

These and many other stories of the U.S. patent system demonstrate that our ever-changing legislation has a reason for every seemingly arbitrary rule and that it will continue to improve as it evolves.

[1] Niemann, Paul J. (2006). More Invention Mysteries: 52 Little-known Stories Behind Well-known Inventions. Quincy, Il: Horsefeathers Publishing Company.

[2] Patent Act 1839 §7

[3] S. Rep. No. 76-876, 1 (1939); H.R. Rep. No. 76-961 1 (1939)

[4] 1624 English Statute of Monopolies §6(a), Patent Act of 1790 §1 ¶2

[5] Statute of Artificers 1563

[6] 36th Congress Session II, Ch 88 §16– March 2nd, 1861


[7] Uruguay Round Agreement Act 1994