Skip to Main Content

IP Law: Patents

This guide will provide the basic information you need to know to begin researching and understanding patent law. This guide includes a patent law primer, practical help, and sources for legal research.

History of U.S. Patent Law

The federal copyright and patent system came into existence at the Constitutional Convention of 1787 with the creation of the Constitution's Promotion Clause, which authorized Congress to "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." James Maddison wrote in support of the clause in The Federalist Papers, "the right to useful inventions seems . . . to belong to the inventors," and that the "States cannot separately make effectual provisions" for such a right. The Federalist No. 43 (James Maddison). Likewise, Thomas Jefferson wrote extensively on the topic, and many of his ideas have become influential to the current conception of U.S. patent law, especially regarding the formation and protection against monopolies. 

The Promotion Clause did not expressly create the U.S. patent system but instead empowered the legislature to do so. In 1790, Congress enacted the first patent act, making patent law exclusively federal. To obtain a patent under the First Act, an inventor was required to petition a three-person panel that consisted of the Secretary of State, the Secretary for the Department of War, and the Attorney General of the United States. Any two members of the panel could grant the petition if the invention were deemed "sufficiently useful and important." The Act contained explicit disclosure requirements, including that the petition must "describe the said invention or discovery, clearly, truly, and fully." The applicant was required to file a written specification and submit models to distinguish the invention from the prior art and describe the invention well enough so that others skilled in the art could recreate the invention. 

In 1793, the Patent Act was amended. The 1793 amendments eliminated patent examination and allowed the issuing of a patent upon registration. Under the 1793 Amendments, the Patent Office (established in 1802) lacked the statutory authority to examine applications on the merits. This resulted in the courts carrying the burden of applying patentability requirements. In 1836, a report to the Senate observed that forty years without any examination process had resulted in patents granted without merit and increased lawsuits.

In response, Congress amended the Patent Act to authorize the Patent Office to examine applications substantively. The 1836 Act directed the the Patent Office to reject an application if the subject matter had been previously invented in the United States, had been previously patented or described in a patent publication in the United States or abroad, or had been previously in public use or on sale with the applicant's consent. The 1836 Act also authorized the creation of a board to hear administrative appeals of Patent Office Rjections. The 1836 amendments resulted in the creation of the modern patent system and the establishment of the United States Patent and Trademark Office. 

The most recent and significant Amendment to the Patent statute was the American Invents Act of 2011. This act introduced several major shifts to patent law, including:

  • A transition from a first-to-file priority system;
  • Modified procedures for issued patents to be administered by the USPTO; and 
  • A prior user right defense to a charge of infringement 

For more, we suggest reviewing Understanding Patent Law by Amy L. Landers, 3rd edition, available here on LexisNexis Digital Library.

Patent law is exclusively federal and governed by 35 U.S.C., 35 C.F.R., and case law. When researching, begin with the relevant portions of the statutes and expand outwards, finding useful cases that provide statutory interpretation and clarification.  

Chastek Library, Gonzaga University School of Law | 721 N. Cincinnati St. Spokane, WA 99220-3528 | 509.313.3758