Patent Law Authority

Posted Monday, February 29, 2016.

There are several sources of U.S. law with which patent applicants need to be familiar.

At the top is the Constitution of the United States. Article I of the Constitution relates to Congress, and Section 8 of Article I is the portion which tells us what powers are granted to Congress. Clause 8 of Section 8 reads “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”. In other words, Congress is given the constitutional power to enact laws which grant exclusive rights to inventors. (Why would that be useful to the public? Read more here.)

Over the years, Congress carried out that constitutional duty by passing laws codified in Title 35, the portion of the United States Code (USC) relating to the U.S. patent system. The patent laws are revised from time to time. The most significant revision to Title 35 was the America Invents Act of 2011, which transformed our patent regime from a “first to invent” system to a “first inventor to file” system. Part I of Title 35 relates to the establishment and function of the United States Patent and Trademark Office, the administrative agency delegated the power to examine and issue patents, among other things.

Administrative agency proceedings in the US are conducted according to rules included in the Code of Federal Regulations (CFR). Title 37 of that code contains the Consolidated Patent Rules. Here one finds rules regarding who may represent applicants before the patent office and procedures followed by patent examiners and the Patent Trial and Appeal Board.

The patent office maintains its own manual for its employees, the Manual of Patent Examining Procedure (MPEP). The MPEP distills portions of Title 35 U.S.C. and 37 CFR into a single document, and adds supplemental content such as “form paragraphs,” which are templates for use by patent examiners in communicating results of patent examinations to applicants. The MPEP actually includes Title 35 U.S.C. and 37 CFR as appendices. The manual is large enough that it used to be published in two telephone directory-sized halves, but is now published only in electronic form.

Finally, there is case law to consider. When a patent case is heard by a federal court, new law relating to patents may be formed by precedent. Most commonly, this occurs when a patent appeal is heard by the United States Court of Appeals for the Federal Circuit (CAFC). Congress has given the CAFC the exclusive jurisdiction to hear patent appeals. When a patent case turns on a matter not explicitly controlled by the sources of law above nor previously considered by a court, the court’s decision may become binding upon applicants and/or the patent office.

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