Tailoring the Patent System for Specific Industries Page: 4 of 16
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Tailoring the Patent System for Specific Industries
The recent enactment of the Leahy-Smith America Invents Act (AIA)1 demonstrates
congressional interest in the patent system. Most of the provisions of the AIA apply to any type of
patented invention. For example, the first-inventor-to-file priority system,2 prior user rights,3 and
post-grant and inter panes review proceedings4 apply equally to chemical compounds, electrical
appliances, mechanical devices, and any other invention that may be protected by a patent.
However, other AIA provisions are specific to particular types of inventions. That statute limited
the availability of patents on tax strategies,5 prohibits the issuance of patents claiming human
organisms,' and creates "transitional proceedings" that apply exclusively to patents pertaining to
business methods.7 The AIA also allows "prioritization of examination of applications for
products, processes, or technologies that are important to the national economy or national
The AIA reflects the principle that, for the most part, the U.S. patent system operates in a uniform
manner. All patentable inventions are generally subject to the same statutory provisions.9 A
number of exceptions exist to this concept of technological neutrality, however. For example,
statutory provisions limit the enforceability of patents claiming methods of medical treatment;0
call for patent term extension for certain products regulated by the Food and Drug Administration
(FDA);" and establish specialized patents for designs and plants.'2
This blended architecture has for many years prompted inquiry into whether the patent system
operates best as a uniform system that applies neutrally to all inventions, or whether it could or
should be tailored to meet the specific needs of different industries." Commentators have
proposed, for example, that software patents should receive shorter terms than patents on other
inventions, 14 and that patents on genes should be subject to compulsory licenses that allow
individuals to use the patented technology upon paying a license fee. 15 Unenacted legislation in
1 P.L. 112-29, 125 Stat. 284 (2011). See CRS Report R42014, The Leahy-Smith America Invents Act: Innovation
Issues, by John R. Thomas.
2 Ibid. at 3.
3 Ibid. at 5.
4 Ibid. at 6.
5 Ibid. at 14.
6 Ibid. at 33.
7 Ibid. at 18.
8 Ibid. at 25.
9 Clarisa Long, "Our Uniform Patent System," 55 The Federal Lawyer (2008), 44.
1 35 U.S.C. 287(c).
" 35 U.S.C. 156.
2 35 U.S.C. 161, 171.
13 Michael W. Carroll, "One Size Does Not Fit All: A Framework for Tailoring Intellectual Property Rights," 70 Ohio
State Law Journal (2009), 1361.
14 Mark H. Webbink, "A New Paradigm for Intellectual Property Rights in Software," Duke Law & Technology Review
15 Daniel M. Lorentzen, "Do These Genes Fit? Genes as Patentable Subject Matter," 60 Drake Law Review (2012),
Congressional Research Service
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Tailoring the Patent System for Specific Industries, report, February 6, 2015; Washington D.C.. (digital.library.unt.edu/ark:/67531/metadc810916/m1/4/: accessed December 16, 2018), University of North Texas Libraries, Digital Library, digital.library.unt.edu; crediting UNT Libraries Government Documents Department.