* * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * *
It was well-known who authored -- or at least who was behind -- many sections of The Patent Act of 1952, and those authors/thinkers wrote, lectured, and explained both the purpose and meaning of many of the provisions of the 1952 Act. I am referring, of course, to P.J. Federico, long-time PTO employee and editor of the Journal of the Patent Office Society (and who was quoted by Congress and subsequently by the Supreme Court concerning 101: "... may include anything under the sun invented by man"), and his Commentary on the New Patent Act, 35 U.S.C.A. 1 (West 1954), and Judge Giles Rich of the CCPA and Fed. Cir., author of the State Street Bank decision, who was proud of drafting §103 until the day he died.
Unlike the Patent Act of 1952, the provisions of the AIA, such as, e.g., the completely new §102, do not have identifiable authors/thinkers behind them. Indeed, because of its long history, even the members of the congress originally shepherding through patent reform, and thus indirectly behind some of the wording that ended up in the AIA, were no longer there (or even alive) when the AIA was finally passed and signed.
There are some exceptions, of course. Without a doubt, Rep. John Conyers, Jr., sponsor of the Save WilmerHale Provision (AIA §37), and Sen. Chuck Grassley, who provided valuable assistance later on, will be claiming credit for the Save WilmerHale Provision (AIA §37) when seeking campaign donations and/or other favors from the partners at WilmerHale. See, e.g., 9/7/2011 N.Y. Times article "Patent Bill Viewed as Bailout for Law Firm;" 9/8/2011 A.B.A. Journal article "WilmerHale Could Save $214M Due to a Deadline Provision in the Patent Bill;" 157 Cong. Rec. S5402-5543 (where Sen. Jeff Sessions tries to kill the provision and Grassley et al. defend it). And the lobbyists behind the Save WilmerHale Provision (AIA §37), including ex-House majority leaders Richard Gephardt and Dick Armey, who received over $17M in fees, will doubtless list the Save WilmerHale Provision (AIA §37) as a decisive victory on their CVs. Id.
Similarly, Senator Chuck Schumer will not be shy about claiming credit for the Business Method Patent Review Provision (AIA §18) when seeking campaign donations and/or other favors from industry groups like the Financial Services Roundtable (and the big banks which bankroll them). See, e.g., 6/14/2011 N.Y. Times article "Banks Turn to Schumer on Patents;" 7/5/2011 N.Y. Times article "In a Bill, Wall Street Shows Clout." Although I doubt this particular provision will be anywhere near as helpful to banks being sued for business method patent infringement as the Financial Services Roundtable et al. appear to believe it will.
[4/6/12 tidgenote: the Supremes' Mayo decision increases the chances that defendants accused of infringing a business method patent may be helped by using the return-to-PTO procedure in AIA §18, but it remains to be seen by how much. Based on the judge (and the client's resources), I might want to keep my §101 argument in court (with the ability to appeal) rather than lose it forever at the PTO.]
But, besides rich and powerful people seeking handouts from rich and powerful institutions, it is unlikely anyone is going to be proclaiming s/he is the ingenius drafter/architect behind, let's say, the new §102. People claiming involvement? Sure. People announcing their support? Sure. Drafter/architect? No. And my bet is the number of people claiming involvement with and/or support of the new §102 and all of the rest of the AIA will decrease over time.
Because there are no reliable guides as to the history, meaning, and reasoning of many of the provisions of the AIA (i.e., no guides like 1952 Patent Act authors/drafters Federico and Judge Rich), one must rely on the congressional history to divine what the anonymous authors were thinking. And one quickly finds it is a gargantuan task, assuming that one is diligent and a good lawyer, because merely relying on the last report (7/1/2011 House Rept. 112-98) or even all of the hearings and reports of the 112th Congress (provided here at the PTO website) will not provide an accurate picture.
For example, if you are curious about the phrase "... or otherwise available to the public" within the phrase "the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public" in the new §102(a)(1), you will read that it was "added to clarify the broad scope of relevant prior art, as well as to emphasize the fact that it must be publicly accessible" in the 7/1/2011 House Rept. 112-98 (p. 42). How could adding another category of prior art, without providing any notion or definition of what's in this brand-new category, possibly "clarify" anything at all?
Also, who added this new prior art category, and when? Here it gets interesting. In every new report concerning the new patent reform bill, the congressional aides cut and pasted large portions from the previous report concerning the previous patent reform bill. In this case, the same language appears on p. 6 of the 5/12/2009 Senate Report 111-018 (on S. 515) and on p. 9 of the 1/24/2008 Senate Report 110-259 (on S. 1145), but not in the 9/4/2007 House Report 110-314 (on H.R. 1908) because the phrase "or otherwise available to the public" was not in H.R. 1908's version of the new §102.
Apparently, the phrase "... or otherwise available to the public" was added by Sen. Leahy's 2nd manager's amendment on July 12, 2007, "to make clear that secret collaborative agreements, which are not available to the public, are not prior art." p. 39, 1/24/2008 Senate Report 110-259 (on S. 1145). Now, I can see how someone who learned English as a second language, or perhaps did not complete secondary school, might believe that adding an additional category of prior art is the best way to clarify how narrowly the "prior art" should be interpreted (i.e., excluding secret collaborative agreements), but how the congresspeople, congressional lawyers and congressional aides who draft legislation for a living thought adding a new and undefined category of prior art would be the best way to exclude secret collaborative agreements from the prior art is an unfathomable mystery to me.
Some people did figure out that the phrase (and the section it's in) might be a problem: some "stakeholders," according to Sen. Lofgren, "are concerned with the deletion of specific categories of prior art with well established meanings in case law and replacing those terms with a more ambiguous term [']otherwise disclosed [sic] to the public[']." p. 101, lines 2035-2045, 4/14/2011 House Judiciary Ctte "Markup" Session Hearing. Admittedly, this comment is not exactly crystal-clear, but it's nice to know someone realized jettisoning all of the old §102, instead of merely amending and adding to it, was a colossal mistake. Unfortunately, there wasn't enough time to do anything about it at the markup session ("this is too complicated to draft in this time frame"), and Sen. Lofgren's offer to "work[] with the chairman ... to accomplish that goal [of re-drafting]" at a later time was never realized--presumably because of the mad rush to get this new bill saving/restoring innovation in this country passed for the millions of new jobs it would create.
Anyway, since we have no Federico or Giles to help us navigate this monstrosity, a documentary history is required to help piece together how and why each section really reached its final formulation (which may not match the final report's explanation).
* * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * *