Central provisions of the America Invents Act, which went
into effect on March 16 2013, transitioned US patent law from a
first-to-invent system to a first-inventor-to-file system. This
historic change more closely aligned US patent law with other
patent systems around the globe. But did Congress have
authority under the Constitution to make that change?
Under the new law, the US Patent and Trademark Office will
deny an applicant a patent if its claimed invention was
described in a patent or published patent application filed by
another inventor before the effective filing date of its claimed invention.
In general, this means a first person who originates an idea
will not receive a patent if a second person later originates
that same idea but files a patent application with the Patent
Office before the first person.
An inventor who does not file first can petition the Patent
Office to institute a derivation proceeding to show an earlier filed
patent application was derived from the inventor’s
own earlier work. But if two individuals independently
originate an idea, the one who files a patent application first
receives the patent on that invention, even if that person was
the second to invent.
The word "inventors" is central to the constitutional debate
over the first-inventor-to-file system. By constitutional
grant, Congress has the power to "promote the Progress of
Science and useful Arts, by securing for limited Times to
… Inventors the exclusive Right to their …
Discoveries" (US Constitution, Article I, Section 8, Clause
Commentators critical of the new law argue that an
"inventor" under the Constitution is someone who is first to
produce something new. The Patent Office, they say, cannot
grant a patent to a person who wins the race to the Patent
Office if another person originated the subject matter of that
patent first. In that situation, they contend, the person who
was first to file was not first to invent and thus does not
qualify as an "inventor" under the Constitution.
That line of reasoning was advanced in a complaint filed in
federal court last July. In MadStad Engineering, Inc v US
Patent & Trademark Office, MadStad, which makes
adjustable windshields for motorcycles, sought to block
implementation of the America Invents Act provisions before
they went into effect.
In its complaint, MadStad argued that "Congress is not
authorized to award patents to the winners of the race to file
at the PTO" and cannot vest "patents in anyone but actual
'Inventors’ of genuine
'Discoveries’." The MadStad court, however, never
reached the merits of the case. On May 8 2013, the judge
granted a motion by the defendant, the Patent Office, to
The judge concluded that MadStad had not demonstrated a
"certainly impending" injury and thus lacked standing to bring
suit. Accordingly, the judge said a determination of the
constitutionality of the first-inventor-to-file system "must
await a more tangible, immediate, defined, and sharp dispute by
a more directly affected party".
This ruling suggests that this constitutional question will
remain unanswered until an original inventor who files an
application for an invention, but who was not the first to file
an application for that same invention, is denied a patent and
seeks relief in federal court.
In the meantime, the first-inventor-to-file system is likely
to encourage inventors and companies to file applications as
soon as possible to secure the earliest filing dates. Inventors
and companies may also need to file multiple follow-up
applications to capture new enhancements not disclosed in
earlier applications. According to critics of the new law,
small companies and individual inventors cannot compete with
large companies, which can file quickly and afford multiple
applications. As a result, they say, the new law will
It will likely take some time before the full effect of the
new law on US innovation is known and its constitutionality
– which may reach the Supreme Court for the final word
– is decided.