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Guest post: Is the first-inventor-to-file system constitutional?



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In a guest post to the Managing IP blog, Michele C Bosch and Anthony J Lombardi of Finnegan in Washington DC and Reston VA respectively explain why a constitutional challenge to the recently enacted America Invents Act is likely

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 8).

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 dismiss.

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 discourage innovation.

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.

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