First-To-File and the Constitutional Argument

The pending patent reform bill and the Supreme Court’s recent decision in Stanford v. Roche have combined to re-invigorate a longstanding academic discussion of the constitutionality of a first-to-file patent system that allows patents to be awarded to a “second inventor” so long as the second inventor independently created the invention and was the first one to file for patent protection. Two groups of law professors have drafted letters to Congress. Among patent academics, the main-line argument (promoted by Professors Mark Janis and Tim Holbrook) is that a first-to-file regime fits well within the constitutional bounds. The heterodoxy (led by Professors Adam Mossoff and Dan Ravicher) argue that the constitution only allows patent rights to be granted to “first inventors.”

The Patent & Copyright Clause of the constitution gives Congress the power “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 my view, the debate should begin with a clear recognition that our patent system has long allowed patent rights to be granted to “second inventors.” We know generally that the prior-use of an invention by an earlier inventor does not invalidate a later-filed patent filed by an independent second inventor – unless the prior-use qualifies as prior art under some provision of 35 U.S.C. § 102. Further, under the law of priority disputes outlined in 35 U.S.C. 102(g), second inventors have regularly obtained patent rights because the first inventor either failed to diligently work toward reduction to practice or somehow abandoned, suppressed, or concealed their invention. In addition, the US has long given short shrift to evidence of prior-invention that occurred abroad and instead awarded US patent rights to second inventors who were the first -to-file. In one way or another, all these elements of the current patent regime acknowledge that there can be more than one true inventor. If the proposed first-to-file regime is unconstitutional by granting rights to other than the “first inventor,” then these longstanding elements of the law are as well.

On the flip side, it seems obvious that there are some limits on Congressional power to define the scope of the inventor – for instance Congress could not award patent rights to non-inventors as was done prior to the Statute of Monopolies.

Both groups are actively seeking IP academics to join their letters as signatories and are planning to send their competing letters on Monday, June 13. (If you are interested in signing, contact them by Monday morning.)

164 thoughts on “First-To-File and the Constitutional Argument

  1. Very well said Greg Francis, I hope and believe there will come a time that this will happen. The will of the People at the Ballot Box hopefully can change lots of things. Special Interests and PAC’s are robbing this society. Pac’s survive because the Politicians’ want them to survive. The Country survives only if the economy survives. If the PAC’s are choking the peoples rights to create jobs and add to the Economy, then it is high time we do something. Why should a person or persons that give ideas that move the Economy be kept out of the loop, or have their Ideas stolen because the PAC’s want to control them. Why should special interests and PAC’s be running the Congress. Oh how silly, I thought that was the job of Congress.
    I suggest we all have these “calm” civil town Meetings. Why not. Most of the people are out of work. this is a perfect time to get the Country moving forward.

  2. I think this change in law is being promoted by companies and entities who have more than enough resources to easily hire someone to write their patents.

    For those of us with great inventions but no resources to file a patent immediately but must research patent law, drawings, etc plus take time to save for patent fees: we will be the losers.

    So then, why invent new things if we will never get rewarded. The barriers to success must be made equal between those with said resources and the ‘little guy’.

    Getting a patent should be easy enough for a 5-year old to do. I don’t mean changing the technical complexities, rather the government/USPTO should be able to take an idea (communicated verballly, written, sketches, etc.), determine its market viability and convert it into a patent (if deemed worthy), or at least mentor said ‘little guy’.

    We want good ideas to come to fruition and get universal protection because this is what drives our economy! Thus, we should be promoting these ideas/inventions to the top proactively! The inventor should be rewarded! Without major changes to the way things are done (and I don’t mean changing them as proposed by the ‘big guys’ with this law), our country will continue to demise.

  3. Kevin,

    I too have felt frustration at the lack of an answer on this point, not only here but on several threads over at Gene Quinn’s IP Watchdog blog.

  4. Although I’ve seen logical arguments both for and against the constitutionality of FTF, I don’t know that anyone has successfully addressed the original point of Dennis’ post, namely, if FTF is unconstitutional because it sometimes allows the issuance of a patent to someone who is not the first inventor, then how is the current (soon to be former) system, which allows second (or third or fourth, etc.) inventors to obtain patents under certain circumstances, NOT unconstitutional? I don’t see a principled way that a court could throw out FTF without also doing away with 102(g), among other provisions of the current patent law.

  5. First to Invent is first to invent and it should be a person as If John Smith invents something while working for GE etc than John Smith is listed as the inventor. John Smith
    has a contract to work and gets paid owns the patent and the company owns the patent contractually . Anything else is smoke and mirrors . The Banks and Big Business are about to destroy the only industry left in the United States and the DUMB , DUMBER than DUMB bribed politicians are about to push threw a bill that destroys the American way . Call it what you want but once again the country is being sold out and that is the facts. The Banks are intending to steal a company’s patent by introducing a Patent Reform Bill that steals property from a company that has been challenged twice in the Patent Office won in court by a jury . OUR GOVERNMENT IS TOO
    SICK AND CORRUPT AND WILL DESTROY THE ONLY TRUE INDUSTRY LEFT BECAUSE OF OUR GREEDY POLITICIANS … PERIOD . Unless they stop the most ridiculous bill ever presented in DC .

  6. It is time for all good Statesmen to stand up;Truth;… Congress shall have power . . . 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….
    This discussion about patent law has nothing to do with helping the small guy, nothing to do with the backlog of filings, not anything to do with cost of the process to obtain a patent, not any thing to do with using the great inventiveness of the only free society left in the world. First to file has at it’s core to homogenize the patent process to the depths of the world homogenized process (Europe, China, Russia, etc.) used by the one world order ilk. If this issue is important enough to be the gold standard for the rest of the world to follow, then fund the office properly to protect any and all United States citizens/…to authors and inventors the exclusive right to their respective writings and discoveries….
    Spend the funds needed to litigate to the nth degree all violators domestic and specifically any foreign entity.
    This is one of the last bastions of financial freedom left in the world. Don’t listen to the deceivers and alternate motive ilk that is battling against the U.S.

  7. We also have an additional problem in the post grant proceedings violating article III. BPAI admin law judges can hear challenges to granted patents by persons who don’t believe in patents or feel a technology is immoral (like greenpeace’s anti-GM work in the EPO). The problem with this is Article III case/controversy clause applies to ALJ’s and there’s no redress for an anti-technology group because repealing a granted patent actually opens up the ability to practice that work and thus fails the redressability requirements of the Case/Controversy Clause.

  8. Forget first to file.

    The USPTO is the ONLY US Agency that requires special accreditation to represent clients. An attorney can brief the US Supreme Court, but needs a credential by the USPTO alone, to file a patent application before the USPTO.

    If that’s not enough, the USPTO now wants to improve US competitiveness by setting and keeping their own fees.

    So, in the USPTO we have, a) a 100% monopoly to issue patents, b) with sole pricing discretion, c) deciding who they will work with.

    Their shrine to “innovation” should be a tombstone. Anywhere else but the US Government, the antitrust forces would be howling.

  9. Ned I think every patent statute in the world awards rights to the first inventor. They differ on the methodology for awarding the title “first”. One jurisdiction invokes the concept of diligence, for example. Others just keep it simpler, and award it to the first to come forward with an enabling disclosure.

  10. You want to know what I think? IF the People in this country knew that you don’t give a Rats Patoutti about them.. and you only fight for position… I feel sorry for all of you..
    Maybe some older and wiser people can teach some of the Young-uns just what you “ALL” are doing to this Country with your bickering over who’s on first.. And then we can shape the ECONOMY and the Country back to when it was a proud Country.

  11. OK. Now the meaning of true in 1790 is better understood.

    It means the inventor invented it himself and not someone else, such as his employee.

    Thanks.

    Still, the 1790 Act expressly required the patent to be granted to the first inventor. This really does change much.

  12. True.

    I’m going to gag the next time a politico states that the reason for reform is because big business and big U are behind it.

    True, some braindeads will argue that we need “reform.” But they will never explain why.

    The other side argues policy, but they are silenced by not calling their witnesses.

    I find hope in the 51 who signed the request for a debate on the constitutionality of FTF. I hope at least some of them know who Thomas Jefferson was and his role in this affair.

  13. Best to read the Convention direct, I think Ned.

    You need the EPC, Article 60(1) and (2) and then Article 138 (1)(e).

    Note Art 60(1) “The right….shall belong to the inventor or his successor in title” So, we see that, in misogynist (or politically incorrect) Europe, only single males can invent.

    Note Art 60(2), on independent rival inventors. The first filer loses if she fails to take her first filing as far as PTO publication.

    Art 61 EPC is the one to deal with those who steal inventions from true inventors. They have to hand over their pending apps to the true inventor(s).

  14. Hard, Congress has discretion to a point, and that point is crossed we all agree when it exceeds the grant of power give it by the constitution.

    Necessary and Proper and all that.

    Do you at least agree on this?

  15. I File a Patent Application… you know the story.. When you get down to the nitty gritty. I am told to sign something. he claims he is my Atty. All the time they are waiting to see how I make it… Then he say tear up what I told you not to date… I made a mistake. It will cost you 250,000.00 if you allow it.

    Then Dolph doesn’t tell me what he did to me..He just says sign the Form? Memory.. I was told what it was going to cost me. didn’t know he was canned. didn’t know it was EXTORTION, FRAUD and whatever else MENS REA. ETC.
    Then we know the rest of the Story. It is mine!
    If the USPTO thinks that the Folded into design is not a teach away but truly different…. Then do what they believe is right and Cut the BABY in half. If the USPTO thinks that (what I think) then give it back to me.. If truly it is not a take away JUST DO IT!
    But to hem and haw and keep me in a BOX while the rest of the story moves on behind my back and without me aware of what is being done.. THEN I THINK IT WAS ALL A SHILL. SIGNING A power ON DEC. 18, 1996 AFTER MY APPLICATION IS PUBLISHED.. OR ABANDONED ONLY TO GIVE ME BLUE EYES.. THINKING SHE IS AS DUMB AS DIRT. AND THEN TELLING ME ON JAN.1, 1997, THE SAME DAY I FIRE B ON 08,677,566, SEEMS A BIT SHILLY… IF HE IS NOT INVOLVED THEN I APOLOGIZE TO HIM. AND THEN YOU KNOW HOW IT PLAYED OUT FROM THEN ON..

    GUESS WHAT NOT ONLY AM I NOT AS DUMB AS DIRT.. BUT I AM ALSO SITTING ON TWO AWESOME IDEAS THAT WILL PUT PEOPLE IN THE USA TO WORK.. AND TWO MORE THAT ARE OK. I WANT THOSE 5 PATENTS AND 5 TRADEMARKS TO ISSUE ALSO AS PRINCIPLE.. And as long as I am paid what I should be paid for all this ABUSE, then come on..
    Come on cut the BABY in half if you have to. You already cut my HEART out. So what difference does it make!

  16. As people have amply commented – both sides of the political spectrum engage in the same behavior. It is not a Republican nor Democrat ideology that is behind the shill.

    The shilling comes from the political smoke hiding the underlying agenda.

    We all know what that agenda is.

  17. Ned the EPC declares that patents shall be revoked if not granted to the true inventor or her successor in title. I think every First to File statute must inevitably have an equivalent provision.

    In 1790, with the PTO in, say, DC and two rival inventors, one in DC, the other in, say, Seattle, First to File would be a bit unfair on the poor guy in Seattle, wouldn’t it?

  18. There is in the sense that if I file second, but can PROVE I conceived first and diligently reduced to practice, then I will become the inventor – as it should be.

    Facts are stubborn things…

  19. What’s REALLY funny is that Mooney’s employer doesn’t think we can all see through the charade…

  20. Hard, it still comes down to what Congress thought it was doing in 1790 when it, in Section 5, made it a condition of validity that the patentee be the first inventor.

    Why would they do that?

    From the Elred case, I cited earlier, the Supreme Court noted that the first Congress was very concerned with the constitutional requirements regarding patents. Very!!!!! So one could believe that they felt that the choice granting a valid patent to only the first inventor was a requirement imposed by the constitution itself. Now, that might actually be a reasonable conclusion.

    Pennock dealt with the possibility that the first inventor abandoned his right to a patent by acts inconsistent with the statute. That opens the door to the second inventor. But absent that, the first inventor’s right seems to be something that cannot be taken from him under the law.

  21. It is interesting that Mr. Quinn does not cite Pennock v. Dialogue which discussed the whole issue of multiple “true” inventors.

    Second, he starts his analysis with the act of 1836, not 1790, where the requirement to be the first inventor was set forth in section 5 as a requirement for validity.

    Quinn’s sophistry carefully avoids a discussion of what Congress had in mind when it in the very first patent act made being the “first” inventor a condition of patentability. Why did it choose those words? Why? A design choice? or was it what they thought the constitution required? Could that have been even the remotest of possibilities?

    No, let’s dismiss it out of hand.

  22. Ned,

    We have already established that Congress was given the discretion to set law – including the Act of 1790.

    Through your own very favorite case of Pennock, the Congress gets to set the rule. The Act of 1790 was not the constitution. If this Congress decises to reset the Act – it is their Supreme Court recognized discretion that comes into play.

    Ned, why am I reminding you of this?

  23. First Inventorship was made a requirement for validity in the Patent Act of 1790. See, section 5 of that Act.*

    This fact is central to an argument that first inventorship is required by the constitution in an article by Edwin Suominen, published in the JPTOS in 2001 (83 JPTOS 641) link to docs.piausa.org

    He also notes that Jefferson and the first Board considered and rejected the idea of granting patents to rival applicants to the same invention based on first-to-file.

    The evidence remains strong that the founders of the Republic thought that their power, granted by the constitution, was to grant patents to the first inventor and not to the first, inventor-to-file.

    * “…if it shall appear that the patentee was not the first and true inventor or discoverer, judgment shall be rendered by such court for the repeal of such patent or patents;…”

  24. Bruce, is it your interpretation that this Substitute can be filed when you file the patent application and that it only requires ownership of the application, not that ownership be acquired from an inventor?

    I have in mind an applicant filing on a trade secret process where there is no identifiable inventor, but it is clear that the company owns the trade secret. Can this company file a valid declaration of ownership under these circumstances?

  25. The Shilling, are you trying to prove, by citing evidence of his support of corporations, that our good friend Malcolm Mooney is a Republican?

    I think you may have misunderstood his post.

    Perhaps.

    Malcolm?

  26. In the U.S. “must be awarded to an actual person” is not ignored. If a company owns the rights to a patent it is because the inventor assigned the[ir] patent right to the company.

    That, again, is part of the problem with the pending legislation. Patents will arguably be awardable to companies who merely claim that they have such an ownership right. Worse, the penalties for lying are reduced, and effectively non-existent for non-U.S. entities or where the original inventors cannot be found or are not cooperative. Compounding the later – asserting inventorship (or, in the case of a Substitute Statement, ownership) is no longer required before examination, but rather, before issue, which may be many years later.

    As someone else pointed out, a lot of these new provisions look good at first, until looked at in detail. And, then you see how the big multinational companies with large off-shore workforces who are the primary backers this legislation are trying to convert this to a European system where the applicants are the companies, and not the inventors.

  27. move to a first to file system… And if some people believe that corporations will benefit, all the better.

    how would you get the Democrat base to oppose FTF? Show that big corporate america is behind it?

  28. Indeed, here is the letter signed calling for a debate on the constitutionality of FTF. It is signed by Democrats and Repulicans alike.

    link to ipo.org

    Now, Malcolm, how would you get the Democrat base to oppose FTF? Show that big corporate america is behind it?

  29. Ned and Bruce,

    Prevailing conservative ideology (and there’s nothing at all hidden about — see last night’s Republican debate) is that (1) whatever is good for big business is good for America and (2) big government is bad.

    So let’s get rid of interferences and move to a first to file system. It’s one less thing for the government-run USPTO to worry about. And if some people believe that corporations will benefit, all the better.

    Commentators like Erickson and some of the commenters here are just making it up as they go along. Moving to a first to file system will “harm America?” Don’t make me laugh.

    Republicans want to get rid of the Environmental Protection Agency. What do you think, Ned? Bruce? How would the harm from that change compare to the harm from moving to a first to file patent system? I can’t wait to hear it.

  30. Malcolm, regardless of your views on Republican generally, I was very surprised in my days in the leadership to find the Democrat administrations mostly in the pocket of big business and the Republicans on the hill and in the press backing the small inventor and the startups.

    There is perception and there is reality.

    Now, I was very pleasantly surprised when Feinstein and Boxer both came out against first-to-file because it would harm startups and America. They are, after all, Democrats! and in my experience, Democrats were the biggest backers of harmonization.

  31. No thanks needed. BTW, are you yourself a lawyer? Are you in the habit of billing by the hour? The dictionary you use: how does it define slander?

  32. Is that another reason why patent attorneys in the USA want nothing to do with FtF?

    In a word: “No.”

    But thanks for slandering attorneys anyway.

  33. Just to confirm that answer from Hutz: under any First to File regime, the one who files first wins, albeit, only when that first filing enables something.

    Typically, David has an enabling disclosure of his best mode or prototype, very early on, and can file it quickly even while Goliath hesitates because Goliath wants broad pre-empting claims, and so strives to enable the entire field before trusting himself to file.

    Later, under First to File, the fact of earlier date and its novelty-destroying effect are open to all to see, inescapable and unchallengeable. And so, Goliath will pay David a king’s ransom, to gather in to its nest the rights of ownership to the novelty-destroying cuckoo in the middle of its painstakingly built nest. I know. I have been through this cycle.

    Lionel, Malcolm, tell me again what teatment gets dished out under First to Invent, to small inventors who file earlier, and have the effrontery to assert against later-filing 400 lb gorillas.

    Because of First to Invent, the specifications of US filing are twice the length of anything required for enablement anywhere else in the world. In a First to File environment, a race to the PTO if you will, standards for enablement inevitably are driven down to what is needed, no more and no less. So, filings are only half so elaborate as they are in the USA. The grindingly boring and endlessly repetitive boilerplate no longer serves any useful purpose.

    Is that another reason why patent attorneys in the USA want nothing to do with FtF?

  34. Make that “his employer”. Serves me right for haphazardly changing the person of a sentence in mid-edit.

  35. For one thing, the explicit wording of the Constitution. There is nothing there about granting owners of an invention anything, but there surely is granting the inventor.

    The Constitution doesn’t say anything about selling patents either (or licensing them), but people do it all the time. People even sell the patent rights to inventions they haven’t invented yet. Why not simply admit that what the inventor is really doing is selling to our employer whatever patent might issue from the invention made in his employ, and let that employer be the applicant and receive the issued patent in his name?

    The Constitution would probably be okay with that, because it’s still the inventor who had it first. And really, what trouble has it caused in the rest of the world to let IBM call itself the “applicant” for a patent that IBM will inevitably end up owning anyway?

  36. Actually, I would argue the opposite.

    First, big corporations rarely act quickly and usually rather quickly assign ratings to internal inventions. Then they are farmed out to outside counsels. If an invention is assigned a lower tier in the first place, the patent probably won’t get the care in drafting it should have.

    Second, large corporations can tie up the little guy in litigation over when the corporation first inveted/started using the technology vs. the inventor’s invention date. With FTF, that litigation goes away (AND TO BE CLEAR, I AM NOT REFERRING TO INTERFERENCES – I am referring to litigation over the invention date after the small inventor has brung suit.)

  37. So what? Pretty much everything the GOP does is designed to favor the “deep pockets” over the rest of the our society. After all, we’ve been told by Republicans over and over that it’s these poor, besotted over-regulated and over-taxed corporations who are the “job creators” in this country. Why is it suddenly a problem to help them out?

    This is interesting on a day when President Obama is fund raising on Wall Street.

    But more important here is that both proponents and opponents of the legislation cross party boundaries. In the Senate, it was clear that Sen. Hatch (ranking member) worked very closely with Sen. Leahy (Judiciary Committee Chair). And, today, I got a copy of a letter sent by two former chairs of the House Judiciary Committee opposing the legislation to the other members of the House. The first past chair signer was John Conyers, the other James Sensenbrenner.

    Given the composition of the proponents and opponents of the legislation, I would respectfully submit that the proponents are the ones engaging in Crony Capitalism, and they seem equally represented on both sides of the aisle in both Houses of Congress.

  38. I don’t understand what is so wrong about issuing a patent to the corporate owner of the intellectual property in the invention. I don’t understand what is so wrong with declaring that patent invalid if the chain of title does not go back, unbroken, to the true inventor, the actual human devisor of the claimed subject matter.

    For one thing, the explicit wording of the Constitution. There is nothing there about granting owners of an invention anything, but there surely is granting the inventor.

    I don’t understand what provision of the US patent law model prevents rival filings at the USPTO, for overlapping subject matter. I think they happen in every jurisdiction, at about the same frequency, and that every jurisdiction therefore needs a way to deal with them. In the USA it is the threat of full-blown interference proceedings that deals with all but a few of them
    .

    You are right that they happen all the time, but most often, the second filer just tries to show that he invented before the first filer filed, shows diligence, etc., and gets his patent too. Indeed, both applicants may end up with patents.

    What you have to keep in mind that interferences most often require copying claims from the senior application into the junior application. But most of the time, the two competing applications have totally different claim sets. They may overlap, or they may not. Keep in mind, that the important thing in terms of rejection, is that the first filed application contains sufficient disclosure to anticipate or help render obvious the claims in the second filed application.

    Keep this in mind: Interferences are a red herring.

    Under the European Patent Convention, all overlap situations are resolved without interference proceedings. If necessary, there have to be what you might call “derivation proceedings” but they are rare because everybody knows the importance of the filing date. As you never tire of telling me in these columns, first inventors file first.

    The problem with the derivation proceedings in the pending legislation is that they are poorly designed, unless the intent was to provide window dressings without a substantive remedy. For example, derivation proceedings during prosecution must be filed w/i a year of publication of the supposedly derived application. But what happens if a Request for Non-publication is filed? Whoops. No remedy. The result is that standard advise will be to file such a request automatically, unless there is a bona fide intent to foreign file at the time of original filing. Moreover, in both that case, and in the post-grant case (also, seriously time limited), the request must be supported by substantial evidence – before discovery can take place, in a situation where the alleged deriver is likely to have most of the relevant information. Oh, and it is currently discretionary on the part of the Director.

  39. I don’t really know.

    My last point was that first-to-file, regardless of inventorship, which is what I think the pending legislation really is, could very possibly award patents to non-inventors over inventors, and that I think would not be Constitutional.

  40. I think this IS the best counter argument.
     
    If I were a betting man, I say this wins a majority of the Supreme Court as well, if it gets that far.

  41. We need to realize that there is a strong resistance to change on the part of those wanting to steal inventions of inventors Its evident in the legislation and the resistance to correction efforts by myself and others hopefully the courts will recognize it and strike the legislation down as intentionally deficient.

  42. Ned, I have tried to explain this nuance to you before.

    The Pennock case tells you what is going on – all you need to do is read the case without your preconceptions getting in the way.

    As IANAE tells you – the law is the key, not the constitution. In Pennock, the Supreme Court was explicit that they followed the discretion of Congress (remember all the deference to the Act) in following just what that law was.

    Now, if Congress re-writes that law, the new law will indeed take care of your concern of “A second inventor can get a valid patent… In order to block a second inventor, the first inventor must seek a patent [by following the law - that is, by being the first inventor to file]”

    The question of what happens in the US when a first inventor has not abandoned his right to a patent and he otherwise meets the statutory requirements? Can he be denied?

    You see the issue with how you ask the question here? “otherwise meets the statutory requirements” – The statutory requirement would be FITF – that would be the only way for the first inventor to block the second inventor.

    The only way. Otherwise, the first inventor would not be following the statutory requirements (and thus, Pennock would still hold!)

    Pennock actually gives us this very answer, because in Pennock, the Supreme Court was explicit in that Congress had the discretion to choose the process. FITF would simply be a new process chosen by Congress.

    It really is that simple.

  43. Ned, I have tried to explain this nuance to you before.

    The Pennock case tells you what is going on – all you need to do is read the case without your preconceptions getting in the way.

    As IANAE tells you – the law is the key, not the constitution. In Pennock, the Supreme Court was explicit that they followed the discretion of Congress (remember all the deference to the Act) in following just what that law was.

    Now, if Congress re-writes that law, the new law will indeed take care of your concern of “A second inventor can get a valid patent… In order to block a second inventor, the first inventor must seek a patent [by following the law - that is, by being the first inventor to file]”

    The question of what happens in the US when a first inventor has not abandoned his right to a patent and he otherwise meets the statutory requirements? Can he be denied?

    You see the issue with how you ask the question here? “otherwise meets the statutory requirements” – The statutory requirement would be FITF – that would be the only way for the first inventor to block the second inventor.

    The only way. Otherwiese, the first inventor would not be following the statutory requirements (and thus, Pennock would still hold!)

    Pennock actually gives us this very answer, because in Pennock, the Supreme Court was explicit in that Congress had the discretion to choose the process. FITF would simply be a new process chosen by Congress.

    It really is that simple.

  44. So the real question is whether congress can grant the second inventor a patent when the first inventor has not abandoned the invention and has not abandoned his right to a patent….

    OK, we can make that the real question, if you like. How about this for the real answer: Since the concept of “abandoning” the invention is not addressed by the Constitution, the legal dimensions of such abandonment are defined by statute and common law, to the extent common law is applicable. Under the current patent law, a first inventor can abandon his invention by, among other things, being too slow to file relative to a public disclosure of the invention. Under the FTF statute, a first inventor can abandon his invention by, among other things, being too slow to file relative to the filing of another “true” inventor.

    I don’t see a constitutional problem here.

  45. Rally the troops!!!!! Here’s Erick Erickson, CNN contributor and reliable GOP tool, on Patent Reform:

    link to redstate.com

    CONSERVATIVES MUST OPPOSE PATENT REFORM

    Proponents of the change argue that it is more efficient and would better harmonize with the rest of the world. It is more efficient, and it would better harmonize with the rest of the world, but that does not mean it is wise. It is important to note that we are descendants of the Glorious Revolution and English common law, which developed a strong public policy preference for private property rights not shared by the rest of the world. Incumbent in private property rights is a protection for an inventor of his patent, regardless of whether someone else files first for something the inventor invented first.

    The entire point of the Patent and Copyright Clause is to protect the actual inventor so that they are incentivized to use their creativity and ingenuity to make breakthroughs. It is not designed to make it easy on the government to resolve patent disputes. And simply because the rest of the world follows a different system, does not mean the U.S. must follow suit in order to “harmonize.” There is a reason that America is exceptional, and it’s because we enjoy freedoms much of the rest of the world does not know. If there is to be harmonization, let it be because the rest of the world adopts our best features, and not because we have felt compelled to adopt their worst.

    It’s hard not to laugh. At least he didn’t quote the Bible, as he is fond of doing to support his warped political views.

    Although not excerpted above, Erickson also wrote this:

    Obviously, the first-to-file system favors deep pockets that can handle and expedite the paper work.

    So what? Pretty much everything the GOP does is designed to favor the “deep pockets” over the rest of the our society. After all, we’ve been told by Republicans over and over that it’s these poor, besotted over-regulated and over-taxed corporations who are the “job creators” in this country. Why is it suddenly a problem to help them out?

  46. Babble Boy, if the patent bill actually passes, this question will actually be litigated. I suggest that if the Supreme Court, who will ultimately decide, decides the case on the evidence, the question will be close. If they decide the case based on an expansive view of congressional power that is unlimited, being cabined only by need and purpose (welfare of the Repulic and all that), then FTF is perfectly fine.

    We are going to soon see what the Supreme Court thinks about congressional power when Obamacare reaches the court.

    When we talk personal views, it depends on whether you actually like a constitution or not.

  47. Is that a joke? The Constitutional end is “to promote the useful arts.”

    They made it pretty clear that the “frenzied activity” of research and development is EXACTLY what they intended.

  48. C’mon, Ned

    Simultaneous discovery happens all the time. To suggest that there has to be a “true inventor” or that the Constitution refers to such a “true inventor” is preposterous.

    It is part and parcel of Congress’ obligation and power to make rules that address how to sort out conflicting rights to discoveries. If Boner, and Weiner, and the boys want to go with F2F, great. That’s what Article I is all about: giving Congress the sole power to write the statutes.

    What you are really missing by hailing back to the early patent acts is that back then there was no constructive reduction to practice in TJ’s view of “inventor.” The “inventor” was the guy who physically put all the pieces together into a working model, which was presented to the PTO.

    To conflate that archaic system with the present one in which all you need to secure your rights is a good idea, a word processor, and two working thumbs is to argue by anachronism.

    TJ has nothing to do with the F2F issue before us in 2011. Your ancient case law is equally irrelevant.

  49. Correct. Marshall did say laws and constitution.

    Right, but he couldn’t have meant “and”. Only one or the other can create the right to a patent. If the Constitution creates the right, the law can at best confirm the right and create a framework for obtaining/enforcing it.

    And we all know the Constitution does not create the right, so where does that leave us? With a right that vests according to the statutory framework, which framework Congress is free to change as long as the patent still goes to a person who invented the thing (as the Constitution actually does require).

  50. Correct.  Marshall did say laws and constitution.

    Pennock made the point that the first inventor can abandon his right to a patent, opening the way for the second.

    Sent from iPhone

  51. He held that the right to a patent vests under the constitution in the true inventor and it cannot be divested. (I gave the cite to this case in an earlier thread.)

    Think about that for awhile.

    Two thoughts spring immediately to mind:

    1) The right to a patent can’t “vest[] under the constitution”, because the Constitution doesn’t create a right to a patent.

    2) I still have a problem with “the true inventor”, because what happens if you have more than one true inventor?

  52. Good, now we are talking.

    Pennock stands for the proposition that a second inventor is a true inventor. He can receive a valid patent, but the first true inventor must first abandon the invention or his right to a patent.

    So the real question is whether congress can grant the second inventor a patent when the first inventor has not abandoned the invention and has not abandoned his right to a patent….

    THAT question, however, WAS addressed by John Marshall in an 1813 circuit court case where he declared that under the constitution and laws a first inventor’s right vests in him upon invention and it cannot be divested by a second inventor.

  53. Mike, agreed on Pennock. It did not involve constitutional questions when two true inventors were involved.

    A second inventor can get a valid patent if a first has abandoned the inventor or his right to obtain a patent. In order to block a second inventor, the first inventor must seek a patent or put the invention into public use.

    The question of what happens in the US when a first inventor has not abandoned his right to a patent and he otherwise meets the statutory requirements? Can he be denied?

    That is the real question and the issue has never been addressed by the Supreme Court.

    John Marshall did address it in a circuit court case in 1813. He held that the right to a patent vests under the constitution in the true inventor and it cannot be divested. (I gave the cite to this case in an earlier thread.)

    Think about that for awhile.

  54. Anyway, I for one would not consider a second independent inventor to be any less a “true” inventor …

    The Supreme Court in 1829 felt exactly the same way, as evidenced by the Pennock decision cited by Ned about 15 times. In that decision, the Court made a very clear distinction between a “true” inventor and a “first” inventor, explicitly acknowledging that a second inventor could be a “true” inventor.

    It has also been pointed out to Ned several times that requiring an applicant to believe that he is “the true inventor,” whatever that means, or even specifically requiring him to believe that he is the “original” inventor, is not the same as requiring that to actually be the case. The former as a requirement for an oath is a pretty simple proxy for an oath to the effect that the inventor did not steal his idea from someone else.

    It seems to me that the alleged evidence for what TJ believed on this point is pretty weak. Sure, TJ favored the first inventor over the second. But that doesn’t tell us that he believed the word “inventor” itself to mean “first inventor,” or that he believed this issue to have a constitutional dimension.

  55. Read the case and the key thing from all this is what you say: “under the statutes”. Pennock examined the questions under the language of the statute at the time. Pennock does not stand for the proposition that Congress could not alter which inventor gets credit so long as that person is an “inventor.”

    I do think Congress would have a hard time giving the patent to some arbitrary individual. They may even have a hard time giving it to a non-person entity (though only maybe).

    However, absent some ridiculous criteria, I see nothing in Pennock that would make it unconstitutional for Congress to pick a “true” inventor that files first over a “first” inventor who does not.

    I also would not hang my hat on “true” too much as it’s clear that you can read “true” as a prohibition on derivation.

  56. Why? It’s simply the same decision, implemented in a statute. It still doesn’t make the alternative unconstitutional.

    Anyway, I for one would not consider a second independent inventor to be any less a “true” inventor (even if his work turned out not to be novel under 102(b)), so on top of everything else the 1793 terminology is not well-defined.

  57. I think they should both be declared unconstitutional because they dont represent the most accurate method of determining inventorship therefor they violate the true inventors cival rights to be granted a patent in many cases.Ive created another 10 or so additional methods so an individual method is obsolete and defective.

  58. His views are entitled to weight.

    I suppose it’s also worth pointing out that his views are only entitled to weight if you’re one of those sticklers for what the Constitution was originally intended to mean. His views are considerably less relevant if you’re one of those wacky liberals who believes the Constitution needs to be understood in light of the realities of modern life in this ever-changing world in which we live in.

    Not everything changes so quickly, but it didn’t take long at all for the major unforeseen development of interfering patent applications to crop up. That does somewhat subvert a fair bit of whatever the originalist intent might have been.

  59. OK, Mike, let’s look at your first line.

    “The Constitution does not require a first-to-invent standard, it never has. If it did, there are plenty of things in existing patent law that would be unconstitutional too.”

    1) TJ thought it did require a FTI standard. See my posts. His views are entitled to weight.

    2) Pennock v. Dialogue addressed the problem more than one true inventor under the statutes. They resolved the problem. FTI, but the first inventor can both abandon his invention and/or abandon his right to a patent. The second inventor might then get a valid patent.

    I suggest reading the case.

  60. Of course it was a policy choice among available options. He saw something he never considered before, and he only had two possibilities open to him – grant the one, or grant the other.

    The fact that he made a decision is not entitled to any weight – it was his job to make that decision, and his job at the time was not “guy who writes the Constitution”.

    I’m sure TJ had lots of opinions on legal and policy matters where disagreeing with him would not have run afoul of the Constitution.

  61. There is a huge difference between arguing that “first to file” is unconstitutional, and arguing that “first inventor to file” is unconstitutional.

    In view of that, and considering that the proposed legislation moves from “first inventor to diligently pursue and file before a year has elapsed folowing certain public uses or disclosures by the inventor and others” to “first inventor to file before a year has elapsed following the inventor’s own public use or disclosure,” perhaps it would be best to clearly state that the issue is whether “first inventor to file” is constitutional. it is grossly misleading to merely state the issue as whether “first to file” is constitutional, and doing so lends far too much credibility to those arguing that the proposed legislation is unconstitutional.

  62. IANAE, it was his interpretation of the clause, not a policy choice among available options.

    TJ’s interpretation is not the final word, I agree. But it is entitled to weight.

  63. Listen, coach, you are not a moderator. I asked Mike to read my posts. He is very close, but not quite there.

    Listen Ned – take the friendly advice and act on it. “” is meaningless because you have not shown us what Mike is lacking or what is wrong with Mike’s post.

    If you want Mike to move, you need to at least give a direction.

  64. TJ believed the constitution meant “true” inventor once it began to be understood that there could be more than one inventor who [met] the requirements set by congress to obtain a patent pursuant to the 1790 act.

    That seems like a bit of an inductive leap. We’re talking about a person who knew that the Constitution didn’t originally mean anything on that point, because it hadn’t been contemplated. That person was making a policy decision in his capacity as, essentially, the patent office.

    None of us doubt that the result he settled on was permitted by the Constitution, but that certainly doesn’t mean that no other result would be permissible under the same Constitution.

  65. Do you know what Thomas Jefferson meant by the phrase

    “The True” inventor when he wrote that into the 1793 act?

    Did you know that congress in passing the 1790 did not understand that there could be more than one inventor who met the requirements for obtaining a patent?

    Did you know the 1790 did not provide for interferences, but nevertheless TJ invented the process?

    Did you know that he and the board awarded the first interference to the “true” inventor rather than the first-to-file?

    Did you know?

  66. Well for starters, TJ believed the constitution meant “true” inventor once it began to be understood that there could be more than one inventor who meant the requirements set by congress to obtain a patent pursuant to the 1790 act. He nevertheless invented the interference, gave the patent to the true inventor and not the first to file, then wrote this concept into the 1793 act.

    See my posts above regard “What we know.”

  67. Ned,

    Your reply is nonresponsive.

    Please precisely tell us explicitly what in Mike’s post is right, where Mike stops being right, and where you think Mike is speculating.

    Trying to guess what you mean is too difficult, so reading your hand or what you post does not help understand your reply to Mike and his excellent post.

  68. Hardworking Constitutionalist and Recognizer of the Discretion Given to Congress by the US Supreme Court says:

    applies for a patent under the laws and complies with all its requirements

    Let’s repeat that emphasied portion: under the laws.

    If Congress, as per Pennock, which out and out gives that very same Congress the latitude to change the laws, as is their discretion, to require, as a condition, the First Inventor To File paradigm, then Pennock is still followed because Congress both writes the law and has the discretion to set those very parameters under discussion.

    Pennock, in fact, is the case that makes the case for the constitutionality of FITF.

  69. Constructive reduction to practice through patent filing is the correct method of retaining the inventor with his cival rights to patent granting. without this incentive to create is destroued and the system grinds to a hault as we are seeing now with arguments such as this. This is where negotiation with financiers and or established companies should require copereration instead of the present mentality theft by various methods.

  70. Babble Boy, I am sure TJ knew some folks who where there during the drafting, for example, his boss, George Washington.

    He wrote the 1793 Act in view of his prior experience with multiple inventors filing on the same invention. They, the Board, decided to award the patent to the “true” inventor, not the first filer. This TJ incorporated into the 1973 Act.

    “True inventor” is the meaning of inventor TJ and his fellow board members took “inventor” to mean at the time. There was only one true inventor, not two.

    Later, in Pennock v. Dialogue, the Supremes talked about there being two true inventors. But in 1793, it is clear that TJ thought there could only be on true inventor.

  71. Why don’t you shirkers with obviously too much time and minds that are obviously bored, do something useful for once and seriously address this issue… if you bunch of old ladies in a knitting circle can actually be useful … that is.

    link to eagleforum.org

    link to govtrack.us

  72. Ned, Ned, Ned shame on you. Intentional misrepresentation of your own evidence. Bad boy.

    “We can take the above to essentially tell us how Jefferson and the Board interpreted the Constitutional in view of the two-inventor situtation. 1) the inventor had to be the true inventor;”

    That is not what the above tells us. It tells us TJ and the Board required that the inventor had to BELIEVE HIMSELF TO BE THE FIRST — and that is still a condition with first to file. Nobody who files any application knows for sure that they are the first, they can only lack knowledge that someone else is; i.e., they can only have a belief that they are first.

    But the point remains: it makes squat difference what TJ thought. He didn’t write the Constitution — he wasn’t even in the country. He and Sally Hemings were in France. And he was initially anti-patent — up until he wanted to get one for his own invention. TJ, the slave-humper, is about as relevant a historical figure to this issue as Soupy Sales. Are you in Charlottesville? Everybody there is TJ-nutto.

    And who cares what the Patent Act of 1793 (or 1952) says — Congress has the power to change any act they want to change.

  73. Hard, read my hand, or better my posts. I am trying to get Mike to stop speculating and actually read up on what we do know about the subject from history as discussed in the cases, etc.

  74. Building barriers to free trade such as disallowing US patent granting to foreign nationals is not the way to productive human advancement. If there country grants our citizens patents me must in fairness reciprocate. With the shift to global immediate first to file with immediate novelty check there is likely to be considerable resistance from foriegn entities because they have been free to steal american inventors patents by claiming first to invent when actually they just commited fraud in previous years.They sort of divide them up porking the first thefter here in the united states the true inventor myself has already been porked by the first theftor.

  75. Ken, I urge you to read my post above, especially the link to the Elred case. There the whole issue of patent of importation is discussed. The original congress thought granting patents of importation to be unconstitutional.

  76. Max, all you say is allowed in the current US system. The only thing we are arguing about is this:

    Can the first inventor, who has not abandoned his invention, or abandoned his right to a patent per Pennock v. Dialogue, applies for a patent under the laws and complies with all its requirements, be denied a patent on the grounds that second inventor filed first?

    Without guidance from Congress on this issue whatsoever and having only the Constitution to guide them, Jefferson, Randolf and Knox, the first board decided this question in favor of the first inventor over a first filer.

  77. Bruce, consider for a moment the possibility that the framers did not conceive of the possibility of two “true” inventors. (And, it appears that this is the case, see my posts supra.) Would you agree all the following are within the power of Congress?

    1) It could grant both patents;
    2) It could grant the first to file a patent; or
    3) It could grant the first to invent a patent?

    However, we do have the problem that Jefferson, Randolph and Knox decided to grant the patent to the true inventor in the first interference, not the first to file. Was this just a choice among available options or was it dictated by the Constitution?

  78. Ned,

    Please be more precise in your comments.

    Mike, nice. And, to an extent you are right, but you really need to brush up.

    What in Mike’s (excellent) post is right? Where does this “extent” end? Where (explicitly) is Mike not right? What does Mike need to “brush up” on? How is reading your posts, or the Pennock case going to clarify/amend/update/change his post? What (explicitly) in his post will need to change?

    It’s one thing to have an idea. It’s quite another to say “you are kinda right, but brush up” – leaving all of us readers wondering what exactly you think is deficient in such an excellent post.

    Step up your game, please.

  79. More that we know:

    Jefferson wrote the 1793 act where he included among the new features the following:

    – an oath that the inventor believes himself to be “the true” inventor or discover;

    – A defense “that the thing thus secured by patent was not originally discovered by the patentee, but had been in use, or had been described in some public work anterior to the supposed discovery by the patentee, or that he had surreptitiously obtained a patent for discovery of another person”

    We can take the above to essentially tell us how Jefferson and the Board interpreted the Constitutional in view of the two-inventor situtation. 1) the inventor had to be the true inventor; and 2) the inventor had to have originally discovered the invention.

    “True” was later changed to “first” in the act of 1836. At that time “original” was also added to the oath. But given that they came both from the 1793 act, and we know why they were inserted into the 1793 Act, a clearer picture begins to emerge of what Thomas Jefferson and the Board believe the Constitution meant in the face of multiple claims to the same invention by two independent inventors. They believed the Constitution required them to grant the patent to the “true” (first) and the original inventor.

  80. Mike, nice. And, to an extent you are right, but you really need to brush up.

    Try reading my posts above, the linked cases, but most of all, Pennock v. Dialogue, the 1829 Supreme Court case that gave us On Sale, Public Use, but most of all, it discussed the problem of two, true inventors.

  81. I think that calling patent reform nessarily first to file or first to invent take it or leave it is misleading the reality is we need to focus on forty or more methods of improving the system to make is usable at all for all citizens. The corperate behemoth wants to take all and squash the ipoverished leveling the playing field through multiple methods is the only way to obtain genuine justice and the bozos in charge of this reform are clueless or corrupt as far as accomplishing this.

  82. Practically there is no inconsistency. Employment agreements usually include a duty to assign inventions to employers….

  83. Just -
    I can’t tell if you are serious or not..so I will point out that as used in the author definition –novel– does not mean new…. It means:

    nov·el
    1    [nov-uhl] Show IPA
    –noun
    1.
    a fictitious prose narrative of considerable length and complexity, portraying characters and usually presenting a sequential organization of action and scenes.
    2.
    (formerly) novella ( def. 1 ) .

  84. Let me suggest that you are addressing an issue that is subordinate to the constitutional provision. A hallmark of exclusivity is the opportunity under law to assign such rights, or portions thereof, to others, be such others natural or juridicial persons.

    The purpose underlying my comments was merely to note the inconsistency legislatively drawn between copyrights and patents.

  85. Not to mention that the cited definition of “author” uses the word “novel,” meaning that it doesn’t support Les’ argument.

  86. Babble Boy, I don’t know what I said that set this off, but I am sure that Art. I Sect. 8 is not an unlimited grant of power to grant patents to anyone, for any reason, for any length of time. See, e. g., both Pennock v. Dialog and J. Stevens dissent in Elred v. Ashkroft, link to law.cornell.edu

  87. That’s an excellent example of why judges in patent cases don’t slavishly refer to dictionaries for all their word-defining needs. Especially when it’s a non-legal dictionary defining a legal term.

  88. Pro Se -
    In the U.S. “must be awarded to an actual person” is not ignored. If a company owns the rights to a patent it is because the inventor assigned the patent right to the company.

  89. FTF/FTI as a constitutional issue seems to me to be a non-starter for many of the reasons noted above. Moreover, in my view Stanford v. Roche hardly rises to the level that this now raises the specter of a constitutional issue.

    Perhaps the more important issue has nothing at all to do with patent law, but with copyright law and the Work for Hire Doctrine. If patents, in the first instance, must be awarded to an actual person, the inventor (first, second, third, etc., depending on the facts), it escapes me how this “must be awarded to an actual person” can be ignored by denominating a “non-author” as an “author” with the stroke of a legilative pen.

  90. IANAE – Even if your assertion re the Constitution were correct, what I said CAN be right. Note the definition of the word invention below and the inclusion of the word NEW therein. Also note the definition of Author below, from the same source, and its lack of use of the word NEW.

    in·ven·tion
       [in-ven-shuhn] Show IPA
    –noun
    1.
    the act of inventing.
    2.
    U.S. Patent Law . a new, useful process, machine, improvement, etc., that did not exist previously and that is recognized as the product of some unique intuition or genius, as distinguished from ordinary mechanical skill or craftsmanship.
    3.
    anything invented or devised.

    au·thor
       [aw-ther] Show IPA
    –noun
    1.
    a person who writes a novel, poem, essay, etc.; the composer of a literary work, as distinguished from a compiler, translator, editor, or copyist.
    2.
    the literary production or productions of a writer: to find a passage in an author.

    link to dictionary.reference.com

  91. The first entity to file may not have been the first to invent, and therefore, WOULD NOT, be the inventor in the Constitutional sense. It’s a simple factual inquiry that any amount of “reform” won’t change.

    HOWEVER,…

    We already have laws “circumventing” and changing your paradigm – see 35 USC 102.

    Are you saying the current laws are also unconstitutional?

  92. Les, that can’t be right, because the exact same constitutional provision admits of second authors enjoying the exact same copyright as first authors, so long as the authorship of each was independent of the other.

    The second invention can still be novel, so long as the first invention isn’t prior art under 102. The definition of novelty is up to Congress.

  93. The terminology first to invent is a method of inventorship determination so there should be nothing to prevent more accurate methods of inventorship methods to be added to perfect the process. The problem is by just shifting to first to invent as a determination method there not improving the accuracy but opening another batch of innaccuracys. The mccain plan coupled with a few more of my methods perfects the system.

  94. I believe saying FIRST inventor would have been redundant. To be an invention, something has to be new. The concept of a sequentially second inventor is therefore an absurdity. At the time of the second invention, the invention is no longer new.

  95. The Constitution does not require a first-to-invent standard, it never has. If it did, there are plenty of things in existing patent law that would be unconstitutional too.

    Under the current patent law, an earlier inventor may be entitled to patent even if someone files a patent application first. In theory, the earlier inventor just needs to show that they were in fact the first inventor and the first filer will lose out on the patent. However if the first “inventor” cannot meet the burden, the second-inventor will get the patent.

    Article I, Section 8, Clause 8 empowers Congress: “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.” But this says nothing about first-to-file or first-to-invent. It just says that it must secure for “Inventors.”

    Turning to the definition of “Inventor” is “a person who invents… one who makes inventions,” which is not particularly helpful. However, the modern definition of invent means “to originate or create as a product of one’s own ingenuity, experimentation, or contrivance.” Clearly this definition does not preclude two independent inventors. It merely requires that the idea originate from the “inventor” him or herself.

    The Supreme Court seems to agree. It has been long understood that an “inventor” is free to keep an “invention” secret in the form of a trade secret, if they can. But a trade secret “does not offer protection against discovery by fair and honest means, such as by independent invention.” Kewanee Oil Co. v. Bicron Corp., 416 US 470, 476 (1974). Moreover, under the current patent law, a second “inventor” may in fact be entitled to a patent over a first “inventor” who elected to “abandoned, suppressed or concealed” the invention by keeping it a secret. 35 U.S.C. § 102(g). Patent law cases even go so far as to say that the prior inventor cannot even use their “invention” to invalidate the subsequent patent. E.g., Gillman v. Stern, 114 F.2d 28 (2d Cir. 1940).

    This idea of two possible inventors is not just a special case. Other places in the current patent law that permit inventors other than first inventors to obtain a patent. For instance, 35 USC 102(a) may give a United States inventor patent rights even if that same invention was known or used by people outside its borders. In other words, so long as some use outside the United States is not recorded, a later “inventor” can still get a United States patent.

    The idea that only the first inventor is entitled to a patent is actually out-of-step with how the other part of the intellectual property clause is interpreted for copyright law. The idea of independent creation is a “bulwark of copyright.” Under copyright law, if two authors create the same work without any copying, both would be “Authors” and both would be entitled to the protection of copyright: “if by some magic a man who had never known it were to compose anew Keats’s ‘Ode on a Grecian Urn,’ he would be an ‘author,’ and if he copyrighted it, others might not copy that poem, though they might of course copy Keats’s.” Sheldon v. Metro-Goldwyn Pictures Corporation, 81 F.2d 49, 54 (2d. Cir. 1936).

    Moreover, Congress has a lot of authority to allocate which “inventor” gets the patent. Indeed, Stanford v. Roche says as much:

    “It would be noteworthy enough for Congress to supplant one of the fundamental precepts of patent law and deprive inventors of rights in their own inventions. To do so under such unusual terms would be truly surprising. We are
    confident that if Congress had intended such a sea change in intellectual property rights it would have said so clearly—not obliquely through an ambiguous definition of “subject invention” and an idiosyncratic use of the word “retain.””

    While the Supreme Court doesn’t typically go in search of Constitutional issues, it never even raised so much as a mention of the potential unconstitutional nature of assigning an invention to someone other than the FIRST inventor.

    To say that the Constitution only permits the “first” inventor to obtain a patent is wrong. I found no cases that attacked the constitutionality of awarding a patent to a “second” inventor.

  96. Constructive reduction to practice is the method I concieved to make the system fair to those who dont have the money to construct the invention or those who concieve to sell and concieve more because they are good at conception due to the financial reward of being able to sell. There is no reason for any change to this except for corruption to steal yet another method to destroy inventors incentive to create.

  97. Mr. Thomas:
    You are a very keen observer. Considering that the Paris Convention Treaty of the late 19th Century is one of the bulwarks behind which internationalism is based, the financial cartel being the other, we must ask ourselves how much do we value our sovreignty as a nation. This is not to say the foreigners should not have patent rights in the U.S. However, there should be political considerations to said rights, i.e., it should not automatic as is the case with a natural U.S. citizen. For example, a criteria should be espoused to determine the harm to the national interests of the U.S. by the granting of said monopoly rights. Say China does not allow its currency to float. Then Congress shall have the leverage to vitiate the patent rights of Chinese companies. Better yet, perhaps Congress should be granted the right to unilaterial assign said patents to a U.S. citizen. However, we digress from the topic at hand.
    Let’s us consider the boogey man of today, the anarchists of the modern era, our fascist, our marxist, our communist, entities we now label as a terrorist. I find it amusing that monies will be seized, individuals imprisoned, but nothing is ever done to the intellectual property rights of these entities. Would it not make sense to redistribute the intellectual propery rights of terrorist entities? However, this is never discussed by Congress.

  98. That would spark retailation in other countries and were far ahead of them in patents in foreign countries I think! The big push needs to be worldwide first to file awarding with immediate novelty check weve got the worlds greatest inventor right here.

  99. The problem is partly that solo inventors and small entities often do not have the financial where-with-all to optimally play the patent game. ‘Little’ guys often dither because they simply need to find the cash to file. They file fewer applications on their core invention. Yet a patent can be a ‘little’ guy’s only hope of obtaining an economic reward for innovation. Going to a FTF system exacerbates the disparity between small and large entities.

  100. What has been held constitutional previously is constantly subject to review by new arguments to the opposite.This is the process that perfects our justice system.

  101. Clearly there can only be one true inventor. The conception can only form in the mind of one person. Wile previous patent law may have awarded the patent to the first theftor due to circumstances beyond the control of the true inventor such as lack of money and a desire of the first theftor to steal by denying a equitable partnership with the inventor. This is why its nessary to legislate 20 year terms for inventors to find funding to there issued patents.

  102. Dear Ned:
    I agree that the intellectual property clause makes first to file if not the inventor unconstitutional; however, I remember reading a few old cases from the 19th Century that allowed for the first person to bring to the U.S. a pre-existing invention to be entitled to monopoly. I will look for those cases. It is the early precedent that I think allows the first to file system. I would argue, however, that the U.S. needs to re-visit the Constitutionality of allowing a foreign entity to have monopoly rights in the U.S. That is more problematic than people want to consider. Namely, and I think it is time to really, really, take a hard look at Congressional power on this point . . . Congress has no authority to abrogate the rights of the citizens of the United States. A good argument can be made that when a foreign entity has been granted a powerful monopoly right by Congress, Congress has failed in its duty to secure a Republican Form of government. However, that is a different issue.

  103. The person who wrtote that article is either being disingenuous or dense, but the Roche case has no bearing on the Constitutionality of FTF.

  104. Getting a bit circular on us here, aren’t you, Ned? You sound like one of these mental-masturbatory academics with a whole lot of time on their hands who delight in stirring up pedantic constitutional non-issues.

    Congress is free to give “inventor,” “discovery,” “rights,” and “invention” any reasonable definition it wants. It is certainly not bound by prior acts of Congress. Read Article I.

  105. The right to a exclusive patent is justified by attempting to stimulate creativity by promoting the financial incentive to create.What your talking about is a frienzied attempt to develop the concieved idea using previous art witch is available to many teams in most situations. The unwillingness to share with the inventor drives this theft attempt in a race to steal the invention this process defeats the incentive to create destroying human advancement.

  106. They menat the first one who made an invention AND disclosed it to the government. They certainly did not want to reward those who did not make their inventions public.

  107. Good point Bakels. The Constitution does not say “first” inventor. Suppose the writers of the patents clause intended it to apply to ALL inventors, without indiscrimination, by which I mean everybody who has not derived but, rather, has independently made a new and not obvious discovery within the useful arts. Every one of those inventors ought to be encouraged, by the issue to them of federal patent rights.

    Of course, given the insanity of interference proceedings, that is what actually happens today, isn’t it? And it seems that the Writers saw it accurately, that the situation will hardly ever occur. Look how few interferences are declared, even today.

    Nevertheless, is it not the case, that interference proceedings are the thing that is unConstitutional?

    And, extrapolating, think on the consequence of making co-pending US patent applications, unpublished at the date decisive for the validity of a claim, easily available for obviousness attacks on that claim. That is even more unConstitutional, isn’t it?

  108. This is one of the forty+ methods of cheating the true inventor of his right to a patent. Until we adress and correct all of them the system is corrupred discouraging all human advancement. The odds of the second inventor independantly creating the invention are astronomically impossible therefor a fraud attempt should be the normal conclusion when this situation is alleged. The thing is with the reality of corrupt inter uspto file insertions The true inventor can become the accused fraud also. so worldwide first to file with immediate novelty check is the new method and these obsolete fraud oriented arguments need to be trashed

  109. The core of the problem is the basic idea of patent law that just a single person gets the exclusive right to apply an invention. Perhaps that was appropriate in a (distant) past, but in today’s world there is often a frienzied activity in some fields where it is more like a lottery who happens to be the first (both to make the invention and to apply for patent!) Thus the “winner takes all” principle of patent law is not very just, and it is hard to see in what way it contributes to the constitutional end. Will inventors work harder if they know that someone else is upon their heels? Are inventors that lazy??

    Withou due onsideration for the underlying problem, any discussion/decision on FTI or FTF is futile.

  110. I don’t understand what is so wrong about issuing a patent to the corporate owner of the intellectual property in the invention. I don’t understand what is so wrong with declaring that patent invalid if the chain of title does not go back, unbroken, to the true inventor, the actual human devisor of the claimed subject matter.

    I don’t understand what provision of the US patent law model prevents rival filings at the USPTO, for overlapping subject matter. I think they happen in every jurisdiction, at about the same frequency, and that every jurisdiction therefore needs a way to deal with them. In the USA it is the threat of full-blown interference proceedings that deals with all but a few of them.

    Under the European Patent Convention, all overlap situations are resolved without interference proceedings. If necessary, there have to be what you might call “derivation proceedings” but they are rare because everybody knows the importance of the filing date. As you never tire of telling me in these columns, first inventors file first.

    I think that the EPC model does put into effect the patents clause in the US Constitution, and that those above who say it does not are persons who don’t know that the EPC says that patents are invalid if they are not issued to the inventor (or to one who derives from the inventor the right to be granted a patent on the inventor’s invention).

  111. Let me suggest that this may be naive, and that you may not have thoroughly looked at the derivation proceedings and process in the pending legislation.

    Some of the problems with derivation in at least one of the bills:
    - the timing is very tight. You have one year from the publication of a competing application to start a derivation proceedings. In my experience, I often have not found out for several years, when the examiner cites the competing application in a later office action.
    - the whole scheme apparent falls apart when non-publication is requested for the competing application. If it isn’t published, it never can be challenged in a derivation proceeding.
    - Discovery? Who needs discovery? Never mind that the owner of the competing application often will have the relevant documents.
    - The filing of a request must be supported by substantial evidence. Whoops. No discovery.
    - The initiation of a derivation proceeding is apparently discretionary on the part of the director. To be a bit cynical, how many IBM apps will he allow to be challenged in this way?
    - The post-grant remedy is similarly limited.

  112. For anyone who believes that the Senate and House bills truly are first-inventor-to-file, instead of first-to-file, regardless of inventorship, please answer the following:
    - How are non-inventors prevented from acquiring patents, esp. with the removal of 35 USC 102(f)? (And, why was 102(f) removed, if provision were not being made for the issuance of patents to non-inventors).
    - What prevents a putative assignee from claiming ownership of a patent by an unavailable putative inventor? What are the penalties to the putative owner for falsely claiming such? What are the penalties for filing a false “substitute statement”?
    - What are the remedies and penalties for someone outside the U.S. filing a fraudulent declaration of inventorship?

    These questions primarily come from the rewrite of 35 USC 115 which allows for a declaration alternative to an oath to claim inventorship, a Substitute Statement by the putative owner of an application, and that the likelihood that such will be available being substantially increased by the changing of the oath/declaration being required before the application can be examined, to before it can issue.

  113. I think that it really depends on whether the legislation ends up as first-to-file or first-inventor-to-file system. Right now, the bill passed in the Senate and the pending House bill look more like first-to-file, regardless of inventorship, despite it being sold by the proponents as first-inventor-to-file.

    Obviously, the removal of 102(f) would seem to indicated that the proponents of the legislation are aiming at a first-to-file, regardless of inventorship, system. The oath/declaration/Substitute Statement of revised section 115 doesn’t help matters, since the penalties for falsely claiming inventorship will be reduced, and effectively eliminated for inducement thereof.

    But, if those elements can be remedied, so that non-inventors are effectively prevented from getting patents (or, their assignees are prevented), then I don’t see there being much difference Constitutionally between a true First-to-File and a First-to-Invent system. The strict language of the Constitution only talks to “inventors” and not “first inventors” (unless you define “inventors” to implicitly mean “first inventors”).

  114. I think the first-to-file regime is generally an attempt to award the invention to the first to invent. It simply assumes that the first to file is the first to invent, without looking into it too deeply. It is write most of the time, and is a hell of a lot simpler than first to invent.

    If one simply requires evidence of an invention having been stolen from an earlier inventor, rather than invneted first, things become much neater.

    One can never really know who invented something first. The advantage of a filing date is that it is clear. It also indicates when the contents was put on record for mankind…

  115. The First-Inventor-To-File section of the America Invents Act contains much more than a provision granting the patent to the inventor that files an application first. More serious constitutional questions that Professors Mark Janis and Tim Holbrook have not considered are much more likely to arise. Proposed Section 102 contains new undefined terms and poorly drafted statutory provisions that frustrate clear interpretation. But these are apparently not “bugs” – they are “features” intended by their drafters. These provisions permit obfuscation to the last minute, requiring an amendment on the House floor this week that nobody will have a chance to study. It is the interpretation of these other provisions in Section 102 that may well involve serious constitutional considerations. While constitutional arguments seldom persuade courts to strike down new statutes, considering the absolute novelty features of proposed Section 102 would likely involve constitutional analysis. This is because one interpretation of the proposed statute – that intended by the drafters and which Senator Leahy and Senator Hatch have urged us to adopt during their Senate colloquy – is likely unconstitutional. See my article America Invents Act’s repeal of the secret commercial use bar is constitutionally infirm, explaining all this at link to bit.ly.

  116. Invention, by definition, is the first instance of conception followed by successful reduction to practice. That is why first to file would not be constitutional and would not square with the body of statutes and case law regarding inventorship. The first entity to file may not have been the first to invent, and therefore, WOULD NOT, be the inventor in the Constitutional sense. It’s a simple factual inquiry that any amount of “reform” won’t change.

  117. Putting down the name of the guy who sweeps the floors as “listing an inventor” does not amount to rigorous consideration of inventorship, which, as far as I know only occurs in the U.S.

    And I can comment on anything I please, qualified or not. Heck, Mooney does it all the time.

  118. The current act is not unconstitutional .

    See, e.g., Pennock v. Dialogue for a discussion of multiple inventors and how a first inventor may lose his right to a patent.

  119. That’s absolute nonsense. Try filing a PCT application listing a non-person entity as an inventor and see how far you get.
    Other counties grant patents to non-person assignees. That’s not the same as considering them inventors.
    If you don’t understand how the rest of the world works then you are not competent to comment on whether or not their systems (including FTF) are any good.

  120. I have been discussing this ever since it was first floated about ten years ago. This is a red herring argument. The first patent acts were first to file. Q.E.D. The first person to bring technology from another country to here, i.e., you didn’t even have to be an inventor . . . just the first to copy. I wish you people would do your research.

  121. This is an argument over what power Congress has under Article I, Section 8.

    Let’s say for a minute that this section limits Congress’s power to grant patents to the first inventor*, could it grant patents under a FITF system under a different grant of power, such as the commerce clause (which it uses for trademarks)?

    * I’m a little sick of always trying to read the tea leaves with the founders. If FITF is unconstitutional, then so is the current statute for the reasons stated by Dennis. And it doesn’t say “first” (these founders who we look up to were awfully loose with their language — and it isn’t like this was a hotly debated clause for which they had to be ambiguous to get the votes). I look forward to reading these academic letters with their authorities. I’m knew to this argument and so I’ve just seen speculation and assertions without citations at this point (except perhaps by Ned who often cites to old Supreme Court cases, etc).

  122. I’m not sure that I follow your argument. That they were “surprised” sounds as if they hadn’t even considered multiple applicants as a possibility — thus the constitution doesn’t speak to whether there can be multiple inventors.

    Whether to award the patent to the earlier inventor or earlier applicant is a policy decision. May Jefferson et al. made the decision to award to the earlier inventor — why did they have to think they were bound by the Constitution?

    Seems like a lot of speculation. Perhaps there is better historical evidence.

  123. I am not fond of this change, but it is not unconstitutional. The constitution plainly says award to “Inventors.” No where does it say “first inventor” as they suggest. All this requires is that someone did not steal or derive the work from someone else. There is no “first inventor” requirement.

  124. “Sadly, it may not be constitutional”

    What’s so sad about it? I’ll take constitutionality over convenience any day. Totalitarianism is convenient too.

    Whatever it takes to retire bad ideas like FTF to the dustbin once and for all… Remember all these other countries recognize a non-person entity as an inventor. Only flesh and blood can truly invent (que the pointy eared Trekky crowd that will say, “…but really smart machines can invent”.)

  125. The more serious problem with the patent system is the failure to manage and fund the Patent Office properly so that patents issue quicker.

  126. discoveries = disclosures = written description = possession + enablement = specification = huh

  127. Thanks Paul Cole. It fits, that “discoveries” to the writers of the Constitution meant “disclosures” ie an enabling disclosure such as, for example, a written description.

    After the Bilski discussion of what was meant (at the time of writing the Constitution) by “useful arts” now to get analysis of what was meant (at the time of writing) by “discoveries” is great fun.

  128. This much we know.

    When they passed the 1790 patent act, Congress did not believe that they had the power to provide a patent of importation as a constitutional issue. J. Stevens, dissent, Elred v. Ashkroft*. Obviously the issue here was that the importer was not an inventor.

    The framers also apparently did not have in mind the possibility of two inventors. There was no provision in the act of 1790 for an interference. According to Frederico in his 1936 article, the first board (Jefferson, Randolf, Knox) were surprised to find multiple applicants applying for the same invention. Apparently they decided to award the patent to the first inventor, not the first inventor to file.

    One has to believe they did so because of their interpretation of the Constitution. Otherwise, if they were not thinking they were bound by the Constitution, they clearly would have awarded the patent to the first to file.

    * link to law.cornell.edu

  129. “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and (first) Inventors the exclusive Right to their respective Writings and Discoveries.”

    If they wanted to say “first”, I think they knew how.

    But if your going to be literal about it, then we are already applying the wrong rules, “discoveries” doesn’t come close to the present law.

  130. Very sadly, he does not cconsider all the possible meanings of “discovery” at the time that the Constitution was drafted, but merely asserts that “discovery” means “invention.” He does refer to In re Kemper, 1 McArthur’s Patent Cases 4, 1841 but that case is not available online and cannot be consulted. It is not clear what level that case was decided.

    Does anyone have the reference online?

  131. Oh. Oh. Wait a minute. Oh. Dan Ravicher. Now there’s an objective viewpoint. Why don’t you just ask Richard Stallman what thinks about patents while you’re at it.

  132. Not necessarily. In the usage of the late eighteenth or early 19th century it could also mean “disclosed”, that meaning being preserved for the disclosure of documents during the course of litigation. I have traced this to an early 19th century English textbook on patent law where the word is used in both senses. In the latter sense, it would give the patent clause a certain symmetry: authors get protection for their writings while inventors get protection for their disclosures i.e. writings drawings and models.

  133. Excellent talking point Dennis. This should be a good thread.

    The UK patent statute defines “inventor”. If we are going back to fundamentals, should terms be defined? When the US Founding Fathers used the word “inventor” what did they mean? I mean to say, does a mere conception, an insight, deserve the appellation “discovery”? Is an enabling disclosure required? If so, who is the “inventor” of the enabled discovery? And (with a nod to Ned’s Nobel prize point) what promotes the progress? Is the mere insight enough?

    Do the rival letters need to discuss that issue, or does it not matter?

  134. “A first inventor” in the U.S. has never been what so many people erroniously think it is in patent law. It has never been merely a bare conception without also a timely prior patent application filing or actual reduction to practice that makes it a completed invention.

  135. A discovery is the creation of something new and useful within the Useful Arts as opposed to the finding of a new land or thing in the wild or a law of nature. See, e.g., Walker on Patents, Section. 2.

  136. The convenience of a first to file system is self-evident. Sadly, however, it may not be constitutional since the law is concerned with reality and justice. I suspect that the Founding Fathers meant the first person to have made an invention, not the first person to have disclosed it to the government.

    The question is whether the legislature can override this without a constitutional amendment, so as to deem that the person who was first to file is to be taken to be the inventor. I do not think it would be safe for the lesislature to presume that they can.

    However, there seems to be remarkably little interpretation of the patent clause in the US constitution. When I visit the US, nobody can tell me what is meant by “discoveries”. If there is legislation, there will be room for at least one interesting case to find its way to the Supremes.

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