Constitutionality Question Looms as USPTO Implements Regime that favors a “Filers” over “Inventors”

Madstad Engineering, Inc. v. U.S. Patent & Trademark Office, 8:12-cv-01589 (M.D. Fla. 2013)

In 2012, Madstad filed a declaratory judgment action against the USPTO and requesting that the court find various aspects of the America Invents Act to be unconstitutional. Madstad's basic argument is that when the U.S. Constitution speaks of exclusive rights for "inventors" it should be interpreted to mean "first and true inventor." Under this analysis, the AIA fails because it purposefully rewards the first-to-file a patent application rather than the first-to-invent. The complaint argues:

A second 'inventor' is an oxymoron; that person merely rediscovers that which was already discovered by the first inventor. Thomas Jefferson, James Madison, and John Marshall all shared this understanding. . . . Congress is not authorized to award patents to the winners of races to file to the PTO. . . . Under the AIA, there is no effective statutory requirement that the applicant be an 'inventor' for a patent to be valid.

Madstad has also requested a preliminary injunction blocking implementation of the first-to-file provisions of the Act.

As we approach the March 16, 2013 implementation date, we can look for the plaintiffs to push the court again for a decision on its motion for preliminary injunction or perhaps a temporary restraining order (TRO) that would block implementation. Madstad is represented by Jonathan Massey.

119 thoughts on “Constitutionality Question Looms as USPTO Implements Regime that favors a “Filers” over “Inventors”

  1. Wrong Ned – don’t forget the difference between the starting line and the finishing line, and exactly who gets to set the rules defining both.

  2. Paul, you and I both know that big filers and everyone filing internationally, large or small, are forced to be on a first to file system regardless of the US law. That is the primary argument in favor of harmonization. I’ve heard Roger Smith make that argument numbers of times to individual inventors/startups. But the counter to Roger has always been that first to invent does not prevent them from filing before they disclose or place the invention on sale. First to invent does no harm to the international filer at all, except, in the vary rare incidences where there is an interference. But these are very rare.

    The topic is only really, really important to startups who do not yet have adequate funding. They simply cannot afford to file quickly on iterations of their basic ideas. They choose, but still they can choose wrong.

    They really need a first to invent system and the availabilty to overcome art using 131 declarations. Interferences are still rare and can be discounted.

    So, in the end, first to invent does no harm to the international filer, but does substantial harm to the small inventor/startup.

    But where do ground breaking inventions come from?

    Where do new jobs come from?

    That’s right. The very people who are harmed by first to file.

  3. I think the “real” issue is whether, absent some disabling action by the first inventor, the Constitution itself requires a patent go to the first inventor. Only then can Congress be overruled.

  4. Mettallizing discussed Pennock, a case that did in fact recognize that a first inventor could lose his right to a patent, opening the door to a second. I am not sure how that is discussed in the Madstad case, but I would argue that so long as a first inventor has done something to lose his right to a patent, such as placing it on sale, then he cannot be divested. The was, certainly, the view of the matter earlier expressed by Marshall, who was part of the Supreme Court who decided Pennock, written by Story.

  5. MaxDrei,

    I ha te to be the bear of bad news, but most really just don’t care what happens to your mind.

    That you for whatever reason envision Sarah, such is neither pertinent, nor in the least bit interesting.

    The better response from you would have been “Thank you.”

  6. LB I see now, thanks to your:

    “Golan also suggests that the Court won’t be very receptive to the crabbed interpretation of “inventor” that is essential to the challenger’s argument in this case”

  7. I can’t speak to Pennock, MD. Being considerably younger than Ned, I don’t spend a lot of time on 200-year-old cases. (I kid, Ned.)

    Regarding Golan and Eldred, these cases both suggest, with respect to “promoting the progress,” that the Supreme Court is not going to nit-pick over individual provisions of the patent statutes. It’s up to Congress to make the policy decisions and trade-offs. Note that Golan in particular involved a tension with free speech rights and the Court still declined to get into an argument with Congress. As the Court put it in Golan, the Copyright Clause “empowers Congress to determine the intellectual property regimes that, overall, in that body’s judgment, will serve the ends of the Clause.” Since patents are covered by the same clause, it’s pretty safe to assume that the Court will adopt the same attitude.

    Golan also suggests that the Court won’t be very receptive to the crabbed interpretation of “inventor” that is essential to the challenger’s argument in this case. See the Court’s treatment of “limited times.”

  8. anon, further, if they wanted to limit “on sale” to be the equivalent of public use or public knowledge, they could have simply removed it from the statute. As limited, the proof of public use and on sale is the same to a point. But on sale requires the additional elements of a sale or an offer for sale.

    Essentially, you will have read on sale out of the statute if it requires a proof of pubic use or otherwise available to the public as an essential element of proof.

  9. I think that in this instance the Congress has made a bigger impact than the Federal Circuit could ever do.

    You know, the people who are actually authorized by the Constitution to write patent law?

    Further, I think that you are forgetting that the slip up by early Congress in letting the judiciary define “invention” by common law evolution was repealed in 1952. Ever since then, the ONLY way the Supreme Court has been able to keep their fingers in the patent pie is through their made up “implicit” reading under 101.

    If Congress were not such a bunch of short-sighted-what’s-in-it-for-me-ragtag-bunch, the power grabbing 9 would have been chastized again like they were back in ’52 for thier illegal clamp-down on patents and the Flash of Genius smackdown.

  10. Except, Anon, there is a problem. On-Sale is in the statute because of Pennock. I am pretty sure the Supreme Court will not consider the case overturned desite the "otherwise" language. They have the final say here, not the Federal Ciircuit who do not seem adept at actually reading let alone following the Supreme Court cases.

  11. penny has dropped and he has at last cottoned on to what everybody else here is talking about.

    Quite the contray MaxDrei, it means that your post is finally missing its self-inconsistencies such that it is you that has apperantly “cottoned on.”

    My views have been – and remain – rock solid and consistent.

    Any people judging me otherwise also have membership in the little circle group, and those people are the ones whose opinions I rightly don’t care about to begin with. Thus your warning is as facile as your hold on legal positions (generally). Witness the call for help on the cases. It’s always humorous when those without wit try so desparately to be witty. The phrase to IANAE comes to mind: without the smart.

  12. Ned, regardless – Pennock does not stand for what you think it stands for.

    No need to rehash our discussions – they are archived here.

    We’ll just let the real world continue ascribing to my views.

  13. But Les, don’t you see, that remark just begs the question when exactly an “invention” is made. Is it the moment there is a flash of genius (or flash of something or other) inside your head or is it when you have reduced that flash to material or written form?

    You see, in copyright, it ain’t the thought that counts but, rather, its reduction to material form. If it isn’t also that way, in patent law, why not. Can you defend your assertion that it is the mere thought, the conception, that shall be decisive as to who gets the patent? Would it be good if all inventors were to sport cranial electrodes, to detect when the flash happens, and whose flash was the first flash?

  14. Once again anon pipes up with his “attaboy” remark, indicating that the penny has dropped and he has at last cottoned on to what everybody else here is talking about.

    anon, I suggest you mull over Mark Twain’s warning. Sometimes it is wiser to restrain yourself from such patronising and embarrassing utterances, so that you don’t inadvertently refresh and confirm how people here judge you.

    BTW people, I see Pennock and Golan and Eldred all have something to say about constitutionality but quite how any of them is of more than background interest here I don’t yet see. Anybody care to spell it out with particularity?

  15. How one establishes or proves that date is most definitely provided for in our Constitution: Congress sets the rules of the race.

    Congress has merely changed the rules of the race. Certainly, you are going to have to make a much better argument that Congress doing so violates the Constitution which says Congress gets to do so.

  16. In any event,

    In any event, it is Congress that makes the rules for the Race.
    Always has been.
    See the Constitution.
    Also see Pennock and Golan.

  17. In any event, the date of invention is probably before the date the application is filed and application preparation should not have to be rushed in order to win a race to the patent office.

    Many already complain about “patent quality”. When is quality ever enhanced by rushing?

    Haste makes waste.

  18. I agree. This is a reasonable question. I would argue that the date of invention is the date that the claimed invention (e.g., allowed claim 1) was known to the inventor.

    How one establishes or proves that date is another question. Perhaps one best left to an interference tribunal….

  19. So far so good, Les, but come on, tell us. In the US scheme of things, where an inventor conceives, then is diligent to reduce to practice and get as far as a disclosure that enables the invention and makes it available outside his own head, when axactly is the act of invention that the Constitution contemplates. In other words, is the Constitution aiming to encourage dreamers or doers, conceivers or those who reduce to practice. If there is to be a race, which of these should win it?

    If the patent spoils should go to the first to conceive, why exactly might that be? What public policy does that serve? How does it promote the progress?

  20. “I think reasonable people can agree that you can have independent invention.”

    Definition of INVENT
    1
    archaic : find, discover
    2
    : to devise by thinking : fabricate
    3
    : to produce (as something useful) for the first time through the use of the imagination or of ingenious thinking and experiment

    link to merriam-webster.com

    Reasonable people might agree with that. But, they would be wrong.

  21. Two things:

    (1) The bows and arrows aren’t the same. Some are very different. Some are quite innovate and specialized for particular types of use. Look up the long bow with arrows made to pierce armor, for example, and compare that bow and arrow to the Japanese bow and arrow for shooting while riding on a horse.

    (2) “No contact” is probably not accurate. The native Americans may have come from Asia and probably came with bows and arrows from Asia. Bows and arrows may have been used by the early humans that walked out of Africa with their bows and arrows.

  22. How is it that the American Indians, the British, the Chinese, etc., all came up with the bow and arrow independently despite having no contact with each other?

    Who would’ve got the patent? Discuss.

  23. Just saying,

    For example, an end to this type of MaxDrei Bx$ post-run-away-and-repost-another-day-but-QxQ-about-”not-able”-to-have-conversations-never-intending-to-ACTUALLY-have-those-conversations-and-only-pure-wanting-his-so@pbox c_r@p would do a world of good for people who actually really do want to have conversations.

    And you wouldn’t txmpt Leopold into falling off the “Justshxtup” wagon.

  24. Mind you, I do just love it when I see in your replies that I have taught you a new word.

    ?? Really?

    Perhaps you want to actually engage in a conversation on the points that I have raised? Or perhaps, “you don’t feel like it“?

    Here’s a word you should know by now: hypocrite.

  25. obvious means obvious to the PHOSITA, right?

    What is or is not obvious to an inventive person is beside the point because that not the legal test, right?

    We agree? Good because, on that issue, US and European law agree too.

    Where they are not in accord is on the issue whether the disclosure content of earlier filed but later published rival patent applications are to be included in the definition of prior art on which obviousness falls to be judged. USA says Yes but the EPC say (Art 54-3) No.

    Discuss. I just did. You replied but, sorry, I have F All idea what you are trying to say.

    Mind you, I do just love it when I see in your replies that I have taught you a new word.

    LB, I’m beginning to think that what we have caught in the net here is a cleverly programmed and driven bot, that is bent on learning, and likes to expand its working vocabulary.

  26. That was (as typical) vacuous Malcolm.

    Can you either join the conversation and make a point, or simply post elsewhere?

    Thanks,

  27. I really have to chuckle at how the software here has placed my comments. I took care to separate comments to MaxDrei’s initial, afterthought and afterafterthought posts, and the visual layout here is one giant hodgepodge.

    Best probably to cut and paste the comments and sort by time stamp.

    C’est la vie.

  28. This destruction of what anybody else gets is a bit of a misnomer to your position.

    You need a vacation, anon. Take some time off and decompose.

  29. first to reduce to practice. FtF does not assess who was first to conceive. Could it be though that the US Constitution intended to recognise being first to conceive…

    Ah, here a bit more clarity and an easier answer to give to you. Of course, first recognize that AIA has nothing to do with the actual concept here. Both FTI and FITF fall under the same considerations. With that firmly in mind. look up the notion of inchoate right. Then realize that the US Constitution is not the place to look for intention of patent right for inchoate right. The Constitution merely says which branch of the government gets to make up the rules to move the more natural right aspect of inchoate right INTO the fully recognized legal right of a patent right (hint for all those 101 lovers: it was not the judiciary). Also then, in response to your nuanced jibe of “those desirous of misunderstanding,” realize that conception alone is not (and never has been) enough for invention, and that reduction to practice can be both or either actual reduction to practice and constructive reduction to practice.

    Now to the finish line of the race for patent rights. Guess who gets to make the rules of the race? Congress. Guess what those rules are now? The AIA. Guess where that places the “first to conceive’ – in a perfectly constitutional manner? – merely at the start of the race (and yes, the AIA did not change that).

    There are no prizes given out for merely showing up at the start of the race. There never has been.

    Now if you (and Leopold) had been actually paying attention to my posts, you would have realized that I have shared this in conversation long ago. If I had long ago “just shut up,” everyone else would have also missed this.

    The proper response from you both is “thank you.”

  30. How to tie my thinking to the constitutionality of the AIA…a contribution that might have been obvious to a fellow inventor but was NOT obvious to any person of ordinary skill in the art.

    It is unclear what you are trying to say here. There is no legal definition of “obvious to a fellow inventor.” There never has been. There is only one definition of obviousness. Are you inventing a new definition? Quite in fact, this distinction has absolutely ZERO to do with the AIA – here then is yet another of your posts that contains internal inconsistencies – and surely I risk being @ttacked by pointing this out and asking for clarification.

    To put the PHOSITA up on those confidential shoulders is cheating today’s filer out of his rightful patent right, contemplated by the Constitution… and not obvious contributions

    This too is a self-induced contradiction. You cannot use the term “not obvious” to mean what you WANT that term to mean when that term is already defined – in law – to be something else.

    and today’s is new over yesterday’s…get nothing in return for his novel… that was still not obvious… It ain’t right, is it?

    What “aint right” is that you have now completely obfuscated what you are trying to say by dragging into the picture novelty. Novelty is 102. I thought you were trying to discuss 103. Have you lazily elided this yourself?

  31. such efforts to wheedle out of me… that ends “good conversation”

    (sigh) talk about missing the point. It has never been my intention to end good conversation – it has always been my point to engage good conversation. My pointing out your internal inconsistencies and shortcomings in legal views is not meant to – has never been meant to – stop you. It has always been meant to engage you in a proper understanding of law.

    you so spectacularly miss the point… namely that if ever-higher levels of legal certainty are the goal,… stops the PTO and the courts lazily eliding novelty and obviousness

    Eliding: synonyms are omitting, deleting ignoring merging – obviousness and novelty – but that’s exactly what you did in your very posts – exactly what both Paul Morgan and I tried to clarify..

    leads to all the rival filers getting some action, to the extent that they were novel on their filing date.

    OK, so you are saying then, go purely on novelty…

    These commentators are saying that there are too many patents being handed out for new stuff that was not obvious to the public. How can that be?

    Your question here is oxymoronic – you just separated and left out obviousness, and now you are asking about… obviousness.

    With the AIA, America has moved to a turbo-charged variant of First to File… get all the cake. What can stop that? Not an earlier inventor any more.” and “ (but not his own later filings)… is to destroy the integrity of patent law… o give that first filer far more than he deserves

    Yes there is a turbo charged variant. We still have both 102 and 103 though. In fact, obvious variants of the “his own” WILL be able to take out even his own pre-filing publication as a grace period induced safety (as yours truly corrected noted long long ago). As to getting more than one deserves, sorry but no – you still only get what you deserve based on your filing. This destruction of what anybody else gets is a bit of a misnomer to your position. You simply are not giving more to the first filer.

  32. And Leopold,

    Shall I start up again the response of “just shut up?”

    Since you have started up again the monomaniacal obsession with me, and you are effectively trying to saying the same thing, I think it would be fitting.

    I realize that that was not one of your most professional moments, and that you are probably (justifiably) embarrassed and shamed by your behavior, but you probably need to be reminded of why you felt that shame.

  33. Another conversation then ensues as Paul Morgan seeks to clarify your post between novelty and obviousness and the US grace period at Feb 15, 11:50 AM (funny, no red cape for Leopold here – even though Paul is asking the very same clarifying points that I pursue at Feb 16, 2013 at 07:39 AM directly because your reply to Paul at Feb 16, 2013 at 07:07 AM does not add any clarity. Leopold sees the “anon said” and jumps in (incorrectly) in an attempt to chastise me for merely pursuing the clarifications sought by Paul Morgan. You eagerly join with Leopold, and yet did not give a responsive reply until I further “teased” it out of you.

    Where things get a bit muddled is that instead of answering Paul directly, you pose a new situation at Feb 16, 2013 at 07:07 AM – which not only leaves unanswered the conversation already started, but contains a mishmash including both the unanswered novelty/obviousness/grace period AND the legal certainty conversations.

    Again, Leopold is off somewhere with his eyes closed to the incomprehensibleness of the post at Feb 16, 2013 at 07:07 AM.

    My post then at Feb 16, 2013 at 07:39 AM is a careful and deft distillation of the mess at 7:07 AM and a disentanglement of several disjoined thoughts. For such an attempt at clarifying the conversation and setting each in its own (correct) path, I am rewarded with the charging bull of the value-laden and incorrect law sermon from Leopold at Feb 16, 2013 at 08:36 AM.

    Your adjectives of sane, rational, painstaking and valiant posting is misdirected to someone that merely sees the red cape of “anon says” without actually seeing how you butchered the “conversation” and how I actually attempted a sane, rational, painstaking and valiant disentanglement.

    This type of n_aked “my defender is wonderful” post is more self-serving B$. You then top it off with an undeserved and itself out of touch insult.

    Which now brings us to today’s posts. I will take some time to read your response with a calm mind, but note that ALREADY Leopold has t_rolled and you have subtly impugned me with a label of “desirous of misunderstanding.” That arrow misses badly, but I do note that you have chosen to sling that arrow even after your “trying to hold a conversation” and note that such does not speak well of your intent.

  34. I express my incredulity of your admission and you respond by accusing me (and Leopold is off somewhere with his eyes closed to this exchange).

    My questions and counterpoints at Feb 15, 2013 at 04:50 PM go unanswered. They remain unanswered. They also remain the defining point of our conversation.

  35. And in particular in my 1:34 PM post I provide another example of MaxDrie’s unwillingness to have a complete conversation: the topic of the supposed EPO’s growing legal certainty with no stare decisis.

    MaxDrie – point blank – do you deny running away from the points I make on this topic and later returning to make your same base level pronouncement without addressing the valid points that I have raised?

    A yes/no response is desired first.

    Then you can attempt to explain what the clear facts show. Your response is yet another self-serving justification (to paraphrase, when I see a point I deem justifies a reply, then I will reply). You then touch on (yet again) the very same base soapbox position of EPO falling in line but without stare decises – WITHOUT (once again addressing the very counterpoints that I have raised that show that your view – as you keep on putting forth) cannot stand – at 3:29 PM, again with the self-incriminating “I reply when it please me line.”

  36. Your post at Feb 15, 2013 at 03:29 PM already gives the answer – let’s see you either withdraw that answer and change your ways, or explain (somehow) that you really are interested in having conversations, and not just having your turn atop the soapbox.

  37. MaxDrei and Leopold,

    Let’s see if we can make some progress without either of you falling off the wagon (or at a minimum, get back on the wagon quickly).

    There are two conversations proceeding on this thread. One was initiated by the poster Kharol, whose statement made the incorrect correlation between multiple inventors and the necessity that such must mean that all related inventions were per se obvious. See Feb 15, 2013 at 09:06 AM and my reply at Feb 15, 2013 at 10:53 AM.

    To this notion, MaxDrei “agreed” with Kharol. I do recognize that MaxDrie agrees with Kharol, but then goes on to differentiate and in fact misrepresents what Kharol stated so as to merely appear to be in agreement. Not the most straight forward conversation tactic. MaxDrie then got on his usual soapbox to proclaim how the great EPO achieves this. The removed comment merely noted – and accurately did so – this very typical soapbox move. Why that comment was removed is curious, but c’est la vie. My addition to the conversation then at Feb 15, 2013 at 12:05 PM was to note in fact that MaxDrie has a historical tendency to not engage in conversation, but rather get on a soapbox – the lack of conversation evidenced by only answering those things he so chooses to. A fully accurate point that is confirmed not only by what MaxDrie does not say (and when he chooses to disappear, but by what MaxDrie affirmatively does say.

    Or are you denying the accuracy of my observations? MaxDrie? Am I on point in how you choose to not have conversations (explicitly at Feb 15, 2013 at 03:40 PM and 4:50PM to your nonresponsive answer)? A simple yes/no question here.

  38. Good morning LB, and nice to see you up and about. Thanks for the feed. I am pro-patent, to the extent that I want to see the patent system flourish and its attackers vanquished. The biggest worry I have is that pushing patentability beyond its natural philosophical boundaries delivers into the hands of the attackers the arguments they need to bring down the entire patent system.

    Of course, for those desirous of misunderstanding, my nuanced position is, I imagine, somewhat provocative. I guess we are both about to find out, in this very thread.

  39. Afterafterthought: In the FtF race to the PTO what counts is to be first to reduce to practice. FtF does not assess who was first to conceive. Could it be though that the US Constitution intended to recognise being first to conceive, amongst those who have diligently reduced to practice? With that in mind, consider the one who was definitely first to conceive, and was definitely diligent, but who just happened to file one day later than the other fellow. Is it constitutional to send him away with nothing(bearing in mind that Europe gives him a patent on everything he’s got that is new and enabled)?

  40. That sounds awfully pro-patent, MD, unless I purposefully read it to say the opposite of what it actually does. Are you trying to get drummed out of the circle?

  41. Afterthought. How to tie my thinking to the constitutionality of the AIA. Try this:

    What is unConstitutional is to deny a patent to an independent inventor who is on any measure the “first” with a new and enabled contribution to useful arts, a contribution that might have been obvious to a fellow inventor but was NOT obvious to any person of ordinary skill in the art.

    The fictitious creature of US patent law, the PHOSITA, knows more than any member of the public could possibly know, namely, what another filed at the USPTO, in strict confidence, one day earlier.

    The PHOSITA, defined in this way, stands on the shoulders of the giant who filed one day earlier, to deny a patent to today’s filer for anything that looks obvious to a PHOSITA who has been lifted up to that elevated viewpoint. To put the PHOSITA up on those confidential shoulders is cheating today’s filer out of his rightful patent right, contemplated by the Constitution in return for giving the public an enabling disclosure of new, useful and not obvious contributions to the useful arts.

    When both yesterday’s and today’s filers fall into that category, and today’s is new over yesterday’s, how can today’s filer get nothing in return for his novel enabled contribution that was still not obvious to the public on his filing date today? It ain’t right, is it?

  42. anon as you are making such efforts to wheedle out of me some sort of reply to your post that ends “good conversation”, I will try to oblige.

    The reason I have not replied till now is because you so spectacularly miss the point of what I was saying, namely that if ever-higher levels of legal certainty are the goal, one needs a substantive law of patentability that stops the PTO and the courts lazily eliding novelty and obviousness. One of the best features of the EPC is its Art 54(3) which sorts rival filings by novelty and explicitly excludes obviousness from the debate about which of the rival filers, all unobvious over public knowledge, gets what scope of claim out of the PTO.

    Now, the criticism of 54(3) explained above, is that it leads to all the rival filers getting some action, to the extent that they were novel on their filing date. Some say that produces patent thickets, with more than one player getting to issue.

    These commentators are saying that there are too many patents being handed out for new stuff that was not obvious to the public. How can that be?

    With the AIA, America has moved to a turbo-charged variant of First to File. With First to File, the first to file is the one in line to get all the cake. What can stop that? Not an earlier inventor any more. I think America does not yet grasp how brutal First to File can be, in instantly displaying as zero the value of every subsequently filed patent application. To allow the first filer to take out all of everybody else’s subsequent filings (but not his own later filings) because their subject matter was “obvious” is to destroy the integrity of patent law and to give that first filer far more than he deserves. I know America believes in “Winner Takes All” but there will be trouble before long with this unfair division of the spoils of innovation, I’m sure.

    Now, what do you want to say in reply, i wonder.

  43. It would be especially ironic to be quieted by a Crybaby’s Veto on a thread that begins “Constitutionality Question Looms…”

  44. It is more than a bit insincere to claim “not able” to have a conversation that you had no intent to have in the first place.

    As I have said, I have tried in various manners and methods, including being very polite, to have you engage in conversations that you have simply refused to join.

    You do have a right not to speak – do not attempt to deny me mine to address why you most likely decline to have an actual conversation.

  45. MD,

    Your post too fails in its clear duplicity.

    More likely, you are alarmed because I point out that you don’t want actual conversation – you want a soapbox.

    Try to be honest, please.

  46. LB, I am grateful for your sane, rational, painstaking and valiant posting and alarmed by the not sane and not rational words posted by anon to both of us.

    I conclude he has slipped away from the real world; out of touch with reality and by now totally unable to hold any meaningful conversation with anybody. Quite shocking actually.

  47. IF you were on point, and IF you were correct, THEN that would have been an awesome post.

    Sorry, but you failed, and failed badly.

  48. And, go read B. Franklin’s autobiography that includes talk of raising a militia and talk of guns and money.

    It is a great read, by the way. But, read that and other books written at the time and the meaning becomes pretty clear. People can have the weapons that a soldier would have.

  49. Good conversation (hopefully not ended prematurely by choice or veto).

    No, it’s not. It’s actually pretty pathetic.

    MD says (to Paul) that he wants to compare and contrast how two different regimes handle patent applications as prior art. You “correct” him with the banal pronouncement that “Prior art is not defined only by what is on file at the patent office,” and then have the gall to tell him that he should “rephrase” his statement that “”Each filer has to have novelty over the enabled content of all earlier filings at the same PTO.” There was absolutely nothing wrong with his statement. I suppose you can arbitrarily redefine the topic if you like, but that’s not “conversation.”

    Then you accuse him of conflating novelty and obviousness, which he did not do. MD clearly understands the difference, as his comment acknowledges that applications used by others can be used to weed out obvious (trivial) advances, while pointing out that the inventor’s own applications often cannot.

    THEN, you provide a high-handed lecture introduced by your “nuance” that “the ‘world’ of prior art for novelty is NOT the same ‘world’ of prior art for obviousness.” No duh – MD just finished pointing out an important distinction between those two “worlds” in US law!

    AND THEN there is this gem: “To your point of the inventor’s own work not being a 103, I would add the clarification that this is true ONLY for the one year grace period (under pre-AIA).” Seriously? Because this is just plain wrong, at least in this context. Max was talking about earlier filings by the same inventor. You’re telling us that these filings are subject to the one year grace period (under pre-AIA)? Really?

    Note that while all of the preceding is highly critical of your comment, there is not a single personal attack in there. There are no arguments ad hominem. There aren’t any purposeful redefinitions of words or mischaracterizations of prior arguments. THAT’s how you converse. Now, go ahead with your rants about “arrows” and “obsessions,” if you like. But if you’re going to pretend to want a real conversation, you’re going to have to do much better than that before anyone believes you.

  50. And note you can yap all you want and say that isn’t the way the 2nd amendment should be read, but come on—really? Can anyone really say with a straight face that the 2nd amendment doesn’t really have that meaning? And, at best you can MAYBE it does, but maybe it was meant to be read another way. OK, so we are in maybe land with no way to fairly resolve a maybe. That means amendment time.

  51. The gun control part is actually a lot like the information processing part.

    Gun control: lie about the Constitution and give no credibility to the other side’s valid argument that the Constitution–arguably–gives the right for people to keep and bear weapons that are like a modern soldier would carry. No decent person can argue that isn’t true. Obama tries to side step this issue with the “kind of guns permitted by the Constitution.” That is disingenuous at best. So, what do we have? An infinite fight over this because the Constitution is a bit ambiguous and because things have changed. A gun then wasn’t so powerful. Now a militia has weapons that could take out 20,000 people at a football stadium.

    Solution: now: lie about Constitution try to shame other side. Do and say anything to try to get your way.

    Solution should be: Constitutional amendment to deal with a real contraversy so that both sides’ views are respected and there is an outcome that is Constitutional that everyone will eventually either get behind or have to try to amend the Constitution.

    (Note: I am a liberal voted for Obama and would favor a Constitutional amendment to alter our rights for gun control. But, I can read and went to law school. The 2nd amendment is there. And, one cannot fairly read it as though people don’t have a right to keep and bear just about any weapon they want to.)

  52. MaxDrei, perhaps an observation or two will help:

    Prior art is not defined only by what is on file at the patent office.

    With this thought in mind, you might rephrase your statement: “Each filer has to have novelty over the enabled content of all earlier filings at the same PTO

    I would also clarify your point about trivially different – it appears that you are conflating novelty and obviousness, and I am not sure why. It is well understood that although related, the two items are in fact different.

    Something else to keep in mind is that the “world” of prior art for novelty is NOT the same “world” of prior art for obviousness. This is a nuance that is often either not remembered, not thought of, thought of and disregarded, or otherwise ignored (can I daresay ignored because it would contradict a dogmatic view?). An example would be “non-analagous art.” Perhaps more than anything else, the KSR decision blunders on this point, and the Justices there completely miss the nuance, or at least effectively miss it.

    To your point of the inventor’s own work not being a 103, I would add the clarification that this is true ONLY for the one year grace period (under pre-AIA). This has more to do with the grace period and less to do with the definitions of novelty and obviousness. There is no relation between this concept and your supposed ills of sloppy drafting and damage to legal certainty about which cites are legit 102 and 103 and which are not. That would be a non-sequitur.

    Good conversation (hopefully not ended prematurely by choice or veto).

  53. Paul, after the week-end perhaps you would like to comment on something that puzzles me about conflict between rival patent applications, all filed at the PTO before the content of any of them is made available to the public.

    Under the EPC, all are treated the same, whether they are filed by the same inventor or another. Each filer has to have novelty over the enabled content of all earlier filings at the same PTO, regardless whether the earlier filer is the same or a different inventor. You say that results in lots of patents, claiming subject matter trivially different from that of the rival cases. Yes, it is a fair point, but what other arrangement is fairer to the rich tapestry of toiling American Inventors who might just happen to file one day later than my German inventor client?

    But then I look at US patent law and see a distinction made between filings made earlier by the same inventor and those made by other inventors. If it is another inventor it can be a 103 cite. If by the same inventor it is neither 102 nor 103. I think that is just as bad as the EPC for causing thickets of patents with trivially different claims. I think it is worse than the EPC for encouraging sloppy drafting and for damage to legal certainty about which cites are legit 102 and 103 and which are not.

    I never did understand the logic of gracing inventor’s own earlier filings. If you want fewer patents differing in no more than trivial detail, get rid of the gracing of inventor’s own earlier filings, why don’t you?

  54. MaxDrie, your offer for negotiation of having you fully join the conversation and consider my counterpoints reminds me of a quote from the US television series Firefly:

    “You have to open with payment.”

    “That is a trap. I offer money, you’ll play the man of honor and take umbrage; I ask you to do what is right and you’ll play the brigand. I have no stomach for games.”

    Likewise, I ask nicely and you ignore my posts. I ask sharply, and you play the martyr, invoking the Crybaby’s Veto.

    You do not want “conversation,” as much as you want a soapbox. That is truth that sunk your “I am here to learn“TM line.

    Be honest about your intentions, as your words speak to them no matter what they say on their face.

  55. Congress is hardly infallible when it comes to interpreting the limits of the Constitution.

    This is far less about the limits of the constitution and far more (and far more simply) a matter of who gets to set the rules of the race. See Pennock and Golan.

    As such, “fallability” is not an issue, unless of course the Supreme Court wants to stick its fingers into (keep them in) the patent pie. Then, they will, like the Oracle of Delphi, inhale the vapors and “see” implicit writings that allow them to shape patent law like only nine unaccountable people could.

    The constitution required the patent go to the first inventor.

    That reading of the constitution is not accurate. It is not accurate as it is not complete. It is not accurate as it focuses only on the starting line of the race – those with inchoate rights. It is not accurate as the constitution proclaims Congress (not the judiciary) as the holder of the authority to finish out the rules of the race and award the prize to those who follow the rules and finish the race – not merely to those who show up.

  56. Oh, it’s good law, just not the law you think it is, nor why you think it is – but that’s not the point of this thread.

  57. Pennock, like Metallizing, is no longer good law.

    There is no longer that leap to take.

    (And we won’t have to get into our old discussion of what Pennock was actually about)

  58. Congress's views in 1790 as to what the constitution meant should be given weight, however, perhaps even a presumption of correctness. Their views, if wrong, should be distinguished and shown to be wrong.

  59. IANAE, but, in point of fact, in a priority contest, the second inventor gets the patent if the first inventor has abandoned, suppressed or concealled.

    Pennock is to the same effect.

    The first inventor has a right to a patent so long as he has not placed his invention on sale, or abandoned, suppressed or concealed. If he has, and so long as there is no other prior art, the second inventor gets the patent.

    First to file strips the inventor of his legal rights.

  60. Pennock held that placing an invention on sale was a form of abandoment — of the right to a patent. It is not a leap to suggest that this is the same thing as abandoning the invention.

  61. Paul, OK. I only wished the powers that be had considered fixing inventorship priority proofs in some fashion that made sense. The level of proof of prior inventorship to overcome prior art that does not claim the invention should not be the same as the level of proof required to beat a senior party's filing date or date of reduction to practice.

  62. The above exchange demonstrates

    Excuse me, MaxDrei, what exactly do you think our conversation demonstrates? That I am correct that you are not actually interested in conversations?

    Your reply at 3:29 is pretty d_@_mming. I am astounded at your temerity.

    The thing is too, I have very civilly pointed this out before. I did so in way that was not “all QQ,” and yet (again), you who would deign to ignore anything you don’t feel like answering, and have the gall to say the problem is with me. What the H is “dancing attendance?” Am I misconstrueing anything that you have said? Have I said anything false in our conversation? Yes, I point out tough items. Yes, I would like your posts to take into account those tough items. The essence of conversation is give and take – you not only profess to have no interest in such, you still try to blame me.

    The j_oke lately has been the archive capability. Perhaps if you (finally) realize that I want my points seriously considered, you will use that function and address the points I have raised so many times.

    You jibe with “If you want a reply then, you will know what to do,” all the while holding a different mindset. I asked straight up – how do I engage you? And your reply is “If I feel like it

    That’s not engagement.
    That’s not conversation.

    And for sure, I will not get my points considered waiting for you to “feel like it.”

  63. Civil conversation? It is very sad (because you are always dancing attendance on me here so if you were inclined towards civilised debate we could be at it day and night). The above exchange demonstrates for the n’th time though, that a conversation with anon is an oxymoron.

  64. that justifies a reply, I reply.

    I will reply only when it pleases me to reply.

    That’s no way to hold a conversation.

    And you dare QQ? I would LOVE a meaningful reply to your oddly Quixote EPO über alles posts. You should be tipped off when I make the same counter points repeatedly.

  65. When you anon, or Paul Morgan or Kharol or Wake me raise a “point” that justifies a reply, I reply. See above. There you will find some replies from me.

    At the EPO it is a matter of mundane routine day to day practice that the art basis for a patentability objection is an earlier filed but later published document. When that happens, we must debate, me and the EPO, whether it is a legitimate doc on which to base an obviousness objection. Hundreds of cases, perhaps more than a thousand per year, get appealed to the EPO’s Board of Appeal to decide the point. All of this, over more than 30 years, has led to a body of caselaw that distinguishes ever more clearly between the concept of lack of novelty and the concept of lack of an inventive step. After 30 years, the national supreme court of Germany has finally given up paddling its own canoe and fallen in with the EPO caselaw. Before then, it was always muddled, as between novelty and obviousness. Conversely, the UK supreme court came on board the EPO ship much earlier.

    I will reply only when it pleases me to reply. It pleases me when I think readers might like to read my reply. You are an intelligent fellow, that’s clear. If you want a reply then, you will know what to do.

  66. MaxDrei,

    You keep on saying things like “That is a big plus for growing legal certainty, but every time I try to actually hold a conversation with you as to why this cannot be so, you disappear?

    You provide no feedback on the points I raise, other than to merely reiterate your viewpoint. You then proceed to paste the same sentiments again, and again, and again.

    Are your sentiments above a discussion? Is there a reason why the valid legal points I raise are simply ignored by you? How would you suggest I engage you?

  67. Paul I’m not alluding to the grace period but to the idea of permitting earlier unpublished filings to be the basis of obviousness objections. Time will tell, how that little idea works out, in a brutally swift First to File environment, but I see injustice as between the Chinese guy who files on Monday and the good old American boy who files independently the next day, on subject matter novel over Monday’s filing but obvious when compared with it.

    I expect burgeoning resentment, as the consequences emerge.

    Under the EPC, the boundary between novelty and obviousness is permanently under scrutiny, so gets progressively sharper. That is a big plus for growing legal certainty. I expect that not to happen under the AIA.

  68. should indeed go to the true and first discoverer

    great lesson – just not from your story, as your story does not reflect the fact that multiple such “true and first” inventors are possible, and the fact that the Supreme Court has forcibly and repeatedly demurred to Congress setting the rules of the race as the proper constitutional authority.

    Have you read Golan v. Holder yet?

  69. Interferences had become far to arcane.

    You do realize that the derivation procedures used those arcan interfence proceedures as their backbone, and will only become even more arcane, right?

  70. Congress thought, in 1790, that the constitution required the patent go to the first inventor. That much IS clear.

    Congress is hardly infallible when it comes to interpreting the limits of the Constitution.

  71. The first inventor loses if he has abandoned, suppressed or concealed. On-sale is a form of this.

    How? Seriously.

    if you put on sale, you are quite lliterally not suppressing or concealing. The issue of “abandoning” has now been overturned with PUR and other AIA changes. If the invention being claimed is still new to you, it is still new enough to earn patent rights, right?

    Taking things out of the public domain? meh, no problem in Golan v Holder.

  72. The first inventor loses if he has abandoned, suppressed or concealed.

    That still wouldn’t entitle any other person to obtain a patent on the same invention under the theory that the first inventor is constitutionally the only “inventor”. Once you’ve identified the “first inventor”, he either gets his patent or not, and that’s it.

  73. Ned, they had rule that in Canada, it was a mess, and they got rid of it some years ago.

    [Not to mention that encouraging two years of secrecy and delay in filing application in fast moving high tech industries is hardly "promoting the progress of the useful arts."]

  74. Re: “the practical legal issue is to divide up the spoils amongst the respective engineers or scientists, all deserving of reward for their respective meritorious contributions to the art. The European Patent Convention does this judiciously, the AIA does not.”

    Please explain? Especially since the EPO [unlike the U.S.] ignores earlier filed applications of earlier inventors as prior art other than for “novelty only” purposes, thus making it very much easier to have plural patents on essentially the same invention with trivial specification and claim differences?
    If you are referring to the U.S. “grace period” there is very little left of it in the AIA, and In re Hilmer is also gone.

  75. Paul, Congress thought, in 1790, that the constitution required the patent go to the first inventor. That much IS clear. There was no deliberation that they had a real choice to do otherwise.

    The SC later said a second inventor could get a patent if the first had abandoned, suppressed or conceal the invention. That was codified in ’52.

  76. It is perhaps relevant to consider historical events at the time when the Constitutiuon was drafted.

    At that time there were rival inventors of the steamboat.

    As recorded in The Writings of George Washington from the Original Manuscript Sources, 1745-1799. John C. Fitzpatrick, Editor, George washington wrote

    “Mount Vernon, November 22, 1787.

    Sir: The letter with which you have been pleased to honor me, dated the 16th. inst came to my hand the day before yesterday. By tomorrow’s Post this answer will be forwarded to you.

    Mr. Rumsey has given you an uncandid account of his explanation to me, of the principle on which his Boat was to be propelled against [the] stream. At the time he exhibited his model, and obtained [my] certificate I had no reason to believe that the use of steam was contemplated by him, sure I am it was not mentioned; and equally certain I am, that it would not apply to the project he then had in view; the first communication of which was to me made in September 1784 (at the springs in Berkley); the Novr. following, being in Richmond, I met Mr. Rumsey there who was at that time applying to the Assembly for an exclusive Act. He then spoke of the effect of Steam and the conviction he was under of the usefulness of its application for the purpose of inland Navigation; but I did not conceive, nor have I done so at any moment since, that it was suggested as part of his original plan, but rather as the ebullition of his genius. It is proper however for me to add, that some time after this Mr. Fitch called upon me on his way to Richmond and explaining his scheme, wanted a letter from me, introductory of it to the Assembly of this State the giving of which I declined; and went so [far] as to inform him that tho’ I was bound not to disclose the principles of Mr. Rumsey’s discovery I would venture to assure him, that the thought of applying steam for the purpose he mentioned was not original but had been mentioned to me by Mr. Rumsey; this I thought myself obliged to say that, WHICHEVER (IF EITHER) OF THEM, WAS THE DISCOVERER MIGHT DERIVE THE BENEFIT OF THE INVENTION.

    To the best of my recollection of what has passed between Mr. Rumsey and me, the foregoing is an impartial recital…. (emphasis added)

    So George Washington and the person who added the cautionary word “respective” in the copyright and patent clause of the Constitution were apparently of the view that the rights should indeed go to the true and first discoverer. If that was the intention of the Constitution, it is difficult to see how subsequent legislation including the AIA can undermine it.

    No view is expressed as to the final outcome or indeed the outcome that would be proper. But it is difficult to see how this controversy can properly end anywhere short of the Supreme Court.

  77. Paul, if we need reform, it was here. Interferences had become far to arcane.

    Perhaps a rule that the first to conceive has a right to a patent so long as he files within two years.

  78. The first inventor loses if he has abandoned, suppressed or concealed. On-sale is a form of this.

    I think the complaint has to read in this light. So long as the first inventor has not acted to abandon his rights, he is in the field and has a right to a patent against second inventors.

  79. As with so much of the discussion of “first to invent” only interference experts and those trial lawyers who have distroyed patents obtained with Rule 131 declarations in patent litigation really understand its full statutory and case law requirements and legal realities. But inventors, examiners and clients should at least understand why the “first to invent” system does NOT regularly protect someone who delayed filing their patent application until after someone else did. Few people seem to understand what “first to invent” really means legally, and what is required to prove it if you are not the first to file to try to get a patent. Namely, complete prior documentation of the invention AND how to make it, PLUS continuous diligence towards filing a patent application. Or, a documented complete prior actual reduction to practice of the invention.
    Under both the new and the old patent laws [which will run in parallel for several years] there are several protections against stolen inventions – that is, patent claims that can be proven to have been derived from a prior inventor.

  80. Good point Kharol. What happens in reality is that engineers and scierntists independently conceive and reduce to practice new and inventive technology. Their respective patent attorneys then draft claims, optimistically wide, striving to monopolise the underlying concept. The respective claims of the respective independent patent applications overlap, but nowhere near so often is there identity or even overlap of the respective independently invented worked Examples, illustrated embodiments or Best Modes.

    So the practical legal issue is to divide up the spoils amongst the respective engineers or scientists, all deserving of reward for their respective meritorious contributions to the art.

    The European Patent Convention does this judiciously, the AIA does not. Perhaps that is because the founding fathers of the EPC had centuries of aggregate personal experience of First to File, so knew how to legislate in this area.

    The EPC is THE compromise between English patent law and German. The English was the fount of patent law throughout the former British Empire while China, Japan and Korea had already all adopted Germany’s former patent law, lock stock and barrel. Shame then, that the USA did not look more closely at the EPC, when it switched to First to File.

  81. The Court has long given deference to Congress to set the rules of the race.

    Arguably, the recent Golan v Holder case even removes the notion that “prior art” is a constitutional limitation.

    The race is not won by the first person showing up. It never has been. To think that is to not recognize the difference between inchoate right and fully developed patent right. Showing up is required (unless you are a corporate sponsor, but that’s a different comment to be made), but the race is not decided by looking at who is standing at the starting line.

  82. First to file favors people who know how to write patent applications and get them into USPTO’s digital patent prosecution engine fastest not the inventor.

    Our curent patent system rewards the same behavior.

    In fact, our present patent system favors people who know how to write patent applications over people who actually develop new products and new methods of making products.

  83. I respectfully disagree with all of this discussion, because I think it is (or at least should be) moot.
    When more than one person comes up with the same “invention” none of them should be awarded the then unfair competitive advantage of a patent. The mere fact of a plurality of applicants filing the same concept should be sufficient evidence for obviousness of the “invention” at the time of filing (even though – if the patent office would do their job right – a thorough inspection for obviousness should lead to rejection of the patent applications anyway).

  84. Also, you could have previously received a patent on an invention for which you were not the first and true inventor if the first inventive activity was done in secret and not publicly disclosed.

    Also also, there was a time limit on filing an interference against an issued patent or a published application, which seems a little odd if we assume that it’s unconstitutional to grant a patent to a second independent inventor.

    There’s no reason to believe that a second independent inventor is constitutionally ineligible to get a patent. Unless, of course, you’re scrambling for a reason to challenge a law you don’t like.

  85. I think reasonable people can agree that you can have independent invention. Thus, you can have independent inventors of the same subject matter. One will always be first. However, the Constitution only decribes “… securing for limited Times to Authors and Inventors the exclusive Right …”.

    I see nothing there about first and true inventor.

    Also, you could have previously received a patent on an invention for which you were not the first and true inventor if the first inventive activity was done in secret and not publicly disclosed. Thus, IMHO, there is already precedent for subsequent inventors capable of receiving a patent.

    I think that the policy consideration (rewarding rapid disclosure of inventions) will prevail.

  86. If the constitution gives the right to the true and first inventor, it is difficult to see how the person who is first to file but was second to invent can be deemed to be the true and first inventor when in reality that person is not.

    If.

  87. The total obsession with “first to file” vs “first to invent” system is strange, when there are other, far more important, and dangerous, changes in the new patent law, especially in what will now be “prior art.” I estimate less than roughly 200* out of the more than 350 thousand** new patent applications a year, or only about ½ of 1%, will be ultimately affected annually by THAT change in patent law! Furthermore, the rest of the world always had a “first to file” system. So anyone wanting patent protection outside of the U.S. [which is now a much larger market] is already operating on a “first to file” basis!

    *the few interferences won annually by junior parties plus the few patents obtained by ex parte Rule 131 “swearing behind” declarations that will hold up as valid when tested in litigation as having full 102(g) proofs, which must also be invention dates prior to the invention date of the cited reference not just the references filing date.
    **The higher half-million “new” applications per year number the PTO puts out misleadingly includes RCEs, continuations and divisionals.

  88. Mr. Cole has defined the essence of the issue. First to file favors people who know how to write patent applications and get them into USPTO’s digital patent prosecution engine fastest not the inventor. There will be lots of discussion on what the term Inventor means.

    The real question is how long will it take for this to work it’s way through the courts. And how much time and money was spent creating the new First to File regime procedures?

    Now it’s getting interesting.

  89. Interesting quesion predictably raised.

    The complaint, however, suggests that limited resources have been devoted to the task and much further work, especially legal and historical research, is needed. If the constitution gives the right to the true and first inventor, it is difficult to see how the person who is first to file but was second to invent can be deemed to be the true and first inventor when in reality that person is not.

  90. Well, I have only skimmed very quickly through the Complaint but my first reaction is that it is not hopeless.

    Many overlook that First to File is in reality “First to File with an Enabling Disclosure” (of that which is claimed). File prematurely, without that enabling disclosure, and you are going to lose out to the inventor who was second to file but was in fact the first to file with an enabling disclosure.

    What is the public policy objective of any patent system. Why have one at all? I have always thought it was to make available to the public, at the earliest date, an enabling disclosure of new, useful and unobvious technical innovation. Others say it is to encourage inventors to invent. Depending on what public policy objective Jefferson, Madison and the others had in mind, First to Invent might promote the public policy objective better than First to File.

    Interference between rival inventors? Well, in priority competitions, one has to allocate the burden of proof somehow. So what’s wrong with encouraging early filing by First Inventors by giving the later filer the burden of proving to be in actual fact the First Inventor? How is that incompatible with the thinking of the First to Invent writers of the Constitution and with there being only one “First” inventor?

  91. Metallizing Engineering already gave patents to subsequent inventors. My memory may be failing me, but wasn’t it codified in 102(g)(2). Did Madstad Engineering protest that statute when it was on the books?

  92. Congress is not authorized to award patents to the winners of races to file to the PTO

    Is the procedural advantage given to the senior party in interference cases also unconstitutional under this theory?

  93. Agreed – the first and true inventor is already invited to the race.

    Madstad does not take into account the fact that multiple first and true inventors, each with their own respective inchoate rights, has been recognized US jurisprudence since, well, almost forever.

    So while he may have some small kernel with his AIA point (particularly point three of his complaint, which Ned should enjoy), he rests that on a foundation made of quicksand.

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