Constitutional Challenge to the First-to-Invent Rule

By Dennis Crouch

[Update –  Read the Complaint Here]

MadStad & Mark Stadnyk v. USPTO, 12-cv-1589 (M.D. Florida 2012)

The small motorcycle engineering company MadStad recently filed suit against the US Government asking a federal court to reject the Leahy-Smith America Invents Act of 2011 (AIA) as an unconstitutional degradation of inventor rights. Steve Lohr (NYTimes) covers several aspects of the story and includes quotes from both Professor Mark Lemley and Professor Arti Rai that identify the challenge as Quixotic. I agree with Lemley and Rai on this point – especially after the Supreme Court’s Golan decision last year. Of course, I also thought that Myriad case would go nowhere.

Stadnyk’s basic argument is that when the US Constitution speaks of exclusive rights for “inventors” it should be interpreted to mean “first and true inventor.” 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.

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

In his recent law review article, Senate Counsel Joe Matal played down the merits of the Constitutional question. Joe Matal, A Guide to the Legislative History of the America Invents Act: Part I of II, 21 Fed. Circuit B.J. 435 (2011). In his article, Matal points to the 1850 case of Gayler v. Wilder. Gayler is interesting because the Supreme Court created a subjective test for the requirement of inventorship – asking whether the patentee believed himself to be the original inventor. In that case, the actual first inventor had failed to pursue patent rights and the Supreme Court agreed that the second inventor (who originally believed himself to be the first inventor) was then properly awarded rights.

56 thoughts on “Constitutional Challenge to the First-to-Invent Rule

  1. 55

    More accurately, the first person to file will be the winner unless the actual first inventor can prove in a court proceeding, filed within one year of the first publication of the application, that the first person to file stole their invention. The shifting of the burden entirely onto the victim of theft is a pretty significant change.

    I cannot imagine filing a derivation proceeding unless I have iron clad evidence of actual theft (e.g. the “first person to file” is a former employee who left shortly before filing.)

  2. 54

    Mr. MadStad, thanks.

    I found this remarkable, taken in sequence:

    “Next, the Government insists that “the AIA explicitly requires that an individual be an „inventor‟ of a „discovery‟ in order to obtain a patent. See 35 U.S.C. § 101.” (Govt.Br.2.) That statement is incorrect. Section 101 is not a provision of the AIA. It is part of the pre-existing Patent Act. If the Government means that the AIA retains an inventorship requirement in Section 101, that statement too would be inaccurate. As stated in Plaintiffs‟ Opening Motion (Dkt. 11, at 5 n.3) (and as the Government nowhere contests), Section 101 provides that patents may be obtained “subject to the conditions and requirements of this title,” which under the AIA is an FTF system. Section 102 is entitled “Conditions for patentability; novelty and loss of right to patent.” In other words, Section 102 (along with Section 103) prescribes the “conditions” to which Section 101 refers. By removing Section 102(f) and eliminating inventorship as a “condition for patentability,” the AIA eliminates inventorship as one of the “conditions” to which Section 101 refers.”

    Followed by:

    “The Government cites the concept of “prior art” (Govt.Br.4-5), but that does not impose an inventorship requirement. In fact, the AIA amends Section 102(a) by eliminating the requirement that an invention cannot be previously “known,” which is the very definition of the term “invention.” AIA, Section 3, § 102(a)(1), 125 Stat. at 285-86. The AIA defines “prior art” as of the filing date of the application, not the date of invention.”

    I hadn’t until just now, realized the AIA had eliminated prior knowledge of an invention in two ways, by eliminating both from 102(a) and from 102(f).

    Is not an inventor can obtain a valid patent. Further, by eliminating 102(a), a pirate, who doubly is not and inventor, but at thief, can obtain a valid patent.

    Who backed this bill, the Peoples Army?

  3. 51

    IANAE, I am not complaining, not at all, about patents being issued to assignees.  I am complaining about patents being issued to Pirates.

    Now I know that patents might by error be issued to those who are not inventors, or to Pirates.  But they don't do so intentionally.  Furthermore, the fact is it's piracy would quickly to be discovered by defendants in infringement suits.  Today they have recourse by defending that the patent is invalid under 102(f).  Tomorrow they have no defense whatsoever.

    You mention standing.  Let a be clear on this, the named inventor (and those who are in privity with him) owns the patent even if he is a pirate.  The person who owns the patent has standing.

  4. 50

    a defendant in a lawsuit can no longer raise the issue of inventorship as a defense. The patent is valid.

    The patent describes, enables, and claims an invention. Why shouldn’t it be valid?

    I don’t think this is constitutional because I believe the Constitution does not permit valid patents to be granted to non-inventors.

    There’s nothing in the Constitution about the inventors being unable to assign their right to obtain a patent, and their entitlement to do so is settled.

    If the inventorship is wrong in such a way that it affects the plaintiff’s title to the patent, you probably have a standing issue that wouldn’t depend on Title 35 for its effect. If not, you’re being sued by the person who should be suing you on the patent, so who really cares about the technicalities?

  5. 49

    Mark, there is a thread here entitled, “”Can a third-party challenge section 101 subject matter eligibility…” The post is highly relevant to the patent office position, as I understand it, that there are other sections besides 102/103/112 that render the patent invalid when the inventorship is incorrect. However, the post makes clear that the only statutory sections that Congress authorized to be raised as a defense to patent validity in court consist exclusively of 102/103/112 and 251. Those sections and no other sections.

    Section 116 requires for example that a patent name the inventors. Section 115 requires an oath. But neither section is encompassed within the grounds for validity set forth in section 282.

    Thus it remains that the patent issued to a pirate is valid and cannot be challenged for validity by a third-party.

    Of course a rival applicant claiming the same invention may raise inventorship in a derivation proceeding, but only within one year of publication or patenting of a claim to the same invention by the pirate, and only if he files patent application himself.

    The statutory scheme is clear. A patent with incorrect inventorship is valid; it is only challengeable in a derivation proceeding, or perhaps by a proceeding under 35 USC §256. Third parties can not defend themselves in court against a patent issued to a pirate.

  6. 46

    Precisely correct, my major problem is with the rewriting of Section 102(a) and the removal of Section 102(f). 102(a) no longer has the requirement that an invention cannot be previously “known”, which is the very legal definition of the term “invention” (see Black’s Law Dictionary and the current Section 102(a)). Removing 102(f) also removes the requirement that only the true inventor be awarded a patent. The government’s response to my suit ignores the problem with 102(a) and claims the removal of 102(f) is irrelevant because the law mentions elsewhere that you must acknowledge you are the true inventor when you apply for the patent. The problem is that the new AIA derivation proceeding is not interested in who was the first true inventor, only whether the plaintiff can prove that the first filer stole or copied the plaintiff’s invention. That is not the same thing and the know it. These factors clearly add up to show that the purpose of the AIA was to circumvent the true-and-original-inventor requirement of the Constitution. Sure, they make one sign on the application that they believe they are the real true inventor, but if they lied then the law has no teeth, no requirement that they prove it if challenged. If they really wanted to comply with the Constitution, then why remove these items from Section 102? Why change the interference proceeding which determines inventorship into a derivation hearing where the defendant is not required to show any proof whatsoever of his/her inventorship? There is only one answer, and that’s why I’m suing.

  7. 45

    This legislation couldent have come at a whorse time for shutting down economic restart. The litigants should be attacking the first to fraud aia on a far wider basis including all the corrupt regressive provisions and everything progressive that was left out intentionaly to cement incumbants 1% stranglehold on human advancemnt and the 99% cival rights and right to prosper in a system of free market capitalism.

  8. 44

    Michael, both Pennock and Gaylor stand for the proposition that a 2nd inventor may receive a patent if the 1st inventor does not seek one, or otherwise has abandoned his invention.  I believe that Congress can constitutionally lay out the conditions for abandonment and/or due diligence.  This is why I believe that 1st to file may be constitutional.

    The problem I have is that, with the repeal of §102(f), a defendant in a lawsuit can no longer raise the issue of inventorship as a defense.  The patent is valid.  The true inventor can sue under §256 to replace the named inventors with himself.  (He can also proceed by filing his own application and then seeking a derivation proceeding.)  But until he does, no one else can complain.  I don't think this is constitutional because I believe the Constitution does not permit valid patents to be granted to non-inventors.

  9. 43

    Ned: Both Pennock and Gaylor (mentioned by Dennis) concern abandonment, suppression, and concealment (102(g)). This seems to be the basis for interference, and not a contradiction of the Article 1 grant to the true inventor.

  10. 42

    Another really good method of inventorship determination is lack of marketable invention filing globally. The global patent thieves wont admit thieving however they are unable to produce marketable invention themselves on challenge. So you say either file or get off the pot your not the inventor of nothing. Then get the master conciever (Myself)to file a group of marketable on specified date after 90 days notice allow them to file first and offer lockering and immediate novelty check and say to the rips guys you are just rips that cant invent nothing

  11. 41

    Ned anyone who stores valuable unfiled inventions on there internet connected computer has to be expecting to be hacked. I got hacked when I started because I left the printer pluged in but they just got a list of previous inventions I dident realize that one was not previous the counterrotating helecopter blade that socorski patented he riped me and bell for the original helicopter too.

  12. 40

    You need to realize Ned there are 40 different methods of cheating the inventor and until all are corrected they will pray on the weakest links making filing a valuable invention foolish and believe me ive had enough.

  13. 39

    Its called adding more inventor determination methods to perfect accuracy of true concievers. In the AiA theyve regressed the inventorship determinaion methods eliminating 3 good ones and adding no good ones although ive proposed 15 good ones. The old system was good for the pirate the new one is better for the pirate NFG

  14. 38

    Ned I already told you about the 15 new methods ive invented to fix the problem Immediate novelty checks on fileig establish who invented first that way the invention wont be in the foreign files when they check in important filings the other method is lockering of files from companies who might claim to have had the invention under secret development for years. They wont be able to produce the invention at the time that the true conciever files because they dont have it in there locker and they dont have to reveal anything if the patent filer doesent have anything pertaining to there patent they just leave with there file unexamined. Congress listents to nothing from inventors

  15. 37

    Michael, I think a major problem here is that companies computer systems can be hacked and an invention stolen.  If those stolen inventions are filed as patent applications in remote locations such as China, and then later filed with priority to the Chinese application, how is anyone in the United States going to credibly assert that the invention was stolen from an American?  At least in a first to invent system, the American can still get the patent by showing that he invented the subject matter of the invention first.  In a first to file system, he is going to have to show that that Chinese application was pirated.  That is almost impossible except if you have a lot of money and perhaps political connections in China.

    Now this sets up a situation where computer security of American systems is more important than ever to protect against the ruthless pirate.  This is like the same situation we find ourselves in at airports where we have to undergo extensive searches and other humiliating invasions of our privacy this because some would sneak explosives onto airplanes and blow them up.

    The old system was better for the American.  The new system is better for the pirate.

  16. 36

    In the first place what your saying is that improving the system to make it integritious and usable is junking the system Not!. The present coruption is shutting down the system as we speak as far as significnt invention. There was no U.S revolution there was no moarchy breaking free thats all invention thiefs trying to justify there heinious anarchists deeds murders and thefts of the greaest men on the planet the high federals myself being the last of 4. Now socialism is still occaisionally rearing its ugly head to justify frauds also some like religion as an excuse too extra jailtime for them is warrented

  17. 35

    I dont think there is anything wrong with what you said. As arguable the smartest person in the world I advocate improvement in the defective system to make it integritable usable from its canibalistic uncivalized fraudulant present state. Your having a hard time grasping the largescale influence ive had in the past on all endeveors of human advancement

  18. 34

    Its fraud against the actual conciever because he has been tricked into revealing his invention only to have it stolen not to mention his cival rights to a patent and the destruction of the incentive to create denying all peoples of the world the usage of the invention. Its also fraud when a valuable invention is declared obvious when only one person can actually invent significant new conceptions

  19. 33

    Michael, I am not sure that giving a patent to the second to inventor of an invention is unconstitutional. I searched your article for any mention of Pennock v. Dialogue. I did not find any. You just might want to review that case. It does seem to suggest that there can be more than one inventor of an invention and that one might grant a patent to either of them.

    In contrast, I find a lot of merit in the concept that the new AIA is unconstitutional because it allows a valid patent to issue to applicants who did not invent the claimed invention. That seems to fly in the face of the very language of the constitution.

  20. 32

    Michael, our system has stood the test of time and works. Regardless that one might think there is a better way, it would have to be an awfully lot better way for anyone in their right mind to totally junk a working system in favor of a completely untried system that may or may not work.

    Contrast the US and French revolutions. We broke free of monarchy, but not of civilization itself. We still maintained rights in property and due process of law. We then established a new republic, looking to history for good examples, and modeled our new republic on the Roman Empire, with a few well considered fixes, among them that both Senators and the Imperator where not lifetime positions. It is not an accident that with these fixes our system was and is successful.

    In contrast, the revolutionaries in France wanted to reshape civilization itself in increasingly radical directions. Radical socialism was introduced, with high progressive taxation, and price controls set below cost of production on food and coal. The capital had to raid farmers to find food as supplies were quickly exhausted. One had to get in line in the middle of the night to get one’s daily bread. Life became unbearable, not better.

    In addition, due process vanished. People were arrested on simple accusation and executed if they could not prove their innocence. The reign of terror was the result.

    The contrast between the two revolutions could not be greater. And yet, here, in this modern age we do not learn our lesson, but like the radicals in France, we are eager to throw out the old with the hope that the new will work. This is all but c r a z y.

  21. 31

    so he cannot possibly claim any personal injury from this legislation to even meet minimum “standing” requirements for a suit challenging the statute!

    Does Tafas ring a bell?

  22. 29

    The aia also has a new new method of theft by technical perfction so they will corruptly file insert t uspto then claim astonomialy impossibe same time concepton with superior technial writers to steal the invenion in cival rights violatons. Apeantly they through out first inventor to file at the last moment so now its first theftor to file disgusting open coruption

  23. 28

    Ya I think I know the word rip off inventors give to greedy industrialist mob. use corrupt insertions to make a thicket around the true concievers patent to make it look like nothings new they been a it since 1960 so it woulden have done you any good to file anyways corruption rampant!

  24. 27

    Yes thats right the financial reward for advancing our civilization of course some whould like that to be there cue to do another ripoffthrough the corrupt system. Not only that but the smartest people weve got are inventors so we want to keep them around and creating more jobs and revenues through reinvestments an setting the right course for all of humanity to move.I am running for president to just right me in ive got a plan that puts Romneys and Obomas to shame

  25. 26

    Thats right first to file is an inventorship determinaion method and better than what we had which was a run the concepion date back in time to steal he invention using large packs of big business liars and falsafied inventor notebooks. They had three other methods of determiion that they eiminated instead of keeping though and did nothing to eliminate the other 40 methods that inventors are cheated. or add the 15 new methods I invented to perfect determination and nothing to improve invenor security except allowing murdring the inventor to steal his invention brutal regression!

  26. 25

    Its certanly not in the best intrests of the society to put the inventions in the wrong name it destroys the incentive to create and stunts economic growth not to mention inventor cival rights violation and fraud

  27. 23

    I am more inclined to legislation that has an only inventor to file because my memory is of inventing everything of significance since 1953 this legislation just retards the great inventions from hapening

  28. 21

    Inventor means the first one to visualize in the mind the any other person can only be the theftor of the firsts idea or an improver of it with or without permission. The aia has no espionoger provision or anything else to promote finding the true conciever although I gave them 15 additional methods to choose from

  29. 20

    Dennis, I would like to see the link for the complaint. Does the complaint go into the Sec. 18 clause which lets ONLY financial patents be put under further testing? Talk about unconstitutional. It seems that because a patent is financial in nature, it CAN be treated differently than any other patent? When does subject matter in a patent make the patent subject to different rules?? ONLY in the AIA!

  30. 19

    The first inventor to file, will only be a winner if they didn’t knowingly steal from the first. So FTF has no Merit if thay applies!!!!!!!!!!!!!!!!!!!!!!!!!!!

  31. 18

    The first inventor is not the one to get the patent in some 40 different methods to rip the inventor and counting they have eliminated one and added sereral new ones to rip the inventor in the aia you have to be even more foolish than before to file valuable inventions that lead to new jobs and government revenues

  32. 17

    By his logic, the Progress Clause contains two standards; inventors (for which there shall be only one) and authors (which apparently contains no such limitation). I don’t think that jives on either a textual/conceptual level, nor a practical level.

    Since its patently obvious (and proven) that items are capable of being invented in multiple places simultaneously and without any communication or relation between the two inventors, I tend to think this suit won’t get very far.

    That and I always wanted to start a sentence on this blog with the words “patently obvious.”

  33. 16

    Okay standing issues aside, I think the question in Golan varies significantly from the one here. That being said the decision in Golan is certainly indicative of how the Supreme Court will likely vote, but I think the issues are separate.

    While I think these challenges are likely to fail (even assuming that they have standing), I don’t think they deserve sanctions or that they are Quixotic. The question they are presenting is a constitutional one and a textual one: what does the word inventor mean? Can there be two parties that are inventors of the same invention? Or does inventor mean the very first? Does that 1850 case need to be revisited (stare decisis or not)?

  34. 15

    They have basically admitted the first inventor is not the one to get the patent it is “the first inventor to file.” I think this case has merit, but they may not have standing.

  35. 14

    The people in congress wont listen to anything inventors say. ive formulated 15 inventorship determination methods to locate the true inventor with decisive accuracy but they ignore everything and enact brutal regression of the system instead. I am getting tired of typing myself blue in the face.If the idiots would look on my website they would have no excuse for there corruption

  36. 13

    But exclusive rights?

    Only to inventors.

    The United States Patent and Trademark Office would like a word.

  37. 12

    Thanks Ned. The complaint does include the 102(f) issue as well as others that I did not mention here. It also includes a somewhat developed discussion of standing. I’ll try to add a link.

  38. 10

    Dennis, nice red herring there.

    The primary problem raised in the complaint, I believe, is the repeal of 102(f). This is not a pure “first inventor” problem. Repeal of 102(f) allows a valid patent to issue to one who is not an inventor at all. Now one can challenge inventorship in court or in the PTO except in derivation proceedings, and then only within one year of a claim being published or patented. This challenge is limited to only rival applicants. It is not a defense that can be raised by third parties in the case of validity or even by the PTO either as a condition for patentablity.

    (It is pertinent to note here Professor Hricik posts on 282. They include only 102/103/112 and 251 as grounds for invalidity. They do not include, for example, 116.)

    Dennis, you may have missed the point here.

    BTW, I will grant you that the first to invent aspect of the complaint is weak. But the repeal of 102(f) is, IMHO, a major problem.

  39. 9

    Yes, more of the same witty(?) and substantive(?) chat that we have come to expect and cherish(?) from MM. Let’s prepare to be dazzled.

    /off sarcasm

  40. 8

    That’s a good question; my guess is that the government will say that he doesn’t. I also guess that Stadnyk will argue that he is injured because he has ongoing R&D and the new system adversely affects his ability to fully develop an invention before filing. Not having read the briefs that have yet to be written, my initial bet is that Stadnyk gets past the standing argument.

  41. 6

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

    Not even under the Commerce Clause?

  42. 5

    DC I also thought that Myriad case would go nowhere

    Well, some of Myriad’s method claims were among the worst ever written, from a 101 perspective, so it was predictable that those would fall (they did). I don’t remember you stating any expectation about the survival of those claims.

    As for the composition claims, those aren’t going anywhere. So don’t sell yourself short, yet. 😉

  43. 3

    Does Stadnyk (or anyone else) have standing to raise this question before he’s been denied a patent on the basis of someone else getting to the Office with his invention first? (Not all of us who read/post here are attorneys, and I find these sorts of things interesting.)

  44. 2

    “Quixotic” is a considerable understatement. This is just another baseless law suit clogging up the courts with a free ride at the expense of the taxpayers who have to pay almost all of the costs of our judicial system. Thus guy and his attorney ought to get thrown out of court with financial sanctions. The part of the AIA he is objecting to does not even go into effect until next March, and even then only for applications filed after that date, so he cannot possibly claim any personal injury from this legislation to even meet minimum “standing” requirements for a suit challenging the statute!

    Also, I have yet to see any factual proof that the present so-called “first to invent” system helps small inventors vis a vis large companies, whereas there is a published study by a former Commissioner that it actually hurts small inventors, in the very few cases where it really counts – in interferences between small inventor and large companies.]

    Whereas in contrast there IS clear and express discrimination in the AIA in favor of universities and small inventors, both of which getting a further reduced fee break at the expense of companies which will have to pay higher fees to susidize those fee reductions.

    But in any case, on what basis are these are constitutionally prohibited forms of Congressional discrimination that even give rise to a basis of a constitutional challenge?

  45. 1

    This is rife with problems with the pre-AIA law, and seems to ignore the difference between inchoate rights and fully earned legal patent rights.

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