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.)