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.)
Very well said Greg Francis, I hope and believe there will come a time that this will happen. The will of the People at the Ballot Box hopefully can change lots of things. Special Interests and PAC’s are robbing this society. Pac’s survive because the Politicians’ want them to survive. The Country survives only if the economy survives. If the PAC’s are choking the peoples rights to create jobs and add to the Economy, then it is high time we do something. Why should a person or persons that give ideas that move the Economy be kept out of the loop, or have their Ideas stolen because the PAC’s want to control them. Why should special interests and PAC’s be running the Congress. Oh how silly, I thought that was the job of Congress.
I suggest we all have these “calm” civil town Meetings. Why not. Most of the people are out of work. this is a perfect time to get the Country moving forward.
I think this change in law is being promoted by companies and entities who have more than enough resources to easily hire someone to write their patents.
For those of us with great inventions but no resources to file a patent immediately but must research patent law, drawings, etc plus take time to save for patent fees: we will be the losers.
So then, why invent new things if we will never get rewarded. The barriers to success must be made equal between those with said resources and the ‘little guy’.
Getting a patent should be easy enough for a 5-year old to do. I don’t mean changing the technical complexities, rather the government/USPTO should be able to take an idea (communicated verballly, written, sketches, etc.), determine its market viability and convert it into a patent (if deemed worthy), or at least mentor said ‘little guy’.
We want good ideas to come to fruition and get universal protection because this is what drives our economy! Thus, we should be promoting these ideas/inventions to the top proactively! The inventor should be rewarded! Without major changes to the way things are done (and I don’t mean changing them as proposed by the ‘big guys’ with this law), our country will continue to demise.
Kevin,
I too have felt frustration at the lack of an answer on this point, not only here but on several threads over at Gene Quinn’s IP Watchdog blog.
Although I’ve seen logical arguments both for and against the constitutionality of FTF, I don’t know that anyone has successfully addressed the original point of Dennis’ post, namely, if FTF is unconstitutional because it sometimes allows the issuance of a patent to someone who is not the first inventor, then how is the current (soon to be former) system, which allows second (or third or fourth, etc.) inventors to obtain patents under certain circumstances, NOT unconstitutional? I don’t see a principled way that a court could throw out FTF without also doing away with 102(g), among other provisions of the current patent law.
First to Invent is first to invent and it should be a person as If John Smith invents something while working for GE etc than John Smith is listed as the inventor. John Smith
has a contract to work and gets paid owns the patent and the company owns the patent contractually . Anything else is smoke and mirrors . The Banks and Big Business are about to destroy the only industry left in the United States and the DUMB , DUMBER than DUMB bribed politicians are about to push threw a bill that destroys the American way . Call it what you want but once again the country is being sold out and that is the facts. The Banks are intending to steal a company’s patent by introducing a Patent Reform Bill that steals property from a company that has been challenged twice in the Patent Office won in court by a jury . OUR GOVERNMENT IS TOO
SICK AND CORRUPT AND WILL DESTROY THE ONLY TRUE INDUSTRY LEFT BECAUSE OF OUR GREEDY POLITICIANS … PERIOD . Unless they stop the most ridiculous bill ever presented in DC .
It is time for all good Statesmen to stand up;Truth;… Congress shall have power . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries….
This discussion about patent law has nothing to do with helping the small guy, nothing to do with the backlog of filings, not anything to do with cost of the process to obtain a patent, not any thing to do with using the great inventiveness of the only free society left in the world. First to file has at it’s core to homogenize the patent process to the depths of the world homogenized process (Europe, China, Russia, etc.) used by the one world order ilk. If this issue is important enough to be the gold standard for the rest of the world to follow, then fund the office properly to protect any and all United States citizens/…to authors and inventors the exclusive right to their respective writings and discoveries….
Spend the funds needed to litigate to the nth degree all violators domestic and specifically any foreign entity.
This is one of the last bastions of financial freedom left in the world. Don’t listen to the deceivers and alternate motive ilk that is battling against the U.S.
We also have an additional problem in the post grant proceedings violating article III. BPAI admin law judges can hear challenges to granted patents by persons who don’t believe in patents or feel a technology is immoral (like greenpeace’s anti-GM work in the EPO). The problem with this is Article III case/controversy clause applies to ALJ’s and there’s no redress for an anti-technology group because repealing a granted patent actually opens up the ability to practice that work and thus fails the redressability requirements of the Case/Controversy Clause.
Forget first to file.
The USPTO is the ONLY US Agency that requires special accreditation to represent clients. An attorney can brief the US Supreme Court, but needs a credential by the USPTO alone, to file a patent application before the USPTO.
If that’s not enough, the USPTO now wants to improve US competitiveness by setting and keeping their own fees.
So, in the USPTO we have, a) a 100% monopoly to issue patents, b) with sole pricing discretion, c) deciding who they will work with.
Their shrine to “innovation” should be a tombstone. Anywhere else but the US Government, the antitrust forces would be howling.
Curtiss, 1867, stated that the framers well understood the terms “inventor” and “discoveries” — from their prior usage in England in several states that had adopted patent statutes.
link to books.google.com
Ned I think every patent statute in the world awards rights to the first inventor. They differ on the methodology for awarding the title “first”. One jurisdiction invokes the concept of diligence, for example. Others just keep it simpler, and award it to the first to come forward with an enabling disclosure.
You want to know what I think? IF the People in this country knew that you don’t give a Rats Patoutti about them.. and you only fight for position… I feel sorry for all of you..
Maybe some older and wiser people can teach some of the Young-uns just what you “ALL” are doing to this Country with your bickering over who’s on first.. And then we can shape the ECONOMY and the Country back to when it was a proud Country.
OK. Now the meaning of true in 1790 is better understood.
It means the inventor invented it himself and not someone else, such as his employee.
Thanks.
Still, the 1790 Act expressly required the patent to be granted to the first inventor. This really does change much.
True.
I’m going to gag the next time a politico states that the reason for reform is because big business and big U are behind it.
True, some braindeads will argue that we need “reform.” But they will never explain why.
The other side argues policy, but they are silenced by not calling their witnesses.
I find hope in the 51 who signed the request for a debate on the constitutionality of FTF. I hope at least some of them know who Thomas Jefferson was and his role in this affair.
Best to read the Convention direct, I think Ned.
You need the EPC, Article 60(1) and (2) and then Article 138 (1)(e).
Note Art 60(1) “The right….shall belong to the inventor or his successor in title” So, we see that, in misogynist (or politically incorrect) Europe, only single males can invent.
Note Art 60(2), on independent rival inventors. The first filer loses if she fails to take her first filing as far as PTO publication.
Art 61 EPC is the one to deal with those who steal inventions from true inventors. They have to hand over their pending apps to the true inventor(s).
Hard, Congress has discretion to a point, and that point is crossed we all agree when it exceeds the grant of power give it by the constitution.
Necessary and Proper and all that.
Do you at least agree on this?
Would there be a difference between
“The” true inventor; and
“A” true inventor.
JANUARY 11, 1997 NOT JANUARY 1, 1997**********
I File a Patent Application… you know the story.. When you get down to the nitty gritty. I am told to sign something. he claims he is my Atty. All the time they are waiting to see how I make it… Then he say tear up what I told you not to date… I made a mistake. It will cost you 250,000.00 if you allow it.
Then Dolph doesn’t tell me what he did to me..He just says sign the Form? Memory.. I was told what it was going to cost me. didn’t know he was canned. didn’t know it was EXTORTION, FRAUD and whatever else MENS REA. ETC.
Then we know the rest of the Story. It is mine!
If the USPTO thinks that the Folded into design is not a teach away but truly different…. Then do what they believe is right and Cut the BABY in half. If the USPTO thinks that (what I think) then give it back to me.. If truly it is not a take away JUST DO IT!
But to hem and haw and keep me in a BOX while the rest of the story moves on behind my back and without me aware of what is being done.. THEN I THINK IT WAS ALL A SHILL. SIGNING A power ON DEC. 18, 1996 AFTER MY APPLICATION IS PUBLISHED.. OR ABANDONED ONLY TO GIVE ME BLUE EYES.. THINKING SHE IS AS DUMB AS DIRT. AND THEN TELLING ME ON JAN.1, 1997, THE SAME DAY I FIRE B ON 08,677,566, SEEMS A BIT SHILLY… IF HE IS NOT INVOLVED THEN I APOLOGIZE TO HIM. AND THEN YOU KNOW HOW IT PLAYED OUT FROM THEN ON..
GUESS WHAT NOT ONLY AM I NOT AS DUMB AS DIRT.. BUT I AM ALSO SITTING ON TWO AWESOME IDEAS THAT WILL PUT PEOPLE IN THE USA TO WORK.. AND TWO MORE THAT ARE OK. I WANT THOSE 5 PATENTS AND 5 TRADEMARKS TO ISSUE ALSO AS PRINCIPLE.. And as long as I am paid what I should be paid for all this ABUSE, then come on..
Come on cut the BABY in half if you have to. You already cut my HEART out. So what difference does it make!
As people have amply commented – both sides of the political spectrum engage in the same behavior. It is not a Republican nor Democrat ideology that is behind the shill.
The shilling comes from the political smoke hiding the underlying agenda.
We all know what that agenda is.
Ned the EPC declares that patents shall be revoked if not granted to the true inventor or her successor in title. I think every First to File statute must inevitably have an equivalent provision.
In 1790, with the PTO in, say, DC and two rival inventors, one in DC, the other in, say, Seattle, First to File would be a bit unfair on the poor guy in Seattle, wouldn’t it?
There is in the sense that if I file second, but can PROVE I conceived first and diligently reduced to practice, then I will become the inventor – as it should be.
Facts are stubborn things…
What’s REALLY funny is that Mooney’s employer doesn’t think we can all see through the charade…
Max, you’re still a euro-ninny, yes?
Hard, it still comes down to what Congress thought it was doing in 1790 when it, in Section 5, made it a condition of validity that the patentee be the first inventor.
Why would they do that?
From the Elred case, I cited earlier, the Supreme Court noted that the first Congress was very concerned with the constitutional requirements regarding patents. Very!!!!! So one could believe that they felt that the choice granting a valid patent to only the first inventor was a requirement imposed by the constitution itself. Now, that might actually be a reasonable conclusion.
Pennock dealt with the possibility that the first inventor abandoned his right to a patent by acts inconsistent with the statute. That opens the door to the second inventor. But absent that, the first inventor’s right seems to be something that cannot be taken from him under the law.
It is interesting that Mr. Quinn does not cite Pennock v. Dialogue which discussed the whole issue of multiple “true” inventors.
Second, he starts his analysis with the act of 1836, not 1790, where the requirement to be the first inventor was set forth in section 5 as a requirement for validity.
Quinn’s sophistry carefully avoids a discussion of what Congress had in mind when it in the very first patent act made being the “first” inventor a condition of patentability. Why did it choose those words? Why? A design choice? or was it what they thought the constitution required? Could that have been even the remotest of possibilities?
No, let’s dismiss it out of hand.
Ned,
We have already established that Congress was given the discretion to set law – including the Act of 1790.
Through your own very favorite case of Pennock, the Congress gets to set the rule. The Act of 1790 was not the constitution. If this Congress decises to reset the Act – it is their Supreme Court recognized discretion that comes into play.
Ned, why am I reminding you of this?
First Inventorship was made a requirement for validity in the Patent Act of 1790. See, section 5 of that Act.*
This fact is central to an argument that first inventorship is required by the constitution in an article by Edwin Suominen, published in the JPTOS in 2001 (83 JPTOS 641) link to docs.piausa.org
He also notes that Jefferson and the first Board considered and rejected the idea of granting patents to rival applicants to the same invention based on first-to-file.
The evidence remains strong that the founders of the Republic thought that their power, granted by the constitution, was to grant patents to the first inventor and not to the first, inventor-to-file.
* “…if it shall appear that the patentee was not the first and true inventor or discoverer, judgment shall be rendered by such court for the repeal of such patent or patents;…”
Bruce, is it your interpretation that this Substitute can be filed when you file the patent application and that it only requires ownership of the application, not that ownership be acquired from an inventor?
I have in mind an applicant filing on a trade secret process where there is no identifiable inventor, but it is clear that the company owns the trade secret. Can this company file a valid declaration of ownership under these circumstances?
The Shilling, are you trying to prove, by citing evidence of his support of corporations, that our good friend Malcolm Mooney is a Republican?
I think you may have misunderstood his post.
Perhaps.
Malcolm?
In the U.S. “must be awarded to an actual person” is not ignored. If a company owns the rights to a patent it is because the inventor assigned the[ir] patent right to the company.
That, again, is part of the problem with the pending legislation. Patents will arguably be awardable to companies who merely claim that they have such an ownership right. Worse, the penalties for lying are reduced, and effectively non-existent for non-U.S. entities or where the original inventors cannot be found or are not cooperative. Compounding the later – asserting inventorship (or, in the case of a Substitute Statement, ownership) is no longer required before examination, but rather, before issue, which may be many years later.
As someone else pointed out, a lot of these new provisions look good at first, until looked at in detail. And, then you see how the big multinational companies with large off-shore workforces who are the primary backers this legislation are trying to convert this to a European system where the applicants are the companies, and not the inventors.
“move to a first to file system… And if some people believe that corporations will benefit, all the better.”
“how would you get the Democrat base to oppose FTF? Show that big corporate america is behind it?”
Indeed, here is the letter signed calling for a debate on the constitutionality of FTF. It is signed by Democrats and Repulicans alike.
link to ipo.org
Now, Malcolm, how would you get the Democrat base to oppose FTF? Show that big corporate america is behind it?
Ned and Bruce,
Prevailing conservative ideology (and there’s nothing at all hidden about — see last night’s Republican debate) is that (1) whatever is good for big business is good for America and (2) big government is bad.
So let’s get rid of interferences and move to a first to file system. It’s one less thing for the government-run USPTO to worry about. And if some people believe that corporations will benefit, all the better.
Commentators like Erickson and some of the commenters here are just making it up as they go along. Moving to a first to file system will “harm America?” Don’t make me laugh.
Republicans want to get rid of the Environmental Protection Agency. What do you think, Ned? Bruce? How would the harm from that change compare to the harm from moving to a first to file patent system? I can’t wait to hear it.
Malcolm, regardless of your views on Republican generally, I was very surprised in my days in the leadership to find the Democrat administrations mostly in the pocket of big business and the Republicans on the hill and in the press backing the small inventor and the startups.
There is perception and there is reality.
Now, I was very pleasantly surprised when Feinstein and Boxer both came out against first-to-file because it would harm startups and America. They are, after all, Democrats! and in my experience, Democrats were the biggest backers of harmonization.
No thanks needed. BTW, are you yourself a lawyer? Are you in the habit of billing by the hour? The dictionary you use: how does it define slander?
“Is that another reason why patent attorneys in the USA want nothing to do with FtF?”
In a word: “No.”
But thanks for slandering attorneys anyway.
Just to confirm that answer from Hutz: under any First to File regime, the one who files first wins, albeit, only when that first filing enables something.
Typically, David has an enabling disclosure of his best mode or prototype, very early on, and can file it quickly even while Goliath hesitates because Goliath wants broad pre-empting claims, and so strives to enable the entire field before trusting himself to file.
Later, under First to File, the fact of earlier date and its novelty-destroying effect are open to all to see, inescapable and unchallengeable. And so, Goliath will pay David a king’s ransom, to gather in to its nest the rights of ownership to the novelty-destroying cuckoo in the middle of its painstakingly built nest. I know. I have been through this cycle.
Lionel, Malcolm, tell me again what teatment gets dished out under First to Invent, to small inventors who file earlier, and have the effrontery to assert against later-filing 400 lb gorillas.
Because of First to Invent, the specifications of US filing are twice the length of anything required for enablement anywhere else in the world. In a First to File environment, a race to the PTO if you will, standards for enablement inevitably are driven down to what is needed, no more and no less. So, filings are only half so elaborate as they are in the USA. The grindingly boring and endlessly repetitive boilerplate no longer serves any useful purpose.
Is that another reason why patent attorneys in the USA want nothing to do with FtF?
Make that “his employer”. Serves me right for haphazardly changing the person of a sentence in mid-edit.
For one thing, the explicit wording of the Constitution. There is nothing there about granting owners of an invention anything, but there surely is granting the inventor.
The Constitution doesn’t say anything about selling patents either (or licensing them), but people do it all the time. People even sell the patent rights to inventions they haven’t invented yet. Why not simply admit that what the inventor is really doing is selling to our employer whatever patent might issue from the invention made in his employ, and let that employer be the applicant and receive the issued patent in his name?
The Constitution would probably be okay with that, because it’s still the inventor who had it first. And really, what trouble has it caused in the rest of the world to let IBM call itself the “applicant” for a patent that IBM will inevitably end up owning anyway?
“2) I still have a problem with “the true inventor”, because what happens if you have more than one true inventor?”
Gene Quinn weighs in on this:
link to ipwatchdog.com
Doesn’t change what the Constitution said or how the Constitution should be interpreted.
Actually, I would argue the opposite.
First, big corporations rarely act quickly and usually rather quickly assign ratings to internal inventions. Then they are farmed out to outside counsels. If an invention is assigned a lower tier in the first place, the patent probably won’t get the care in drafting it should have.
Second, large corporations can tie up the little guy in litigation over when the corporation first inveted/started using the technology vs. the inventor’s invention date. With FTF, that litigation goes away (AND TO BE CLEAR, I AM NOT REFERRING TO INTERFERENCES – I am referring to litigation over the invention date after the small inventor has brung suit.)
So what? Pretty much everything the GOP does is designed to favor the “deep pockets” over the rest of the our society. After all, we’ve been told by Republicans over and over that it’s these poor, besotted over-regulated and over-taxed corporations who are the “job creators” in this country. Why is it suddenly a problem to help them out?
This is interesting on a day when President Obama is fund raising on Wall Street.
But more important here is that both proponents and opponents of the legislation cross party boundaries. In the Senate, it was clear that Sen. Hatch (ranking member) worked very closely with Sen. Leahy (Judiciary Committee Chair). And, today, I got a copy of a letter sent by two former chairs of the House Judiciary Committee opposing the legislation to the other members of the House. The first past chair signer was John Conyers, the other James Sensenbrenner.
Given the composition of the proponents and opponents of the legislation, I would respectfully submit that the proponents are the ones engaging in Crony Capitalism, and they seem equally represented on both sides of the aisle in both Houses of Congress.
I don’t understand what is so wrong about issuing a patent to the corporate owner of the intellectual property in the invention. I don’t understand what is so wrong with declaring that patent invalid if the chain of title does not go back, unbroken, to the true inventor, the actual human devisor of the claimed subject matter.
For one thing, the explicit wording of the Constitution. There is nothing there about granting owners of an invention anything, but there surely is granting the inventor.
I don’t understand what provision of the US patent law model prevents rival filings at the USPTO, for overlapping subject matter. I think they happen in every jurisdiction, at about the same frequency, and that every jurisdiction therefore needs a way to deal with them. In the USA it is the threat of full-blown interference proceedings that deals with all but a few of them.
You are right that they happen all the time, but most often, the second filer just tries to show that he invented before the first filer filed, shows diligence, etc., and gets his patent too. Indeed, both applicants may end up with patents.
What you have to keep in mind that interferences most often require copying claims from the senior application into the junior application. But most of the time, the two competing applications have totally different claim sets. They may overlap, or they may not. Keep in mind, that the important thing in terms of rejection, is that the first filed application contains sufficient disclosure to anticipate or help render obvious the claims in the second filed application.
Keep this in mind: Interferences are a red herring.
Under the European Patent Convention, all overlap situations are resolved without interference proceedings. If necessary, there have to be what you might call “derivation proceedings” but they are rare because everybody knows the importance of the filing date. As you never tire of telling me in these columns, first inventors file first.
The problem with the derivation proceedings in the pending legislation is that they are poorly designed, unless the intent was to provide window dressings without a substantive remedy. For example, derivation proceedings during prosecution must be filed w/i a year of publication of the supposedly derived application. But what happens if a Request for Non-publication is filed? Whoops. No remedy. The result is that standard advise will be to file such a request automatically, unless there is a bona fide intent to foreign file at the time of original filing. Moreover, in both that case, and in the post-grant case (also, seriously time limited), the request must be supported by substantial evidence – before discovery can take place, in a situation where the alleged deriver is likely to have most of the relevant information. Oh, and it is currently discretionary on the part of the Director.
I don’t really know.
My last point was that first-to-file, regardless of inventorship, which is what I think the pending legislation really is, could very possibly award patents to non-inventors over inventors, and that I think would not be Constitutional.
Agreed.
Ping, score one for you.
I think this IS the best counter argument.
If I were a betting man, I say this wins a majority of the Supreme Court as well, if it gets that far.
We need to realize that there is a strong resistance to change on the part of those wanting to steal inventions of inventors Its evident in the legislation and the resistance to correction efforts by myself and others hopefully the courts will recognize it and strike the legislation down as intentionally deficient.
Ned, I have tried to explain this nuance to you before.
The Pennock case tells you what is going on – all you need to do is read the case without your preconceptions getting in the way.
As IANAE tells you – the law is the key, not the constitution. In Pennock, the Supreme Court was explicit that they followed the discretion of Congress (remember all the deference to the Act) in following just what that law was.
Now, if Congress re-writes that law, the new law will indeed take care of your concern of “A second inventor can get a valid patent… In order to block a second inventor, the first inventor must seek a patent [by following the law – that is, by being the first inventor to file]”
“The question of what happens in the US when a first inventor has not abandoned his right to a patent and he otherwise meets the statutory requirements? Can he be denied?”
You see the issue with how you ask the question here? “otherwise meets the statutory requirements” – The statutory requirement would be FITF – that would be the only way for the first inventor to block the second inventor.
The only way. Otherwise, the first inventor would not be following the statutory requirements (and thus, Pennock would still hold!)
Pennock actually gives us this very answer, because in Pennock, the Supreme Court was explicit in that Congress had the discretion to choose the process. FITF would simply be a new process chosen by Congress.
It really is that simple.
Ned, I have tried to explain this nuance to you before.
The Pennock case tells you what is going on – all you need to do is read the case without your preconceptions getting in the way.
As IANAE tells you – the law is the key, not the constitution. In Pennock, the Supreme Court was explicit that they followed the discretion of Congress (remember all the deference to the Act) in following just what that law was.
Now, if Congress re-writes that law, the new law will indeed take care of your concern of “A second inventor can get a valid patent… In order to block a second inventor, the first inventor must seek a patent [by following the law – that is, by being the first inventor to file]”
“The question of what happens in the US when a first inventor has not abandoned his right to a patent and he otherwise meets the statutory requirements? Can he be denied?”
You see the issue with how you ask the question here? “otherwise meets the statutory requirements” – The statutory requirement would be FITF – that would be the only way for the first inventor to block the second inventor.
The only way. Otherwiese, the first inventor would not be following the statutory requirements (and thus, Pennock would still hold!)
Pennock actually gives us this very answer, because in Pennock, the Supreme Court was explicit in that Congress had the discretion to choose the process. FITF would simply be a new process chosen by Congress.
It really is that simple.
So the real question is whether congress can grant the second inventor a patent when the first inventor has not abandoned the invention and has not abandoned his right to a patent….
OK, we can make that the real question, if you like. How about this for the real answer: Since the concept of “abandoning” the invention is not addressed by the Constitution, the legal dimensions of such abandonment are defined by statute and common law, to the extent common law is applicable. Under the current patent law, a first inventor can abandon his invention by, among other things, being too slow to file relative to a public disclosure of the invention. Under the FTF statute, a first inventor can abandon his invention by, among other things, being too slow to file relative to the filing of another “true” inventor.
I don’t see a constitutional problem here.
Rally the troops!!!!! Here’s Erick Erickson, CNN contributor and reliable GOP tool, on Patent Reform:
link to redstate.com
CONSERVATIVES MUST OPPOSE PATENT REFORM
Proponents of the change argue that it is more efficient and would better harmonize with the rest of the world. It is more efficient, and it would better harmonize with the rest of the world, but that does not mean it is wise. It is important to note that we are descendants of the Glorious Revolution and English common law, which developed a strong public policy preference for private property rights not shared by the rest of the world. Incumbent in private property rights is a protection for an inventor of his patent, regardless of whether someone else files first for something the inventor invented first.
The entire point of the Patent and Copyright Clause is to protect the actual inventor so that they are incentivized to use their creativity and ingenuity to make breakthroughs. It is not designed to make it easy on the government to resolve patent disputes. And simply because the rest of the world follows a different system, does not mean the U.S. must follow suit in order to “harmonize.” There is a reason that America is exceptional, and it’s because we enjoy freedoms much of the rest of the world does not know. If there is to be harmonization, let it be because the rest of the world adopts our best features, and not because we have felt compelled to adopt their worst.
It’s hard not to laugh. At least he didn’t quote the Bible, as he is fond of doing to support his warped political views.
Although not excerpted above, Erickson also wrote this:
Obviously, the first-to-file system favors deep pockets that can handle and expedite the paper work.
So what? Pretty much everything the GOP does is designed to favor the “deep pockets” over the rest of the our society. After all, we’ve been told by Republicans over and over that it’s these poor, besotted over-regulated and over-taxed corporations who are the “job creators” in this country. Why is it suddenly a problem to help them out?
Babble Boy, if the patent bill actually passes, this question will actually be litigated. I suggest that if the Supreme Court, who will ultimately decide, decides the case on the evidence, the question will be close. If they decide the case based on an expansive view of congressional power that is unlimited, being cabined only by need and purpose (welfare of the Repulic and all that), then FTF is perfectly fine.
We are going to soon see what the Supreme Court thinks about congressional power when Obamacare reaches the court.
When we talk personal views, it depends on whether you actually like a constitution or not.
Is that a joke? The Constitutional end is “to promote the useful arts.”
They made it pretty clear that the “frenzied activity” of research and development is EXACTLY what they intended.
C’mon, Ned
Simultaneous discovery happens all the time. To suggest that there has to be a “true inventor” or that the Constitution refers to such a “true inventor” is preposterous.
It is part and parcel of Congress’ obligation and power to make rules that address how to sort out conflicting rights to discoveries. If Boner, and Weiner, and the boys want to go with F2F, great. That’s what Article I is all about: giving Congress the sole power to write the statutes.
What you are really missing by hailing back to the early patent acts is that back then there was no constructive reduction to practice in TJ’s view of “inventor.” The “inventor” was the guy who physically put all the pieces together into a working model, which was presented to the PTO.
To conflate that archaic system with the present one in which all you need to secure your rights is a good idea, a word processor, and two working thumbs is to argue by anachronism.
TJ has nothing to do with the F2F issue before us in 2011. Your ancient case law is equally irrelevant.
Correct. Marshall did say laws and constitution.
Right, but he couldn’t have meant “and”. Only one or the other can create the right to a patent. If the Constitution creates the right, the law can at best confirm the right and create a framework for obtaining/enforcing it.
And we all know the Constitution does not create the right, so where does that leave us? With a right that vests according to the statutory framework, which framework Congress is free to change as long as the patent still goes to a person who invented the thing (as the Constitution actually does require).
Correct. Marshall did say laws and constitution.
Pennock made the point that the first inventor can abandon his right to a patent, opening the way for the second.
Sent from iPhone
He held that the right to a patent vests under the constitution in the true inventor and it cannot be divested. (I gave the cite to this case in an earlier thread.)
Think about that for awhile.
Two thoughts spring immediately to mind:
1) The right to a patent can’t “vest[] under the constitution”, because the Constitution doesn’t create a right to a patent.
2) I still have a problem with “the true inventor”, because what happens if you have more than one true inventor?
see the post in reply to Cy.
Good, now we are talking.
Pennock stands for the proposition that a second inventor is a true inventor. He can receive a valid patent, but the first true inventor must first abandon the invention or his right to a patent.
So the real question is whether congress can grant the second inventor a patent when the first inventor has not abandoned the invention and has not abandoned his right to a patent….
THAT question, however, WAS addressed by John Marshall in an 1813 circuit court case where he declared that under the constitution and laws a first inventor’s right vests in him upon invention and it cannot be divested by a second inventor.
Mike, agreed on Pennock. It did not involve constitutional questions when two true inventors were involved.
A second inventor can get a valid patent if a first has abandoned the inventor or his right to obtain a patent. In order to block a second inventor, the first inventor must seek a patent or put the invention into public use.
The question of what happens in the US when a first inventor has not abandoned his right to a patent and he otherwise meets the statutory requirements? Can he be denied?
That is the real question and the issue has never been addressed by the Supreme Court.
John Marshall did address it in a circuit court case in 1813. He held that the right to a patent vests under the constitution in the true inventor and it cannot be divested. (I gave the cite to this case in an earlier thread.)
Think about that for awhile.
Anyway, I for one would not consider a second independent inventor to be any less a “true” inventor …
The Supreme Court in 1829 felt exactly the same way, as evidenced by the Pennock decision cited by Ned about 15 times. In that decision, the Court made a very clear distinction between a “true” inventor and a “first” inventor, explicitly acknowledging that a second inventor could be a “true” inventor.
It has also been pointed out to Ned several times that requiring an applicant to believe that he is “the true inventor,” whatever that means, or even specifically requiring him to believe that he is the “original” inventor, is not the same as requiring that to actually be the case. The former as a requirement for an oath is a pretty simple proxy for an oath to the effect that the inventor did not steal his idea from someone else.
It seems to me that the alleged evidence for what TJ believed on this point is pretty weak. Sure, TJ favored the first inventor over the second. But that doesn’t tell us that he believed the word “inventor” itself to mean “first inventor,” or that he believed this issue to have a constitutional dimension.
Read the case and the key thing from all this is what you say: “under the statutes”. Pennock examined the questions under the language of the statute at the time. Pennock does not stand for the proposition that Congress could not alter which inventor gets credit so long as that person is an “inventor.”
I do think Congress would have a hard time giving the patent to some arbitrary individual. They may even have a hard time giving it to a non-person entity (though only maybe).
However, absent some ridiculous criteria, I see nothing in Pennock that would make it unconstitutional for Congress to pick a “true” inventor that files first over a “first” inventor who does not.
I also would not hang my hat on “true” too much as it’s clear that you can read “true” as a prohibition on derivation.
Why? It’s simply the same decision, implemented in a statute. It still doesn’t make the alternative unconstitutional.
Anyway, I for one would not consider a second independent inventor to be any less a “true” inventor (even if his work turned out not to be novel under 102(b)), so on top of everything else the 1793 terminology is not well-defined.
IANAE, the wording of the 1793 regarding “THE TRUE” inventor is dramatically inconsistent with your views.
I think they should both be declared unconstitutional because they dont represent the most accurate method of determining inventorship therefor they violate the true inventors cival rights to be granted a patent in many cases.Ive created another 10 or so additional methods so an individual method is obsolete and defective.
His views are entitled to weight.
I suppose it’s also worth pointing out that his views are only entitled to weight if you’re one of those sticklers for what the Constitution was originally intended to mean. His views are considerably less relevant if you’re one of those wacky liberals who believes the Constitution needs to be understood in light of the realities of modern life in this ever-changing world in which we live in.
Not everything changes so quickly, but it didn’t take long at all for the major unforeseen development of interfering patent applications to crop up. That does somewhat subvert a fair bit of whatever the originalist intent might have been.
OK, Mike, let’s look at your first line.
“The Constitution does not require a first-to-invent standard, it never has. If it did, there are plenty of things in existing patent law that would be unconstitutional too.”
1) TJ thought it did require a FTI standard. See my posts. His views are entitled to weight.
2) Pennock v. Dialogue addressed the problem more than one true inventor under the statutes. They resolved the problem. FTI, but the first inventor can both abandon his invention and/or abandon his right to a patent. The second inventor might then get a valid patent.
I suggest reading the case.
Of course it was a policy choice among available options. He saw something he never considered before, and he only had two possibilities open to him – grant the one, or grant the other.
The fact that he made a decision is not entitled to any weight – it was his job to make that decision, and his job at the time was not “guy who writes the Constitution”.
I’m sure TJ had lots of opinions on legal and policy matters where disagreeing with him would not have run afoul of the Constitution.
There is a huge difference between arguing that “first to file” is unconstitutional, and arguing that “first inventor to file” is unconstitutional.
In view of that, and considering that the proposed legislation moves from “first inventor to diligently pursue and file before a year has elapsed folowing certain public uses or disclosures by the inventor and others” to “first inventor to file before a year has elapsed following the inventor’s own public use or disclosure,” perhaps it would be best to clearly state that the issue is whether “first inventor to file” is constitutional. it is grossly misleading to merely state the issue as whether “first to file” is constitutional, and doing so lends far too much credibility to those arguing that the proposed legislation is unconstitutional.
IANAE, it was his interpretation of the clause, not a policy choice among available options.
TJ’s interpretation is not the final word, I agree. But it is entitled to weight.
Ironically, “not quite there” is missing from the double quotes in my post above.
“Listen, coach, you are not a moderator. I asked Mike to read my posts. He is very close, but not quite there.”
Listen Ned – take the friendly advice and act on it. “” is meaningless because you have not shown us what Mike is lacking or what is wrong with Mike’s post.
If you want Mike to move, you need to at least give a direction.
TJ believed the constitution meant “true” inventor once it began to be understood that there could be more than one inventor who [met] the requirements set by congress to obtain a patent pursuant to the 1790 act.
That seems like a bit of an inductive leap. We’re talking about a person who knew that the Constitution didn’t originally mean anything on that point, because it hadn’t been contemplated. That person was making a policy decision in his capacity as, essentially, the patent office.
None of us doubt that the result he settled on was permitted by the Constitution, but that certainly doesn’t mean that no other result would be permissible under the same Constitution.
Do you know what Thomas Jefferson meant by the phrase
“The True” inventor when he wrote that into the 1793 act?
Did you know that congress in passing the 1790 did not understand that there could be more than one inventor who met the requirements for obtaining a patent?
Did you know the 1790 did not provide for interferences, but nevertheless TJ invented the process?
Did you know that he and the board awarded the first interference to the “true” inventor rather than the first-to-file?
Did you know?
Listen, coach, you are not a moderator. I asked Mike to read my posts. He is very close, but not quite there.
Well for starters, TJ believed the constitution meant “true” inventor once it began to be understood that there could be more than one inventor who meant the requirements set by congress to obtain a patent pursuant to the 1790 act. He nevertheless invented the interference, gave the patent to the true inventor and not the first to file, then wrote this concept into the 1793 act.
See my posts above regard “What we know.”
Ned,
Your reply is nonresponsive.
Please precisely tell us explicitly what in Mike’s post is right, where Mike stops being right, and where you think Mike is speculating.
Trying to guess what you mean is too difficult, so reading your hand or what you post does not help understand your reply to Mike and his excellent post.
“applies for a patent under the laws and complies with all its requirements”
Let’s repeat that emphasied portion: under the laws.
If Congress, as per Pennock, which out and out gives that very same Congress the latitude to change the laws, as is their discretion, to require, as a condition, the First Inventor To File paradigm, then Pennock is still followed because Congress both writes the law and has the discretion to set those very parameters under discussion.
Pennock, in fact, is the case that makes the case for the constitutionality of FITF.
Constructive reduction to practice through patent filing is the correct method of retaining the inventor with his cival rights to patent granting. without this incentive to create is destroued and the system grinds to a hault as we are seeing now with arguments such as this. This is where negotiation with financiers and or established companies should require copereration instead of the present mentality theft by various methods.
Curious what you mean. Able to elaborate?