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Is First-To-File Constitutional?

Is the first-to-file system (FTF) proposed under the new patent reform bill; also known as the America Invents Act (AIA) constitutional?  More specifically, does the FTF meet the objectives of Article 1, section 8, clause 8, which 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;

Under the FTF, a patent can be awarded to a “second inventor” so long as the second inventor independently created the invention and was the first to file for patent protection. However, the definition of an “inventor” according to Black’s Law Dictionary is a person who contrives some new thing. This would seem to negate the existence of a “second” inventor and why this new designation raises concerns. While the new rules appear to benefit inventors their effect can be problematic.

For example, in the current first-to-invent system (FTI), two individuals that independently develop the exact same device or method at exactly the same time are considered co-inventors with equal rights to exploit the invention. However, under FTF the first to submit a patent application would be the only inventor to receive rights even though they both invented the same thing at the same time. The ability to exclude a co-inventor from receiving rights under a patent, is contrary to the constitutional intent of  “securing for limited times to… inventors the exclusive right to their… discoveries.”

In another example, under FTI, an inventor who elects not to file a patent application is considered to have given the invention to the public thereby excluding the inventor and others from obtaining rights to the invention. However, under FTF another individual, presumably a “second inventor,” can file a patent application and obtain rights to that invention. In essence, allowing that individual to extract technology from the public domain. This frustrates the purpose of the patent system, which provides an exclusive right to an inventor in exchange for releasing their discoveries to the public at the end of the patent term.

In yet another example, the actual inventor may not have filed a patent application, but instead is using the device or method in preparing a commercial product. Under FTF, if another individual, presumably a second inventor, receives a patent on the inventor’s device or method, that individual may now claim infringement based on the inventor’s use.

The authors of H.R. 1249 and S. 23 provided for this circumstance by including a “commercial use” exception in AIA.

“A person shall be entitled to a defense…with respect to subject matter…that would otherwise infringe a claimed invention being asserted against the person if—
‘‘(1) such person…, commercially used the subject matter in theUnited States…; and
‘‘(2) such commercial use occurred at least 1 year before the earlier of either—
‘‘(A) the effective filing date of the claimed invention;
‘‘(B) the date on which the claimed invention was disclosed to the public…”

However, if the inventor cannot demonstrate commercial use at least one year prior to the filing date, he/she could be found to infringe the patent.

Some considerations that support FTF are compliance with patent systems in other countries and economic and administrative efficiency. Creating a unified global first to file system eliminates the discrepancies in establishing priority and provides rights in theUnited Statesthat are consistent with those obtained in other countries.

In addition, challenges to inventorship require costly and time consuming agency hearings or court adjudication’s. Under FTF, the filing date establishes inventorship thereby eliminating the need for these proceedings.

While these considerations have merit, concerns remain on how the new FTF will meet the objective of promoting the progress of science and the useful arts.

It seems clear from the wording of the United States Constitution that an individual who is not an inventor was never intended to reap the benefits of someone else’s innovations. Rewarding those who are not innovators does not promote scientific progress it suppresses it.The overreaching implication of AIA is that laws can be implemented to circumvent provisions of the United States Constitution when they are considered by some to be administratively or economically inconvenient. In this case, it is unsettling that the rights given to those who create the scientific foundation of our country will be ignored because it is too difficult or too burdensome for our legal system to provide the protection our Constitution specifically grants these individuals.

The new FTF not only violates the letter of the law it also circumvents the laws intent by redefining who qualifies as an inventor making this system unconstitutional.

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