Most opposition to the America Invents Act, previously passed by the Senate and likely to come to a vote in the House in the coming weeks, has been from smaller companies and universities. Now, however, some opposition is being raised by members of Congress themselves.
Reps. Dana Rohrabacher (R-CA) and Marcy Kaptur (D-OH) have raised the question whether the change from first-to-invent to first-to-file is constitutional. They have even requested time to debate this issue on the House floor prior to a vote on the bill. Their request has been joined by 50 other members of Congress.
While I don’t believe they have a strong argument, they base their position on the Patent and Copyright Clause of the Constitution.
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.
They argue that the current system guarantees a patent to the first inventor (provided that the application meets the requirements for patentability). By changing to a first-to-file system, someone other than the first inventor may be granted a patent, contrary to the Patent and Copyright Clause.
The counter to this argument is that the change is actually a change to a first-inventor-to-file system. Someone cannot simply file a patent application on someone else’s invention. The new derivation proceedings are supposed to be a safe guard against this type of theft. The only way to get a patent is to be an inventor.
But, what does that mean? If you are not the first to conceive or reduce an invention to practice, are you actually an inventor? If two individuals independently conceive of an invention, is the one who conceived second but filed first an inventor? I guess these are the types of questions that Reps. Rohrabacher and Kaptur would like to debate. IPWatchdog has a discussion of some of the issues here.
Fee-Setting Authority Would Make PTO Too Powerful
One of the top mandates of Patent Reform has been to keep Congress’ hands off PTO users’ money. Theft of this money in the form of fee diversion has been an on-going problem for a number of years, stretching back through several administrations. The America Invents Act seeks to end this practice by permitting the PTO to set its own fees and keep all of the money it collects.
Some members of Congress, however, won’t let go of the PTO cash cow without a fight. Reps. Harold Rogers (R-KY) and Paul Ryan (R-WI) have sent a letter to Judiciary Committee Chairman Lamar Smith (R-TX). Rep. Rogers is the Chairman of the House Committee on Appropriations and Rep. Ryan is the Chairman of the House Committee on the Budget.
We strongly oppose this proposed shift of billions in discretionary funding and fee collections to mandatory spending. Putting PTO funding on auto-pilot is a move in exactly the wrong direction, given the new Republican majority’s commitment to restraining spending, improving accountability and transparency, and reducing the nation’s unparalleled deficits and debt. . . . It would be both irresponsible and unwise to allow the [USPTO] to operate solely under the authority of bureaucrats and White House political appointees — without being held accountable to the American public through their elected representatives in Congress.
They urge that the fee-setting provisions of the bill be deleted or modified before it comes to the floor for a vote.
Nowhere in their letter do they indicate how this provision would increase mandatory spending or increase the deficit or national debt. Reading between the lines, one can only surmise that they are referring to the loss of the ability to steal PTO funds in the future. The removal of this provision should doom the bill.
Is there enough opposition forming that the chances of passage are becoming slimmer? It’s hard to say. The more time that passes, however, the more opportunity the opposition has to organize. We shall see in the coming weeks whether the votes remain for passage or whether the bill will die.
HT: Patent Docs.