Constitutionality of First-to-File Challenged

Madstad Engineering and Mark Stadnyk have sued the U.S. Patent and Trademark Office alleging that the change of the US patent system from a first-to-invent to a first-to-file regime violates the US Constitution.  A copy of the complaint is available here.

The suit was filed in July in US District Court in Tampa, Florida, and alleges that the change violates the Constitution’s Intellectual Property Clause that awards “Inventors” the exclusive right to their discoveries.  Congress is not authorized to award patents to anyone but the true inventor.  The AIA deletes the requirement of the current Patent Act that prohibits an award of a patent to an inventor who did not actually invent the subject matter sought to be patented.

The AIA seeks to redefine the term “inventor” not as the person who makes the first discovery, but as the person who is officially designated as such by the PTO based on fulfilling procedural requirements of being the first to file a patent application at the PTO.

A second “inventor’ is an oxymoron; that person merely rediscovers that which was already discovered by the first inventor.

The complaint continues by arguing that the change is bad policy as it will discourage innovation because small inventors and start-ups lack the resources to compete with well-heeled large corporations in the race to the Patent Office.

Next, the complaint alleges the injury to the plaintiffs as added costs in implementing IT and other security features to prevent inventions and ideas from being stolen by others who would then file patent applications for them.  The plaintiffs will need to expend significant additional resources to expedite development of new inventions and early filing of patent applications for new inventions.

The plaintiffs request the court to enter a preliminary injunction to prevent the law from going into effect.

The plaintiffs are represented by prominent Washington constitutional law attorney Jonathan Massey.

Last week, the PTO filed a response to the initial complaint.  The PTO argued that the plaintiffs failed to show that they would sufferent irreparable and imminent harm, especially since the first-to-file procedures do not go into effect until March.  The plaintiffs have not provided details on lost opportunities or the harm that would result from the new system.  Congress has chosen this system as the best choice in its judgment.

Analysis

While the AIA was pending in Congress, there were some questions of the constitutionality of this provision.  Some members of Congress requested time to debate the issue.  This was, of course, not done because proponents wanted to get the bill through Congress without proper debate and review.  Unfortunately, this is a common practice with modern legislation.

That being said, it appears highly unlikely that the plaintiffs will prevail in this case.  The courts, including especially the Supreme Court, have not clearly held that only the first person to conceive of an invention is the inventor.  There are some questions as to what the Constitution means by “Inventor.”  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?

The plaintiffs’ policy arguments will be unavailing.  There are many critics of the AIA, and especially of the first-to-file change.  The Constitution does not prevent Congress from enacting bad law; it only prevents Congress from enacting laws that are contrary to the provisions recited therein.

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3 Responses to “Constitutionality of First-to-File Challenged”

  1. Global Week in Review 5 Sept 2012 from IP Think Tank Says:

    [...] Madstad Engineering – Madstad and Mark Stadnyk sue USPTO alleging move to first-to-file regime violates Constitution (Inventive Step) [...]

  2. Casey August Says:

    I trust the originalists on the Supreme Court will have no problem in equating “inventor” to the one who FIRST invents.

    If, of course, this case gets there.

  3. Global Week in Review 5 Sept 2012 from IP Think Tank | Duncan Bucknell Says:

    […] Madstad Engineering – Madstad and Mark Stadnyk sue USPTO alleging move to first-to-file regime violates Constitution (Inventive Step) […]

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