Monday, July 06, 2009

Martin in IDEA on "first to invent"/"first to file"

In a July 5 post titled Patent Americana , PatentHawk (aka Gary Odom) extracts material from a law review article by Michael Martin, sometimes a contributor to the blog.

The law review article, titled THE END OF THE FIRST-TO-INVENT RULE: A CONCISE HISTORY OF ITS ORIGIN, 49 IDEA 435 (2009), has a "conclusion" which states:

Along with a summary of the history, I have argued in this article that
the federalist structure of government in 1791—in particular, the dual sovereignty
of states and federal government—presented a practical obstacle that
prevented the patent board from adopting a first-to-file rule of priority. There
was no politically neutral way, and perhaps even no legitimate way, for the patent
board to say what filing system should control for purposes of determining
who was first to file.

In addition, this article has argued that natural law, and to a lesser extent
ideology, influenced the inventors and lawyers who were involved with drafting
and executing the first patent laws in the United States to adopt a first-to-invent
rule of priority. Although the view of natural law held by these inventors and
lawyers has been rejected as a valid theory of the intellectual property clause,
the interference proceedings, which are its legacy, are still with us, at least for

What exactly is the point here? "First to file" could not be adopted because of federalism AND the basis for "first to invent" has been rejected as a valid theory?
By 1791, the Constitution was adopted and Congress had already passed the first patent law, showing that the national government intended to occupy the field. What evidence the patent "office" chose to accept as to invention is an entirely different matter.

A commenter to the blog ("Bob") wrote the following:

For an insightful history into the background, formation and evolution of US and colonial patent law, I highly recommend the work of Edward Walterscheid, who wrote a series of articles on the subject, entitled "The Early Evolution of US Patent Law - Antecedents" in the Journal of the US Patent and TM Office Society" (Vols. 76-78, 1994-96). He also wrote a book on the subject, though I have not yet read the book.

Within the article in IDEA, Martin does not cite any papers by Walterscheid published in JPTOS. Martin does reference three works by Walterscheid, and, separately, criticizes Walterscheid in the article in IDEA.

A paper by Walterscheid is referenced within footnote 38 of the IDEA article:

Edgeberry v. Stephens, (1691) 2 Salk. 447 (K.B.), discussed in Edward C. Walterscheid, Priority of Invention: How the United States Came to Have a “First-to-Invent” Patent System, 23 AIPLA Q.J. 263, 266 (1995) [hereinafter Walterscheid, Priority of Invention]; see MACLEOD, supra note 21, at 18.

Walterscheid is obliquely criticized in footnote 42.

Walterscheid is also mentioned in footnote 52:

Letter from Thomas Jefferson to Jeudy de L’Hommande (August 9, 1787), discussed and quoted in EDWARD C. WALTERSCHEID, THE NATURE OF THE INTELLECTUAL PROPERTY

Footnote 68 distinguishes Walterscheid and states:

For this reason, Walterscheid asserts that the privileges conferred by the colonial governments were not considered true patents by the colonists, but rather private legislation that bore certain attributes of patents. See WALTERSCHEID, THE NATURE OF THE INTELLECTUAL PROPERTY CLAUSE, supra note 52, at 57. But this may be too fine a point, since the term patents was later used both by the states and the federal government despite the fact that nobody, not even Alexander Hamilton, was in favor of extending to state or federal government the powers traditionally associated with the royal prerogative. See THE FEDERALIST NO. 69
(Alexander Hamilton). If, however, Walterscheid is historically correct in his observation about the use of the term patents, it would be consistent with the influence of Country Party ideology described above.

Footnote 122 mentions Walterscheid:

PATENT LAW AND ADMINISTRATION, 1798–1836, at 85, 88–89 (Fred B. Rothman & Co.)

Walterscheid is mentioned in footnote 152:

Walterscheid reports the date as April 22. Id. at 188. But Fitch’s biography reports that the parties agreed to meet the following day since April 22 was Good Friday and Governor Randolph went to church. WESTCOTT, supra note 125, at 326–27. Since April 23 was indeed a Saturday under the Gregorian calendar followed in England and its colonies since 1752, it seems that Walterscheid and Federico may have gotten the date wrong.

At page 463, Martin argues against Walterscheid:

His observations are compact, containing many implications. Madison
acknowledges here that the English courts had not recognized a common law
right to patents of invention, or patents of importation for that matter, in the
same way that they had copyright.192 This distinction is important because of the
balanced construction of the intellectual property clause, whereby both copyrights
and patents were “secured” for authors and inventors, respectively.193 As
Madison wrote, with equal reason a common law right to patents would belong
to inventors as it had for authors.194

Citing this same passage, Walterscheid argues against commentators—
including me—who believe that Madison understood the term “securing” to
mean that inventors have basic preexisting rights.195 Walterscheid’s mistake is in substituting our modern concept of common law for the concept held by
Madison and his contemporaries.

Footnote 10 of the law review in IDEA alludes to Gary Boone:

See Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (twenty-eight years). One commentator suggests that the Hyatt v. Boone interference led to the appointment of an advisory commission whose 1992 recommendations included a proposal for the United States to adopt a first-to-file rule of priority. FRED WARSHOFSKY, THE PATENT WARS: THE BATTLE TO OWN THE WORLD’S TECHNOLOGY 60–61 (1994).

One recalls that Martin did research for Lemley's 2005 article in the Stanford Law Review, which deemed Gary Boone the inventor of the integrated circuit:

Did Mark Lemley name Gary Boone as the inventor of the integrated circuit?

Footnote 14 states:

A switch to the first-to-file rule of priority would, practically speaking, force interference specialists to find other work. What economic effect a switch might have on patent lawyers in general is more difficult to say. See, e.g., Gholz, supra note 5, at 892 n.1 Aside from the historical argument presented in this article, there is a public choice theory explanation for why the first-to-invent rule of priority has withstood repeated calls for amendment. Interference
specialists are both the group most likely to be hurt by a switch to the first-to-file system and the group most likely to be consulted about the probable consequences of a switch. In fact, Mr. Gholz was recently begging Congress to consult him on the previsions of the proposed legislation before the Senate in 2009. See Charles Gholz, Gholz: Linking Post-Grant Review with Interference Procedure,
post-grant-review-with-interference-procedure.html (“In sum, I'd like to express my
hope that the drafters of the two bills will consult with experts on interference law and practice, both in the PTO and in the private bar, before passing either version of the bill.”). This kind of public choice argument, of course, is not mutually exclusive with the arguments I make in this article.

Martin entirely neglects to point out that Gholz plans for interference attorneys to be the attorneys of choice for the oppositions (post-grant reviews) ALSO to be created in the patent reform bill.

**Mr. Martin's bio is given within IDEA:

University of California, San Diego (B.S., Physics); University of Chicago (M.S., Physical Chemistry); Stanford Law School (J.D.). Mr. Martin is a Senior Attorney at the San Francisco office of Drinker Biddle & Reath LLP.


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