Monday, June 20, 2011

Burdick slams Quinn on "first to file"

In a comment to a post by Quinn on "first to file," Bruce Burdick wrote:

The Act of 1790 was a registration system with only a CONDITIONAL first to file award of patent. The patent registered could be invalidated under Section 5 of that act by showing that the patentee was not the true inventor. Then, the true inventor could file and obtain the patent under Section 1 of the Act. In other words, it actually was a first-to-invent system.

It is incredibly disingenuous to use that [sic] to argue for an UNCONDITIONAL first-to-file system such as in S23 or HR1249 where the patent can never be invalidated if the first to file is shown not to be the first in fact.

There is a link mentioned:

Quinn in turn responded:


Please provide a citation for assertion that Thomas Jefferson would have allowed a district court judge to invalidate a patent and then subsequently award the patent to another.

Why are you are grasping at straws rather than admitting you are incorrect?


Of the change in US patent system around 1836, recall text from a previous IPBiz post:

Senator Ruggles, who received what would be the first NUMBERED patent:

That's because the government issued 9,957 patents before starting a numbering system July 13, 1836. On that occasion, U.S. Patent No. 1 went to John Ruggles of Maine for a traction wheel for steam locomotives. Ruggles happened to be chairman of the Senate Committee on Patents. Two years later, the Senate investigated him for alleged corruption regarding a different patent case. He was exonerated.

From a book by Rockman on the pre-1836 patent law:

the Patent Office was obligated to issue a patent if technical and filing requirements were met. (...) After the patent issued it was up to the courts to decide what exclusive rights, if any, existed

Craig Nard wrote:

The 1793 Act’s removal of the examination proceeding made it easier to
obtain patents. The 1793 Act shifted patent protection analyses from an ex
ante gatekeeper role performed by the examination to an ex post proceeding in
the courts. This institutional change did not abandon the screening of
enforceable patents, but merely shifted an important part of the determination
of what was an enforceable patent from the point of issuance to a judicial
enforcement proceeding. Doing so made patents easier to obtain, but
paradoxically made the enforcement of patent rights less certain, as a
registration system provided little confidence in the patent’s validity.


The 1793 Act75 remained intact for forty-three years, but during that time it
came to be widely recognized that its provisions led to “unrestrained and
promiscuous grants of patent privileges;”76 or, more generously, patents were
issued that “would not be capable of sustaining a just claim for the exclusive
privileges acquired.”77


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