Tuesday, June 07, 2011

Did the Supreme Court Rule in Stanford v. Roche that First to File is Unconstitutional?

In a post titled Did the Supreme Court Rule First to File is Unconstitutional?, Gene Quinn speaks of

those who oppose patent reform are concocting one of the most ridiculous arguments I have ever seen to oppose first to file provisions. There are some, including at least one Member of Congress, that have started saying that the Supreme Court’s decision in Stanford v. Roche makes it clear that the first to file provisions of patent reform are unconstitutional.


So those misconstruing the case twist this beyond all reasonable logic to conclude: “patent rights have to belong to the inventor, so those who file first cannot receive the patent ahead of the person who invented first.”


Let me be as clear as possible: those saying the Supreme Court decision in Stanford v. Roche means that first to file provisions are unconstitutional are either lying, grossly demagoguing (as opposed to just plain old demagoguing) or just not well enough informed to take seriously.

Gene, in writing In the Stanford case a researcher assigned invention rights to Stanford, missed the whole point of the case, which was that the research did not assign his rights to Stanford. Gene is right in saying So the case said the inventor is the one who absent an agreement owns the rights.

Gene goes through 35 USC 102. He writes You see, presently 35 U.S.C. 102(a) says that a person is entitled to a patent (generally speaking) unless someone has previously invented. Reviewing the text below, there is no mention of "someone" inventing in 102(a). Gene mentions 102(f): If the law treats those who subsequently invent as individuals who are not inventors then 102(f) is superfluous. Hmmm.... Gene did not mention 35 USC 100(a) [one of LBE's favorites]:

(a) The term "invention" means invention or discovery.

But, one really won't find the answer to constitutionality in the statute. Article I Section 8 speaks of -- 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 -- The Constitution gives Congress the power to secure to authors and inventors exclusive rights to writings and discoveries for limited times.

The debate about first to file hinges on what is meant by the words "inventors" in the Constitution. In the Stanford case, the Supreme Court wrote -- Since 1790, the patent law has operated on the premise
that rights in an invention belong to the inventor. --, emphasizing that Stanford's interpretation of the Bayh-Dole Act could not possibly be correct. In the present patent reform bill, one wonders how Congress can be authorized to give an exclusive right to an inventor of an invention, if someone else made the discovery first? It depends on what one means by an inventor. One definition of invent: To produce or contrive (something previously unknown) by the use of ingenuity or imagination. Then throw in prior user rights, and things get really murky. How can a person be granted "exclusive" rights to a discovery, yet someone else have prior user rights? Prior user rights destroy the incentive for "inventors" to come forward and publicly disclose their invention.

Of the question: Did the Supreme Court Rule in Stanford v. Roche that First to File is Unconstitutional? The answer is no. Is there a basis that the rather fundamental approach taken by the Supreme Court in Stanford might be a problem for first to file and prior user rights? Yes.

The text of 35 USC 102:

A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or

(e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

(f) he did not himself invent the subject matter sought to be patented, or

(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

***UPDATE. from Patently-O. First-To-File and the Constitutional Argument within the comments:

Ned Heller said...
In awarding the Nobel prize, do you award it to the first to discover or to the first to publish?

IPBiz thinks back to the story of the buckyball, C60. The first to report C60, and to publish on C60 (the Exxon group in the Journal of Chemical Physics), did NOT get the Nobel Prize. The prize went to the first to propose the truncated icosahedron structure, which was not demonstrated for five more years.


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