Wednesday, June 15, 2011

First to file: back to the US past?

From an editorial in the Seattle PI on first to file:

The provision returns us, in some respect, to a system that our founders created and used: first inventor to register. Former Attorney General Michael Mukasey recently described the proposal as "constitutional and wise."

Separately, a comment to Politico:


Furthermore, unlike their counterparts elsewhere, U.S.inventors can’t ask for “supplemental” reviews that let them raise questions about their own projects and get formal opinions from the Patent and Trademark Office.

U.S. patentees, as well as third parties, can, under CURRENT patent law, seek review of an issued patent via re-examination, whether ex parte or inter partes. Separately, under rule 99, third parties can submit prior art to the US Patent Office.


when—if ever—they’ll have exclusive rights to their inventions that patents are supposed to provide. While uncertainty isn’t always a major obstacle for big business, it can wreak havoc on small enterprises, which lack the resources for protracted court battles over who invented something.

the proposed HR 1249 has a section on prior user rights which allows a person who operated secretly outside the patent system to be immunized from an infringement suit brought by a person who operated within the patent system and disclosed publicly the patentee's invention for all to see. This aspect of HR 1249 is a return to secret guild practices, which were rejected in the patent statute in Venice more than 500 years ago. Under HR 1249 a patentee could never be sure he could enforce his patent, a clear de-incentive to public disclosure and to the whole purpose of the patent system, which allows technology progress by allowing all to see the work of the inventor.


**UPDATE. Of the comment below, a comment within Quinn's post criticized Quinn's analysis of the initial patent act (1790).
Separately, a letter circulated by Dale Carlson on 17 June 2011 includes the following:

Thus the Patent Act of 1790 authorized the grant of a patent only to a person who has
“invented or discovered any useful art . . . not before known or used.” See Patent Act of
1790, § 1, 1 Stat. at 109-110. The Patent Act of 1790 further provided for termination of
a patent “if it shall appear that the patentee was not the first and true inventor.” See Patent
Act of 1790, § 6, 1 Stat. at 111. This uniquely American first-to-invent requirement was
readopted in all patent statutes enacted by successive Congresses in 1793, 1836, 1870 and


Justice Joseph
Story, recognized by patent scholars today as one of the founders of American patent law,
wrote that “No person is entitled to a patent under the act of congress unless he has
invented some new and useful art, machine, manufacture, or composition of matter, not
known or used before.” Bedford v. Hunt, 3 F. Cas. 37, 37 (C.C.D. Mass. 1817) (No.

**Between 1793 and 1836, there were no patent "examiners" and the job of examination
was done by the courts. That the analysis of patentability was done later in time does not
mean the US was a "first to file" jurisdiction in that time period.


Blogger New said...

In this week's blog posts, patent expert Gene Quinn makes a convincing constitutional argument for first-to-file. As every first-year law student should know, courts have consistently ruled that IP protection is intended mainly to be not a provision granting rights to innovators, but rather part of a social contract in which innovators receive certain benefits as long as they contribute their work to the public. However, both Quinn and I would agree with you that prior user rights are problematic, at best, and possibly unconstitutional.

8:57 PM  

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