March 26, 2013
Authored and Edited by Anthony J. Lombardi; Michele C. Bosch
Signed into law by the president in September 2011, central provisions of the America Invents Act (AIA) recently went into effect on March 16, 2013. Most notably, on that date, U.S. patent law underwent a historic change from a first-to-invent to a first inventor to file system, bringing U.S. patent law more in line with other patent systems around the globe. But did Congress have authority under the Constitution to make that change?
Under the AIA, the USPTO will deny an applicant a patent if its claimed invention was described in a patent or published patent application filed by another inventor before the effective filing date of the claimed invention. 35 U.S.C. § 102(a)(2). In general, this means a first person who originates an idea is denied a patent if a second person later originates that same idea, but files a patent application with the USPTO before the first person. Someone who derives an idea from another who originated it cannot properly receive a patent under the AIA, but the person who originates an idea and files for a patent first wins, and gets the patent.
The Constitution grants Congress the power to “promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries.” U.S. Constitution, Article I, Section 8, Clause 8. Commentators have zeroed in on the word “inventors” in this clause as central to a potential Constitutional debate. That debate reached a federal court last July in a complaint that sought to block implementation of the AIA. In MadStad Engineering, Inc. v. U.S. Patent & Trademark Office, MadStad Engineering, a company that makes adjustable windshields for motorcycles, argued that “[a]t the time of the Constitution's framing, the common understanding of an ‘inventor’ was the same as it is today: ‘one who produces something new; a devisor of something not known before.’” MadStad therefore concluded, “Congress is not authorized to award patents to the winners of the race to file at the PTO.” The MadStad court has not yet ruled.
Now that the AIA is fully in effect, it is likely only a matter of time before the USPTO denies a patent to an original inventor who files an application but was not the first to file. Such denials may prompt further challenges of the AIA that may ultimately reach the Supreme Court for the final word on the constitutionality of the first inventor-to-file system. Until that day, the AIA is the new law of the land.
Copyright © 2013 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. Additional disclaimer information.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Webinar
May 9, 2024
Webinar
At the PTAB Blog
USPTO Releases Notice of Proposed Rule Making Codifying Several Precedential Case Factors
April 25, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.