Is the First-Inventor-to-File System Constitutional?

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.