First U.S. Patent Laws Were First to File, Not First to Invent
Gene Quinn
June 19, 2011, 03:05 PM 47
Thomas Jefferson, author of the Patent Act of 1793
The United States Constitution is a relatively short document, but one that has provided guiding principles for over 220 years. At a time when the nation was struggling to exist under the Articles of Confederation our Founding Fathers met in Philadelphia beginning on May 14, 1787. The outcome of this convention was the U.S. Constitution, which was signed by 38 of the 41 delegates present on September 17, 1787. New Hampshire was the ninth State to ratify the Constitution, and did so on June 21, 1788, causing the Constitution to become the supreme law of the land.
Article I, Section 8 of the U.S. Constitution granted Congress the power to grant patents and copyrights for limited times in order to promote the progress of science and the useful arts. As James Madison stated in Federalist Paper No. 43, the usefulness of the Congresses power to award both patents and copyrights "will scarcely be questioned." Madison, Debates in the Federal Convention of 1787, at 512-13 (Hunt and Scott ed. 1920). Indeed, the new Congress wasted little time in exercising this power to promote the progress. Clearly demonstrating just how important the Founding Fathers perceived a patent system to be, the third Act of Congress was the Nation's first Patent Act; the Patent Act of 1790.
Section 1 of the Patent Act of 1790 explained that the party to petition for a patent would be awarded a patent in the event that it was deemed a sufficiently important discovery or invention:
Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That upon the petition of any person or persons to the Secretary of State, the Secretary for the department of war, and the Attorney General of the United States, setting forth, that he, she, or they, hath or have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used, and praying that a patent may be granted therefor, it shall and may be lawful to and for the Secretary of State, the Secretary for the department of war, and the Attorney General, or any two of them, if they shall deem the invention or discovery sufficiently useful and important…
Patent Act of 1790, Ch. 7, 1 Stat. 109-112 (April 10, 1790).
The Patent Act of 1790 did not contemplate the possibility that more than one inventor or inventive entity would apply for a patent on the same invention. Notwithstanding, the Patent Act of 1790 did contemplate the possibility that the applicant for patent would not be the first inventor. In this regard a defense to patent infringement was included in the Patent Act of 1790 that would strip the individual later proved not to be the first inventor of the patent. This provision, in relevant part, stated:
[I]if it shall appear that the patentee was not the first and true inventor or discoverer, judgment shall be rendered by such court for the repeal of such patent or patents…
Excerpt of Section 5 of the Patent Act of 1790, Ch. 7, 1 Stat. 109-112 (April 10, 1790).
Under the First Patent Act, the Patent Act of 1790, the United States had a registration system where the first to file was awarded the patent. If it could later be determined that the first to file was not the "first and true inventor" the patent was repealed, but not granted to the first and true inventor. Thus, Section 5 of the Patent Act of 1790 is not related to the first to invent provisions of the current 35 U.S.C. 102(g), but rather are akin to the provisions of the current 35 U.S.C. 102(a), where an inventor is not entitled to a patent if someone else previously invented. This, however, does not change the fact that under the Patent Act of 1790 the system was, in fact, a first to file system.
The fact that the U.S. patent system was at first a first to file system is further bolstered by review of subsequent amendments to the Patent Act, including the first amendment to the Patent Act, which occurred with the Patent Act of 1793. The Patent Act of 1793 was authored by none other than Thomas Jefferson (then Secretary of State). Jefferson, along with Secretary of War Henry Knox, and Attorney General Edmund Randolph, made up the first patent examination panel. Jefferson recognized the need for more specific rules associated with granting patents, hence the amendment to the Patent Act in 1793.
For the first time in the Patent Act of 1793 it was required of the applicant to affirm that they believed they were the first and true inventor. In this regard, Section 3 of the Patent Act of 1793 stated, in relevant part:
That every inventor, before he can receive a patent, shall swear or affirm that he does verily believe, that he is the true inventor or discoverer…
Patent Act of 1793, Ch. 11, 1 Stat. 318-323 (February 21, 1793).
The concept of "interfering applications" first injects itself into U.S. patent law in Section 9 of the Patent Act of 1793, which stated:
And be it further enacted, That in case of interfering applications, the same shall be submitted to the arbitration of three persons, one of whom shall be chosen by each of the applicants, and the third person shall be appointed by the Secretary of State; and the decision or award of such arbitrators, delivered to the Secretary of State, in writing and subscribed by them, or any two of them, shall be final, as far as respects the granting of the patent: And if either of the applicants shall refuse or fail to chuse an arbitrator, the patent shall issue to the opposite party. And where there shall be more than two interfering applications, and the parties applying shall not all unite in appointing three arbitrators, it shall be in the power of the Secretary of State to appoint three arbitrators for the purpose.
In the event of interfering applications the panel of arbitrators would determine who among the applicants would be entitled to receive the patent. Still there was no statement within the Patent Act of 1793 requiring that the patent be awarded to the first and true inventor. The ultimate reality under the Patent Act of 1793 was that that the panel of arbitrators could choose to award the patent to the individual or inventive entity that was not the first to invent. Simply stated, there was no legal requirement that the first to invent be awarded the patent. Without such requirement, which is an essential feature of any first to file system, there is no honest way to characterize the Patent Act of 1793 as embracing a first to invent system. Thus, even after the Patent Act of 1793 passed the United States was still not a first to invent system.
In 1836 the U.S. patent laws were again amended, this time to directly and specifically take into consideration the possibility that more than one inventor or inventive entity might apply for a patent on the same invention and that the patent should go to the first and true inventor. At this time the patent laws had the following provision added, which represents the relevant portion of Section 8 of the Patent Act of 1836:
And be it further enacted, That whenever an application shall be made for a patent which, in the opinion of the Commissioner, would interfere with any other patent for which an application may be pending, or with any unexpired patent which shall have been granted, it shall be the duty of the Commissioner to give notice thereof to such applicants, or patentees, as the case may be; and if either shall be dissatisfied with the decision of the Commissioner on the question of priority of right or invention, on a hearing thereof, he may appeal from such decision, on the like terms and conditions as are provided in the preceding section of this act; and the like proceedings shall be had, to determine which or whether either of the applicants is entitled to receive a patent as prayed for.
Patent Act of 1836, Ch. 357, 5 Stat. 117 (July 4, 1836).
The Patent Act of 1836 is acknowledged by some as having been the beginning of the first beginning of a first to invent system, although the directness of the language utilized still seems wanting. The hallmark of a first to invent system must be that the first inventor be awarded a patent instead of the first to file. Section 8 of the Patent Act of 1836 does not mandate that the first inventor prevail, merely that a decision on priority of right or invention be made, which could be appealed.
The Patent Act of 1870 is the first iteration of the U.S. patent laws that directly and unambiguously represents a first to file system. Section 42 of the Patent Act of 1870 says, in relevant part:
And be it further enacted, That whenever an application is made for a patent which, in the opinion of the commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the primary examiner to proceed to determine the question of priority of invention. And the commissioner may issue a patent to the party who shall be adjudged the prior inventor…
Patent Act of 1870, Ch. 230, 16 Stat. 198-217 (July 8, 1870)(emphasis added). Indeed, the passage of the Patent Act of 1870 marks the first time the patent laws of the United States direct that a patent "may" be awarded to the prior inventor instead of the inventor who was first to file. It is noteworthy that the Act uses permissive language rather than mandatory language. Thus, it still was envisioned by the Congress in 1870 that the first and true inventor may not be the appropriate recipient of a U.S. patent in a dispute with one who was the first to file. The patent laws in effect today continue to perpetuate the permissive nature of the patent right being granted to the first and true inventor, still awarding the patent to the first to file instead of the first to invent in many cases.
Before proceeding to the Patent Act of 1939, it is worth noting that the earliest reference to an interference proceeding in case law dates back to 1873, which is some three years after passage of the Patent Act of 1870. This particular interference proceeding was discussed in Pennsylvania Diamond-Drill Co. v. Simpson, 29 F. 288 (W.D. PA. 1886). In this case the inventor obtained U.S. Patent No. 145,775, dated December 23, 1873. Thus, the judicial record is devoid of any reference to an interference proceeding during the first 82+ years of U.S. patent law history.
In 1939 the Patent Act was again amended. In the Patent Act of 1939 Section 1 stated:
Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct a board of three examiners of interferences to proceed to determine the question of priority of invention. And the Commissioner may issue a patent to the party who is adjudged the prior inventor.
Patent Act of 1939, Ch. 450, 53 Stat, 1212 (August 5, 1939). Once again we see that the awarding of the patent to the first inventor is conditional, not mandatory.
While there are many that will attempt to argue that a first to file system is unconstitutional, even a casual reading of the history of U.S. patent laws shows that argument to be absurd. How can anyone argue that a system initiated by the first Patent Act, written and enacted by our Founding Fathers, was unconstitutional? Would Thomas Jefferson tolerated an unconstitutional patent system that he was charged with implementing in his role as Secretary of State? If he did believe a first to file system to be unconstitutional then why didn't he include first to invent provisions in the Patent Act of 1793, which he wrote?
The reality is that from 1790 to 1836 patents were given to the first to file. Between 1836 and 1870 a panel of arbitrators would decide disputes between conflicting patents and patent applications, but were not required to grant the patent to the first and true inventor. Moreover, even with the passage of the Patent Act of 1870, the first act that specifically and unambiguously gives the Patent Office the authority to grant a patent to one who is not the first to file, the power to grant to the first to invent is conditional, not mandatory. This permissive language persists through the Patent Act of 1939, and ultimately into the regime we have today, which was ushered in by the 1952 Patent Act.
When looking at the history of patent laws in the United States what can be said with exactitude is that U.S. patent laws have never mandated that the first and true inventor receive a patent instead of one who is the first to file. There cannot be any disagreement by objective persons as to the reality that there was no possibility to grant a patent to a subsequent filer who might have been the first and true inventor under either the Patent Act of 1790 or the Patent Act of 1793. It is also overwhelmingly clear that even when the concept of awarding a patent to the first and true inventor specifically and unambiguously arises for the first time in the Patent Act of 1870 it is permissive and not mandatory.
Given the reality that from its inception U.S. patent laws either mandated or tolerated a patent issuing to the first to file instead of the first and true inventor how can anyone with any degree of intellectual honesty even suggest that first to file provisions are unconstitutional? Those making such an argument are obviously not students of history.
Gene Quinn Gene Quinn is a patent attorney and a leading commentator on patent law and innovation policy. Mr. Quinn has twice been named one of the top 50 most influential people [...see more]
47 comments so far.
Bruce Burdick
To O.P. Friedman
It's a first to file system we have as of March 16, 2013, with a few minor exceptions. With the help of Gene Quinn and paid assassins funded by big business, the first to invent patent system we had for 221 years was killed in order to "harmonize" (degrade) it with the inferior patent systems in the rest of the world. This was further assisted by David "IBM" Kappos who left his post as patent manager for IBM to head the US Patent & TM Office during the key time to help ramrod this destruction and see it implemented, and then immediately bailed ship to let others suffer the fallout. Kappos was nominated, not surprisingly, for that position by Sen. Patrick "IBM" Leahy from Vermont [will it surprise you to learn IBM is one of Vermont's top private employers? – It was the top until it outsourced overseas several thousand Vermont jobs], who also sponsored the falsely named "America Invents Act" that was labeled by one US Senator as just a big corporation giveaway. As a result of Gene's effort and IBM's proxies' legislative and administrative effort TRUE inventors like you are screwed so big companies like IBM can better steal your inventions, send jobs overseas, and stay big and keep you small and the American jobs you might create can stay in China. Let Gene know how much you appreciate his help in seeing that you got screwed over to help IBM and China. You are right it's a tragedy.
O.P Friedman
And I'm sure I may be misunderstanding (3 hours of sleep only)
So therefore, if it's first to file then I'm just too late.
Either way, this is a tragedy!
Gene:
I feel a bit helpless right now. And before I communicate what I have to say, I have proof of all statements and am more than willing to scan and send proof to prove my points.
Your article dated the 2nd of July regarding the patent filed on May 23rd by Microsoft/Samsung? Is most disturbing. I am an IT Person who's been working on this same technology since the beginning of the year and have the paper trail to show.
I am frustrated by this law because I would have filed in April of this year had it not involved so much research. Yet to turn around and see this article after having known I was ready to file this week; I feel so… I guess you can imagine. And to think I was simply showing due diligence and running a check again, only to have this pop up – is just heart-breaking! I feel we've been robbed and will continue to be. This seems to be a deterrent to inventors like myself. Of course I have 7 more I'm working on but I'm already getting a mere 3 hours of sleep per night. What to do? Any suggestions? Anyone?
This is research in parts I've worked on for years, yet due to my lack of ability to find or put together a team for lack of knowledge on how to do so, as well as lack of funding; I find myself right back where I started. We are being robbed as most know original inventors are usually poor! We have the ability to innovate, yet lack the resources to do so!
The sad part is that this patent seems to have incorporated all aspects of my invention. And now to learn it's first to invent, I feel I have no chance against such major companies.
THIS IS COMPLETELY WRONG!
Looking forward to hearing from you. Wish I had found your website sooner. Thanks for the information.
Dale B. Halling
Patrick,
I guess I misunderstood the point of your previous comment – sorry about that.
Patrick Hanly
Dale,
You wrote: "By your a Gene's logic" etc.
1. Did you mean "By your and Gene's logic" ?
2. If so, exactly what part of the very significant difference between my and Gene's view of the situation do you not understand?
3. I am a proponent of the US system (established in 1790) that awards patent disputes to the first inventor. I am also a proponent of the US system that typically awards patents to the first person to file, because filing a patent typically shows an aggressive reduction to practice, and a commitment to bring a product to market for the benefit of other citizens. This is part of the social contract between inventor and society, which allows inventors a temporary monopoly in exchange for actually bringing a product to market (rather than keeping it secret and not allowing anyone else to produce it).
Given #3, exactly how do you understand me to be a proponent of abolishing laws of theft? Upon what logical basis is your metaphor founded?
In general, if you are going to use sarcasm for an argument in the context of somewhat sophisticated legal issues, it's a good idea to understand others' reasoning and arguments before voicing your own. And to do a grammar check as well.
By your a Gene's logic the U.S. does not have law against theft. The practical reality is that very few thieves are ever caught and prosecuted. As a result, we should get rid of rules against theft – that would be the practical thing to do.
The terms "first to file" and "first to invent" are not legal definitions. They are short, convenient phrases commonly used to describe different ways of deciding who wins an interference action between two competing parties both claiming rights to the same patent.
"First to file" refers to a European patent system in which the interference action is typically won by the first person to have filed the patent application.
"First to invent" refers to an American system established in 1790, in which the interference action is typically won by the first person to have invented the invention. (I believe this makes it a Constitutional right.)
It is obvious that even under the American system, the pragmatic reality is that the first person to file a patent will typically get awarded the patent. That's because A) the USPTO is not going to know that someone has invented something unless s/he applies for a patent, and B) very few patents end up in interference action. To think that there could possibly be a system under which the USPTO only awarded patents to those who invented first, without those inventors ever formally registering their inventions with the USPTO through patent applications, is simply absurd. Thus, pretending that the US was a "first to file" country as per the Constitution is likewise absurd.
Were the founding fathers to observe what Gene Quinn has written, they would have to steel themselves with the words of Kipling:
If you can bear to hear the truth you've spoken
Twisted by knaves to make a trap for fools
Judging by the first few comments written here, it sounds like Gene Quinn has certainly trapped his share of fools already.
Bruce-
All you have proven is that you are unable to accept being wrong and that you really do not understand patent law, how to read a statute and how to interpret case law.
Glad to hear you are out of the discussion. With your absence the level of debate will rise substantially.
-Gene
Gene, you know I don't agree with you and you are lying to say otherwise. It is a fool's game distort by taking an item out of context for purposes of distorting an opponent's argument. It opens you to a trap well laid, but you did it, fell prey to the trap, and now you will suffer the consequences.
The language by which I paraphrased was deliberately missing a key requirement for a patent, and unless you are a complete fool, you know it Here it is. The petitioner (filer or applicant) had to state in the petition that the petitioner was the first and true inventor (specific language that the invention "was not before known or used"), not the first inventor to file, the first and true inventor. Section 5 allowed repeal of the patent if that was found to be a false statement. Penalites were imposed if it was not only false but fraudulent. On this there is no rational dispute, as it is express language of the statue. I left that "not before known or used" out of my paraphrase to trap you if you quoted it as proof that the system was a first to file. You "fell into the burning ring of fire and went down, down, down and the flames got higher, the ring of fire" [to quote one Johnny Cash] How does that square with it being a first to file.? It doesn't. Gotcha!!
Since you are impervious to reason and logic, I will note the truth for your readers.
The 1790 Act required that the applicant be the "first and true inventor" and that the subject of the invention was "not before known or used." These requirements were replaced in the 1793 Act by requiremeents that the applicant be "the true inventor" and that the invention had not been "known or used before the application." The Act of 1800 amended the second of these requirements to those inventions "never before used in this or any foreign country". In Bedford v. Hunt 3 F. Cas. 37 (C.C. D. Mass, 1817) it was held that as between two parties claiming to be the first to invent a particular invention, the patent should be granted to the first to reduce it to practie. Ooops, there is the citation for which you asked. There are probably others.
So, I give you the cite you ask for but you ignore for the 4th or 5th time my challenge for you to produce a citation that Section 1 and 2 cannot apply to a second to file but first to invent. That is, to show, that the requirement that the petition state that the petition is for an invention that had not been "known or used before". Indeed the first and true inventor (first to invent) is the only one who can accurately make that statement and the only one to whom Section 1's express language actually applies. You ignore it because you cannot. To quote your sorry self, that is unacceptable and not worthy of your blog. You should ban yourself from your own blog, you poser.
Having made the statement that the invention had not been "known or used before", the committee of three accepted it unless they had proof to the contrary and then made cursory examination as whether the invention was "useful and important" (such as an improved method of making potash, a useful and important product of the period). Having done that and at least 2 of the 3 having satisfied themselves, the AG then prepared the letters patent and sent it to the President to sign. Once the seal was applied by the President and the President signed, and it was returned to the Sec of State for issuance, we move on to Section 2. Now being ready for issuance, the Sec. of State required the inventor to submit a detailed specification and, if applicable, a model and once received, the patent grant was issued to the inventor and immediately enforceable by suit in District Court. A defendant then could get the patent repealed (i.e. invalidated) by showing the petition was false, namely that the petitioner was not the first and true inventor. That is what Section 5 did. The defendant would be more foolish than you not to immediately apply for his own patent under Section 1 so that it could be issued under Section 2. So the battle would be between two parties both claiming to be the first and true inventor. The case I cited shows that was resolved by awarding to the first to reduce to practice (implying a double requirement first "known" and second "used".) This is plain as day to anyone not impervious to logic and reason, but then you are not such a person.
Your doggedness in the fact of clear refutation makes me wonder if you forced to stick to your BS because you are being paid to publish in support of first to file, and if so, by whom. Pray tell us! Of course you will deny, but then you have lost your credibility so your denials do not mean any more than your denials that the 1790 Act was a first to invent act.
I am outta this discussion. I have so thoroughly proven you wrong with logic and reason that there is no reason to beat your dead horse carcass anymore on this bogus post of your falsely claiming the 1790 Act was FTF.
Bruce-I was just commenting on the constitutionality argument. I think the argument that first inventor to file would be unconstitutional is weak at best. There are even better and more current examples of situations where the first to invent did not get the patent. It just shows that the basic congressional authority to legislate first inventor to file is probably there. The policy arguments are a whole different story. There was a great set of articles on the Patent docs blog which analyzed the provisions of this thing and showed how the system is being changed from the inventor focused system we have traditionally had, to a European style corporate ownership based system. Of course we know how European style systems typically fare. This thing is probably going to be a disaster in practice.
Thanks for FINALLY agreeing with me! You say: "Section 1 of the act gives the President the authority to grant a patent to any applicant for an invention certified to be useful and important…"
EXACTLY. And because the patent is granted to ANY applicant the system was a first to file system.
You still refuse to acknowledge that there is no authority in the Act to repeal the patent to one person and issue it to another. You also ignore the reality that it wasn't until 1870 that the statute authorized the first inventor who was second to file to POSSIBLY (i.e. "may") receive the patent.
Still waiting for a single example that what you say happened actually happened. I know I will be waiting for a very long time since we both know you are wrong.
In post 35 the next to last sentence was garbled and should have read:
On the contrary, Section 5 of the 1790 Act mandates repeal of the patent to the first to file in that situation and Section1 and 2 authorize the grant to the first to invent of a patent, leaving the first to invent with the only patent.
Also, I see on rereading post 31 it was Dale not Mark that observed that Gene is impervious to logic and reason.
Mark, are you serious?
You said :
"Certainly a patent could have issued in 1793 to the second inventor if the first never asserted his rights. This alone shows congress was understood by the founders themselves to have had such authority. Therefore congress has the authority to implement a first inventor to file system. Pretty solid argument."
Do you realize you're saying that because in 1790 a patent could issue to a 2nd inventor if the 1st inventor NEVER ASSERTED his rights, that shows Congress was understood by the founder themselves to have authority to issue a patent to the 2nd inventor if the 1st inventor ASSERTED his rights?
You do understand, don't you, that in first to file, as proposed in S23 and HR1249, a first inventor to invent who ASSERTS his rights by filing second and can prove he is the first to invent is absolutely cut off without recourse, leaving the first to file with the patent, and that was not true under the 1790 Act. On the contrary, Section 5 of the 1790 Act mandates repeal of the patent to the first to file in that situation and Section1 and 2 authorize the grant to the of a patent first to invent, leaving the first to invent with the only patent.
How is that a solid argument for 1st to file? Don't get bamboozled by Gene's WEAK arguments.
Gene, I'm back!
Dale is right in post 31, you are impervious to logic and reason. Ron Riley told me you were that way, and until now I doubted it, but no longer. You continue in post 28 with "Let me say this as clearly as I can… you do not have a first to invent system if the first to invent does not receive the patent in stead of the first to file. The Patent Act of 1790 does not give anyone the authority to take the patent away from the first to file and give it to the first to invent. " That is absolute BS, since the authority does not need to reside in a single person, the District Judge, as even in 1790, there were other people in the Government. One person can give a patent and another take a patent away (repeal it), as was obviously the system in 1790. Indeed the patent a District Judge repeals under Section 5 is one given by the President under Section 1, not by the District Judge. That is because Section 5 gives the District Judge the authority to repeal patents, and Section 1 of the act gives the President the authority to grant a patent to any applicant for an invention certified to be useful and important by 2 of the 3 (AG, SoW, SoS). That is the authority. It is express authority. I have given it to you before, so why do you insist upon ignoring it and still asking for it? I suppose it needs to be repeated over and over so you will quit asking over and over. The President signs and seals grants under Section 1 and they are issued by the Sec. of State under Section 2 upon deposit of specification and model. Under Section 5, the District Judge repeals patents. This separation makes logical and natural sense, as the challenger may not be the true and original inventor, and, even if the challenger is the true and original inventor, he may not have applied for a patent or even want one. It would be strange law indeed where the District Judge "orders" the President to issue a patent for which no petition (application) was filed. So, also for at least the 3rd time, I challenge you to cite to any authority saying that Section 1 of the act does not apply to a second to file but true and original inventor. Absent some exception, which you repeatedly fail to provide (face it Gene, there is no such exception), it must apply equally to the true and original inventor. You fail repeatedly to cite any such authority, and yet, impervious to logic and reason, ignore the authority cited to you and just repeat the false assertion that there was no authority to grant a patent to the true and original inventor if he was 2nd to file, ignoring the fact that Sections 1 & 2 are that authority, and the true and original inventor's patent is granted in the same way as the repealed patent was, namely under Sections 1 & 2. And you must admit, a later petitioning (second to file), true and original inventor's patent, thus issued, cannot be repealed under Section 5 since, as posited, he is the proven true and original inventor. Hanging tough and abusive, trying to defend your faulty position, you distort the issue to "show me where the District Judge does both", even though every one of your readers will know it doesn't have to be the same person granting as repealing. Unless you can show some authority to deny the second patent, given that patents issued in a matter of days (15 days are expressly stated in the statue), the true and original (first to invent) inventor's patent (if a patent was desired by the first to invent) would surely be issued already by the time the first filer's patent was repealed and so the first to invent patent would be the last patent standing for that invention. That is a first-to-invent system, and there is no need for the Judge to "give it" to someone who already has it. Also, the Judge "repeals", not "takes", so once repealed the repealed patent simply ceases to exist. That does not exclude the existence of another patent to the same invention. A battle of two patents is the logical and natural expectation in a registration system, so it is YOU who need to supply the proof, namely to prove that a battle of patents cannot occur under the 1790 Act. You can't and won't because you are, as Mark put it so well, impervious to reason and logic.
Mark 1, Dale 1 – Gene 0.
Gene-
I have no further citations to add- I was just playing it out logically based on the information you provided. I guess my question is-what would have stopped the first inventor from filing for, obtaining, and enforcing a later filed patent? Only the second inventor's patent, which he can invalidate. Also notice how the statute talks about the first "true" inventor. The system seemed to be directed to giving the first "true" inventor superior rights. Anyway, I think your basic point is proven. Certainly a patent could have issued in 1793 to the second inventor if the first never asserted his rights. This alone shows congress was understood by the founders themselves to have had such authority. Therefore congress has the authority to implement a first inventor to file system. Pretty solid argument.
No Dale, you are the one impervious to logic and reason.
Yes, if it were proved in court that you were not the first inventor the patent was repealed. For reasons that I cannot comprehend you refuse to acknowledge that the hallmark of a first to invent system is that the first to invent actually receive that patent. There is absolutely NOTHING in the Patent Act of 1790 that allows the first to invent to be awarded the patent after it had been repealed.
Your argument also ignores the obvious. The first to invent would have to actually file a patent application to be awarded the patent. If A was first to file and received the patent and then sued B, B could prove that C invented prior to A and have A's patent repealed. That does not mean that C would automatically be awarded the patent.
How or why you can't understand that a first to invent system requires the first to invent to be awarded a patent is beyond me. You seem blinded by ideology.
Gene,
You appear to be impervious logic and reason. The legislation makes it clear that if you were not the first true inventor and this was proven in a court of law you lose the patent. This is clearly not a first to file system.
Your arguments only makes sense if you are trying to say that the US had a de facto as opposed to a de jure first to file system. Even then there were remedies in all U.S. legislation to invalidate a patents issued to a person who was not the first true inventor.
Mark-
What authority can you cite for the proposition that one could file a patent application, go to court and get a prior patent invalidated and then receive a patent. Just curious how you come to that as the way it was done given there is nothing in the statute to support that being allowable. You must be able to cite to a case where that happened in the absence of any legislative language that authorizes that.
Also, if that was in fact what happened why then would the Patent Act of 1870 had to have mentioned that the first to invent who was second to file could be awarded the patent? It would seem under your reading of the Patent Act of 1793 that was already the case.
It is quite interesting to see all the guessing and assuming going without a single shred of legislative support to suggest these procedural machinations were available and without a shred of evidence to support it ever happened in a single instance.
Under the 1793 system, the first inventor (acting after a second inventor already filed) would have first filed for his own patent, and then gone into court and had the second inventor's patent invalidated. So the first inventor would win and get the patent. The statement that the invention was not known by others in the patent act would have meant not known before the invention date of the first, true, inventor. 102(a) still says not known, etc., before the invention thereof…. The 1793 system was a strong first to invent system-more strongly first-to-invent than the current system. However, none of this means that congress does not have the authority to enact a first inventor to file system if they want to.
Dale-
I did answer the question, you just don't seem to like the truth.
Let me say this as clearly as I can… you do not have a first to invent system if the first to invent does not receive the patent in stead of the first to file. The Patent Act of 1790 does not give anyone the authority to take the patent away from the first to file and give it to the first to invent.
Moreover, it was not until the Patent Act of 1870 that the Statute gives the authority to award a patent to the first and true inventor if someone filed first.
I'm really not sure why you are having such a difficult time with such an easy concept.
I will also note that your statement about patents to foreigners shows you are being irrational. You say: "we award patents to foreigners who are not inventors is a mistake." Where do award patents to foreigners who are not inventors? 102(f) specifically prohibits the awarding of patents to those who are not inventors, and the first to file provisions being discussed are all first INVENTOR to file. You cannot get a patent unless you are an inventor. You are not being honest about what is in the bill.
As for your other comments, it is pretty clear who is doing the ignoring. You are making things up and ignoring reality. You are making assumptions and assuming power existed when the statute conveys no such power. In short, your legal analysis is exceptionally sloppy.
Again I think you miss the key constitutional issue. First-to-file vs. first-to-invent matters only when the same party isn't both. Under the 1790 act, your interpretation seems to suggest that NEITHER party gets the patent. That wouldn't fit the definition of either first to file or first to invent as we know them today, so it doesn't prove that a first to file system is constitutional.
The early USPTO did not have the staffing or resources to examine applications as they do today. So they set up a registration system and left it to the courts to resolve disputes over who was the first to invent. So the original system was plainly first-to-invent. In fact, the original system was even more strongly first-to-invent than the current system because there were apparently no possible issues of abandon, suppress, or conceal. Pretty straightforward. Having said that, I agree that a first inventor to file system would be constitutional simply because the constitution itself does not appear to so limit congressional authority.
You failed to answer the straightforward question as to why a patent should be invalid because the first true inventor did not receive the patent under a first to file system (1790 statute)? My guess is because you cannot answer this question.
I find it amazing that you ignored that the purpose of the proceeding (1870 Act) which was to determine which person had priority. I find it amazing that you ignore that the applicant has to swear that he is the first true inventor, but you think this can be ignored in other parts of the statute.
For U.S. patent applicants you have to be the first true inventor, unless the first true inventor abandoned their invention without publishing it or selling it. In this narrow case, where the first true inventor has abandoned their property and has not dedicated to the public then a patent may be awarded to a second creator of the invention. This is completely consistent with the Constitution.
The fact that we award patents to foreigners who are not inventors is a mistake. Two wrongs do not make a right.
You say: " Since the Constitution never gives the federal government the right to provide rights to people who file first it does not have this power."
So is it your contention that the patent system is unconstitutional? If you are going to be logically consistent that has to be your conclusion because those who are first to file receive patents instead of the first inventor in a great many cases.
You say, relative to the Patent Act of 1790: "if a patent was not issued to the first true inventor the patent was invalid. This clearly means that you had to be the first true inventor."
How you could so severely misread the statute is nearly breathtaking. So you think the patent was void ab initio? You should really read the Patent Act of 1790. It is obvious you haven't read the Act if you are able to reach such wild and erroneous conclusions. Section 5 relates to a district court judge declaring the patent invalid. If the inventor wasn't the first and true inventor it was declared invalid, as the article explains. There was, however, no provision for that first and true inventor to be awarded the patent instead of the first to file until the Patent Act of 1870. So you can pretend all you want that the U.S. patent laws were always first to invent, but a system that does not allow for the first to invent to receive the patent instead of the first to file is NOT a first to invent system.
I find it breathtaking that you would also ignore the word "may" in the Patent Act of 1870 and the Patent Act of 1939. In both cases the Act says: "the commissioner may issue a patent to the party who shall be adjudged the prior inventor…" May does not mean "shall." Obviously, "may issue" means it "may not issue." So under your logic the Patent Act of 1870 and the Patent Act of 1939 were unconstitutional, as well as the Patent Act of 1952 and our current patent laws that do not absolutely require a patent to be issued to the first to invent.
You say: "It is simply absurd to suggest that the U.S. ever had a first to file system."
I suggest you re-read the article, but this time with an open mind. Obviously, you are incorrect and my analysis proves that. U.S. patent laws were clearly first to file and it is nonsense for you to suggest otherwise.
Your facts do not support your conclusions. First of all the Constitution does not say that Congress is to protect the rights of who ever files first. It says INVENTORS. The Constitution was designed to define and limit the power of Congress. Since the Constitution never gives the federal government the right to provide rights to people who file first it does not have this power.
Act of 1790
The 1790 Act was not a registration system. It was an examination system where the Secretary of State, Defense and the Attorney General were the examiners.
As you pointed out, if a patent was not issued to the first true inventor the patent was invalid. This clearly means that you had to be the first true inventor. If the 1790 Act was a first to file system then there would be no reason to invalidate a patent filed by someone who was not the first true inventor.
This Act required the applicant to swear they were the first true inventor. Your argument that the panel of arbitrators could issue the patent to someone other than the first true inventor is nonsense. It would mean the panel could ignore the oath and rule in a manner contrary to the oath. This is clearly nonsense. Your attempt to parse the separate sections of the Act as if they stand on the own, completely separate from the other parts of the Act is disingenuous.
The section that says the commission may issue to the patent to prior inventor, does not mean that the commission can issue the patent to the second person to create the invention. The same paragraph of the Act clearly states that the purpose of interference is to determine the question of priority. Also we know that interferences require the inventor to not have abandoned the invention. So in that case the commission could issue the patent to the second creator. Or it could be determined that the inventor abandoned the invention and the other party derived invention from the inventor and no patent should issue.
Your conclusions are not supported by your own facts. As pointed out in an open letter to Congress:
"In the Founding Era, the term "Inventors" was defined in the newly independent United States of America as referring only to first inventors. In Samuel Johnson's 1785 dictionary, often relied on by the Supreme Court as an authoritative source of meaning in the Founding Era, an "inventor" is defined as "one who produces something new; a devisor of something not known before." Moreover, Johnson defined a "discoverer" as "one that finds anything unknown before." Samuel Johnson, A Dictionary of the English Language (6th ed. 1785). Johnson was not alone in thinking that "Inventors" referred only to first inventors. St. George Tucker, for instance, defended the Copyright and Patent Clause against criticisms that it empowered Congress to create commercial monopolies by observing that "nothing could be more fallacious," because this constitutional provision limited Congress to securing only an "exclusive right" in "authors and inventors." St. George Tucker, Blackstone's Commentaries: With Notes of Reference to the Constitution and Laws of the Federal Government of the United States and of the Commonwealth of Virginia, vol. 1, appendix (1803): p. 266.
Moreover, the First Congress, whose acts are often recognized as probative of the original meaning of constitutional terms, explicitly rejected the English practice of granting patents to importers of technology, recognizing that importers were not first and true inventors. During the drafting of the bill that became the Patent Act of 1790, the House committee decided not to follow the English practice of extending patent rights to the "first importer" of overseas inventions. Representative Thomas Fitzsimmons wrote: "The 6th Section, allowing Importers, was left out, the Constitutional power being Questionable." See Karen E. Simon, The Patent Reform Act's Proposed First-to-File Standard: Needed Reform or Constitutional Blunder?, 6 J. MARSHALL REV. INTELL. PROP. l. 129, 141 & n. 95 (2006-2007) (quoting congressional record).
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 1952."
It is simply absurd to suggest that the U.S. ever had a first to file system.
Blind Dogma
"Your willful, repeated misinterpretation "
No. This is the first time you have ever said my representation was a misrepresentation.
BD,
Your willful, repeated misinterpretation of what I say is not my fault. I acknowledge that the inventor is the recipient of the private benefit. However, the concern to be given in regards to the inventor is what the public can get out of them for what costs. Socials benefits and social costs are the two factors to be considered when crafting patent policy.
You of all people have no place to say what is comprehended – you cannot even bring yourself to acknowledge the presence of the inventor in the Quid Pro Quo balancing.
I think it is you that doesn't comprehend what is meant by saying that the patent system is for a public benefit. The patent system being only based around the public benefit doesn't mean that there is no private benefit, or even that the benefit should be discarded on a whim. It just means that the policy for the private benefit ought to based around conditions of what is best for the public. If a generous deal towards inventors is what results in the best public benefit, than such a policy is just.
Very nicely put together… I echo a lot of the comments here, I know more about the history of United States Patent law after reading this article, than I had known before. Thanks for the thoughts.
With all due respect, it is not my "reading a little slower" that needs to be done here. Perhaps I have the benefit of continual sparring with non-legal "thinking" from the likes of Bobby, but your turn of the phrase "knowing what the basis of inclusion of the patent system into the constitution was all about. Simple, public benefit; not private gain." would only be too easily twisted out of all proportion to mean a "public benefit only" stance by the less savvy.
If you read my missives – both past and present – s l o w l y – in light of these discussions, you may realize that you more agree with me than disagree.
Dogma:
Read a little slower, and this time you might comprehend the "utter nonsense". Prior patent systems were characterized by cronyism. All private gain, with a kick back to the crown. Jefferson felt that the US could not stand such embarassment in adopting a similar system. He also considered a "natural rights system" to benefit no one. ie., like some software writers mis-guided belief in the "freeware" model. So, for patents to be incorporated into the US, there had to be quid-pro-quo. The balance changes from time to time (i.e., length of term, nature of disclosure, enforcement, etc.), but it is still bottomed on public disclosure in exchange for a limited private right. And, as these thoughts bear on Gene's article, it has been 1st inventor to file from the outset.
I do not have time at length to add my replies, but there is one important correction to the thought of John White:
The basis of inclusion of the patent system into the constitution was not all about one side of the Quid Pro Quo. It was not all about the public benefit at the expense of the private gain.
Such is utter nonsense.
Quid Pro Quo recognizes the balance to be sought – and in that idea lies the critical notion that BOTH sides are neccesary – BOTH the public and the private – this country recognized that critical concept at the very begining – losing sight of the essence of the celebration of the individual in direct contraposition to the notion of "government" loses sight of the power of the Quid Pro Quo, loses sight of the meaning that truly is the foundation of including the authority given to Congress in the constitution.
I hope to have a more detaile dreply, but for now I will only note that you do not actually give an answer to my points, and only invoke loaded language of "muddled and conflates, "that is not quite correct" (point 2) – But you lack any explicated reasoning for your statements. In reply to my point 3, you again simply invoke loaded language "superficially appealing,… deceive yourself… fallacy… fail to appreciate" and yet it is you that fail to appreciate the very real distinctions I point out in what the Stanford v. Roche case actually covers – and what it does not. It is you that fails to appreciate just when a property right is even able to be taken and what it means for an invention to be inchoate. You state that an invention is the same as a patent when no one who understands the legal arena of patenting would make that errant statement.
Take a step back and understand that your passion stemming as it does from the policy perspective is blinding you to the constitutional basis. The Stanford v. Roche case simply does not cover what you are trying to stretch it to cover. Reread that first paragraph over and over again to see what the case actually speaks to – and only what it speaks to.
Time for some truth serum. The US system has always been first inventor to file. Period. This has been so, regardless of its gloss at the time. Here's why: The public policy underlying the US patent system is a trade of disclosure, public benefit, for a grant of limited exclusivity, a private benefit. Where a first inventor sits on their hands and does not file (i.e., disclose), no public benefit can be derived. Hence, even if you are the 2nd inventor, you win in the current system if you win the race to the PTO, the 1st actual inventor losing under current 102(g) (abandon, suppress, conceal). Where there is no contest for public benefit (102(c)), then the 1st inventor wins. But, their rights do not commence until they disclose (public benefit).
The patent system is not a "private" reward system as many seem to think. That's stupid, and would undermine any inventive activity that would benefit the public. Inventors would strive, reasonably so, to keep everything as a trade secret. The patent system is, instead, an incentivised exchange of benefits.
This unconstitutional argument is all red herring, and easily dispatched by knowing what the basis of inclusion of the patent system into the constitution was all about. Simple, public benefit; not private gain.
Your rantings are incorrect, but I doubt you will ever realize that. Notwithstanding, you cannot provide a shred of support for your rather bizarre assertions. On top of that, you agree that the Patent Act of 1790 represented a registration system, but then seem troubled by my pointing that out.
You are capitulating throughout your last comment when you continually say you don't have time to prove me wrong. So are we to just take your word for it and ignore the plain text of the various Patent Acts. Why would anyone take your word for something you cannot prove, particularly given that you have demonstrated a complete and total lack of understanding of relatively easy Supreme Court cases such as Stanford v. Roche. Why can't you just admit that the Supreme Court did not address first to file versus first to invent in Stanford v. Roche?
While you can choose to rant all you want on your own site I do not tolerate ridiculous ranting that makes a mockery out of this forum. I don't care whether you admit you are wrong, but I do care about the integrity and intellectual honesty of the comments on IPWatchdog.com. As yet, you are not exhibiting the level of commentary we strive for. Denying reality and supplanting it with unsupported conjecture and speculation and then playing the "I haven't time to prove you wrong" card is not acceptable.
"If your reading of Stanford v. Roche is correct then anything other than an absolute first to invent system is unconstitutional."
You seem to be confused as to what the constitutional issue is. The concern is not in inventors not getting patents, but rather, in granting patents to non-inventors. The 1790 act appears to not allow for non-inventors to keep patents when they are exposed as non-inventors.
You might contend that this doesn't fit the definition of a first-to-invent system, but it doesn't seem to be accurately described as a first-to-file system either, as the first-to-file cannot retain a patent if he is discovered to not be the first-to-invent.
Your petty diatribes can't hide the truth or silence me.
The District Judge didn't have to award the patent to the person invalidating another's patent under Section 5 of the 1790 Act. The prior inventor could simply apply for his own patent. This was done, if he hadn't done so already, by petition to the Secretary of State, Secretary of War and Attorney General under Section 1 of the Act and upon approval of any two of them and determination of conformance to the Act by the Attorney General WITHIN 15 DAYS and application of the Seal by the President deposit the disclosure and model pursuant to Section 2 of the Act with the Secretary of State. The drafter of the 1790 Act was apparently smarter than you, since you missed this obvious point, this obvious way in which the drafter provided for correcting an erroneously issued patent.
The likely way it would work in real life under the 1790 Act is that the battle would be between two or more patents, with only one (that of the true and original inventor) not being invalidated under Section 5, as in a registration system it is to be expected that the patents would issue rapidly, being that examination is rather limited. And, if it were important enough to litigate, surely the true and original inventor would apply for his own patent so that when the other one was invalidated, only the true and original inventor's patent would stand and it would be currently existing so that it could gain the other benefits conferred by the 1790 Act, such as prima facie proof of ownership and right to damages. Good thing you were not around in 1790 representing any true and original inventor if you think otherwise.
It is sad. You spent all that time to locate and quote the 1790 Act and then, in your excitement in simplistically thinking it was a "first-to-file" system, and your eagerness to trumpet that "discovery" in defense of unconditional FTF, overlooked that it is really a "first-to-invent" registration system where the first to invent can knock out a previously registered patent (under Section 5) and have a patent for himself. This meant that patents were not unconditionally granted to the first to file as S23 or HR1249 propose. You need to reread the 1790 Act, since you missed this obvious point.
The Act itself is the authority for the grant of such a second patent to the first to invent but later to file. The citation you ask me to provide is Section 1 of the Act. That is not "grasping at straws", it is simply reading the language correctly. Show me any citation that says Section 1 of the Act does not apply to the true and original inventor who invalidates a patent to another on the basis of prior inventorship. You can't because there is none. The statutory scheme of the 1790 Act is first to invent. You need to reread the 1790 Act, since you missed this obvious point.
A patent might temporarily issue to a second inventor until it was invalidated, because it was a registration system and inventorship was not examined prior to issuing the patent. That is why there was a Section 5, to correct any error in issuing a patent to an inventor later shown not to be the true and original inventor. In fact the act even prescribes a penalty for a first filer if the filing be shown to be fraudulent. You need to reread the 1790 Act, since you missed this obvious point.
So, are you saying that as a lawyer representing the true and original inventor in the face of a patent issued under the 1790 Act to a later inventor, you would not advise the true and original inventor to invalidate the patent and apply for his own? Face it Gene, you blew it on this point. You are incorrect, and all the insults in the world won't change that fact.
I wish I had the time to spend searching 1790 Act patents to determine how many were invalidated, if any, under Section 5, and whether the ones invalidating them applied for their own patent, but alas, I don't have the luxury of doing that, even if the records are still around anywhere. Perhaps some scholar who is more objective and than you can do so.
With the greater difficulty of communication and greater isolation of people in post-colonial America it would not be surprising to have two inventors in two geographical locations come up with the same invention. Whether, and how often, it happened is for historians with more time than I want to spend.
Now, as to your looney comments on my proposed registration scheme, you show you still don't really understand Stanford v Roche, as a true and original inventor's rights are indeed protected by making patents subject to invalidation on the basis of prior inventorship. Again, in a registration system, since patents would issue in a matter of months, not years, the battle would end up as a practical matter generally being between two patents, with the true and original inventor knocking out the other patent even if filed earlier. That you miss this obvious point shows your superficiality and lack of objectivity. And that is, indeed sad, as it adversely impacts your credibility.
When commenting with harsh language, you see, as here, that it can backfire and come back to bite you.
One more thing… you say: "I am in favor of a conditional first to file, a registration system…"
If your reading of Stanford v. Roche is correct then anything other than an absolute first to invent system is unconstitutional. For days you have argued that Chief Justice Roberts said in Stanford v. Roche that the first to invent immediately owns the invention to the exclusion of anyone else. You have argued for an inchoate right. It should be self evident that you cannot have it both ways. Either first to file is unconstitutional or it is not unconstitutional.
Your reading of Stanford v. Roche is erroneous and rather than relying on the text of the Patent Acts and fact based history you are making things up so you don't have to admit you are incorrect. Sad.
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?
Thanks Cheryl. It is good to hear from you.
Have fun on the panel, and please feel free to mention the article.
Cherl Milone
What an incredible work of scholarship.
While there is endless wrangling about patent reform based on self-interest, you return us to our roots Gene.
I hope you don't mind if I suggest this blog post at the ipBC 2011 in San Francisco today. I am participating on a panel about about change in US patent infrastructure. I would recommend this to anyone who appreciates the historical significance and optimism of patent system. Truly a delight to read.
http://www.burdlaw.com/blog/?p=212
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 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.
I am in favor of a conditional first to file, a registration system similar to that of the 1790 act, and that type of registration system would appear to be consistent with the inchoate right of ownership of inventors stated in Stanford v Roche and the 5th Amendment. In fact, I have been urging such a system for several years, one I call PLEAS (Patent Litigation Expense Avoidance System)
John Spevacek
You are taking all the fun out of this. How can we argue and demagogue and name-call when you are providing facts like this? Huh? Huh? It's unAMERICAN!!! Please stop it.
Seriously, a wonderful article, maybe worthy of publication somewhere as a short note.
Very understandable guided tour – the worrying thing is that I probably now have a greater appreciation of US patent law than UK and european patent law!
Apologies for probably going off topic, but it would seem to me that the excerpt of Section 5 of the Patent Act of 1790 that Gene cites implies a degree of prior user rights.
Dawn David
I just gave a lecture on U.S. Patent Law to a group of Chinese patent attorneys in Beijing (for which I attribute most of what I know to you), and I think what surprised them the most was the concept of "First to Invent." I used an animated diagram during the presentation to suggest the hypothetical concept, but followed up by saying it was pretty unfair to claim that we have a First to Invent system and why that was true.
It's nice to have such a consolidated run down of our history on the subject. Perhaps in the near future our system will return to the reality of a First to File system. Thanks for the article!
step back
Nice work of scholarship.
Basically, the US patent laws are political much as is true in all other countries.
In the beginning there were hardly any (European) inhabitants in this backwater agricultural nation who were capable of inventing anything (or more importantly had time and spare wealth to do so).
Convincing even a few "inventors" to participate and get the system going was hard enough. After all, you had to present a working model. So it was not just first to file, but first to build a working model.
tom gallagher
Nice work, Gene!