Patents War: First to File vs. First to Invent

There's a little known court case that could have significant implications for US patent law, and the electronics industry should know about it. The case, which was recently filed in the United States District Court for the Middle District of Florida (Tampa Division), involves Florida businessman Mark Stadnyk who is suing the US government over the constitutionality of its patent legislation.

Specifically, Stadnyk's case challenges that section of the Leahy-Smith America Invents Act (AIA), which awards patents to the inventors who are "first to file" with the United States Patent and Trademark Office (USPTO). Stadnyk's lawsuit favors the current first-to-invent system, which will be replaced in March 2013 by the first to file provision of the AIA, which President Obama signed into law last year.

The first-to-file system is unconstitutional, Stadnyk's legal team asserts, because it awards the patent to the person who wins the race to the patent office, rather than to the inventor. This changes the system that existed for over two centuries and produced the inventions of Thomas Edison, the Wright Brothers, and the Information Age. The framers of the Constitution, as well as authorities like Thomas Jefferson and Chief Justice John Marshall, agreed that only the actual inventor is entitled to a patent.

Critics also note that the first-to-file system is advantageous to large corporations that have funds to hire legions of lawyers to apply for and file patents. By contrast, smaller companies with little money have less of a fighting chance to protect patents from inventors who, like Steve Jobs, tend to develop much of their early inventions out of a garage.

Stadnyk is represented by Washington D.C.-based lawyer Jonathan Massey, who points out that the lawsuit will help inventors in the electronics manufacturing industry. How? Massey asserts that by defending the traditional first-to-invent patent system, there will be less disruption and uncertainty that is bound to arise once the new first-to-file system is introduced.

But the current system doesn't work well either. There are more than 700,000 patent applications at the United States Patent and Trademark Office (USPTO), and the backlog has affected the timeliness of issuing patents to inventors across the country, which in turn disrupts inventors' business plans.

Nevertheless, Massey believes the new system will be even worse. "It now takes three years, on average, for a patent application to be processed. This situation is intolerable, but the 2011 legislation does nothing to fix it. In fact, the new Act will only make the problem worse," he said in an interview with me. "It contains a host of additional administrative review procedures that will further burden the USPTO. The Act will also trigger a flood of hastily drafted, poorly explained patent applications, which will only serve to increase the administrative backlog and foster additional patent litigation."

While Stadnyk and his lawyers believe they have a case, others aren't so sure. Mark Lemley, a professor at Stanford Law School, who is quoted in a recently published New York Times article on the matter, said that while people might not like the outcome of the patent legislation, "that doesn't make it unconstitutional."

In the meantime, significant parts of the AIA went into effect in September, including >allowing third parties to submit in any given examination relevant materials to patent examiners -- a rule that marks the first time in the history of US patent law that such an allowance has been made.

Additional new rules that went into effect in September include the following:

• The supplemental examination provision allows applicants to submit additional information relevant to the patentability of an issued patent to the Office in a new procedure that may protect the patent from an inequitable conduct charge.
• The inventor's oath and declaration provision that for the first time allows assignee filing of a patent application.
• The citation of prior art and written statements provision will enable the Office to treat the claims in a patent consistent with how a patent owner represents its claims to the courts or in other Office proceedings.

In a statement on these changes, Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos had this to say:

These new AIA provisions now in effect give us tools to deliver cutting-edge technologies to the marketplace sooner, further reducing the backlog of patent applications, and getting high-quality patents issued faster. And that will translate into opportunity, growth, and jobs for large and small innovators across America.

Getting the patent system right is critical to America's position as a leader in high-tech innovation, and is essential to creating jobs and spurring economic growth. Given this fact, the US can't afford to implement anything less than a world-class system that is timely in processing applications, careful in verifying the documents that prove the inventor's claims, and reliable in protecting the inventor's intellectual property.

Hopefully, the new system will protect an inventor's claim to its intellectual property in such a way that it reduces patent litigation, but that might be too much to ask for.