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.

12 comments on “Patents War: First to File vs. First to Invent

  1. Daniel
    October 5, 2012

    Nicole, for patient registration there are certain procedures. You can have a provisional registration of one year validity before completing the end stage (invention or technology). After that you can proceed for the final patenting. This provisional registration will help you to retain the idea or technology and make sure you will get a better mileage throughout the patenting process. Moreover, once you had the provisional registration, the relevant publications/lists may discourage others for filing the same once again.

  2. SP
    October 5, 2012

    I like this, first to file vs first to invent. One question how does one determine that who has invented first. I am sure its very easy to know who filed first. Is it through documented procedures or notes. Then how will one verify that dates in the document are not forged. Although I fully agree and support that the one who invents first must have the patent in his/hers name but its definitely not going to be easy to determine looking at the the amount of warriors in patent war.

  3. Barbara Jorgensen
    October 5, 2012

    Sounds like the latest development in an ongoing debate. I thought I'd read that the new system was supposed to streamlline the application process. Not only has that not happened, but it does seem to be weighted in favor of the inventor that has the most patience or deepest pocketbook.

  4. Eldredge
    October 6, 2012

    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.

    I'll have to find out more about this case. I'm not sure how it can be claimed to be unconstitutional.

    The U.S. Constituion states in Section 8 that “The Congress shall have power….to promote the Progress of Science and the useful Arts by securing for limited time to Authors and Inventors the excusive right to their respective writings and discoveries”

    It seems like this leaves the decison of a first-to-file versus a first-to-invent system up to Congress to determine. In both cases, however, the patent applicant must establsih that he/she is an inventor. I;m not sure if a constitutionality challenge will prevail.  Any thoughts?

  5. Eldredge
    October 6, 2012


        While some of the AIA changes have been implemented as of mid-September, the change to a first-to-file system will not be implemented until March. It's difficult to say how this change will affect the ability to obtain a patent more quickly. At the same time, the USPTO has been increasing their staff of patent examiners to address the backlog, so we have multiple variables changing at nearly the same time. It will probably be hard to tell if the changes streamlined anything, at least for awhile.

  6. Eldredge
    October 6, 2012

    With the first-to-invent system, it was strongly recommended that the inventor(s) maintain good records of their ideas and progress in the development of the ideas to workable practice, preferably in patent notebooks. These records needed to be witnessed and dated by two people who understood the invention. If two entities filed for the same invention, these records could establish who was the first to invent, and who was diligent in refining the invention to practice.

  7. MadStad
    October 7, 2012

    Section 8 does say that “Congress shall have power to . . .”, but the phrase “ignore this Constitution and enact whatever it wants” is not on the list. Section 8 is a limitation on the powers of Congress, not a blank check. If Congress has the power to do whatever it wants, then why bother listing specifics in Section 8?

    The fact is that Congress cannot simply make laws doing whatever it wants. If Congress believes that a provision of the Constitution should be changed, then there is a process for doing so. The problem is that they know they would lose if they had to openly debate the intellectual property clause, so instead they chose to quietly enact a new law that rewrites the clause, in the hopes that nobody would object. They get away with this all the time because Americans no longer have a working knowledge of nor respect for the document that created the greatest country the world has ever known. This is why America is in deline right now, severe decline, but rather than managing it or simply accepting it as the “new normal”, we must fight it.

    If you invented something then it is your property. Period. Doesn't matter who filed the paperwork first. That's what our founders believed, and that is what they said in Article 1, Section 8, Clause 8. It is the ONLY power of Congress that is specifically spelled out as to how it must be applied. Your right to your intellectual property was enacted in 1788. The rights to free speech, freedom of religion, to bear arms, etc. were first proposed in 1789 in the Bill of Rights. In other words, our founders felt this IP clause was so important that it came ahead of  all of the other rights we are very familiar with. Yet now our Congress has swept aside 220 years of patent law and this clause, without due process. Even if you don't know the specifics of this case, that fact alone should cause you to call your representative and say, “Excuse me, just what do you think you're doing?” This is your country. Fight for it before it is gone. I am.


  8. bolaji ojo
    October 7, 2012

    Fortunately, the US Supreme Court may get to rule on issues like this although it may be years before a challenge is mounted. Hopefully, the court would do what it was set out to do in a non partisan way.

  9. The Source
    October 8, 2012

    Dear SP,

    There are and have always been mechanisms in place to either help inventors defend their patents or to challenge patent infringement. From what I gather in your note, you seem to be skeptical as to whether any system can completely defend an inventor's patent.  I guess the USPTO will say it is doing the best that it can under the legal framework within which it operates.  The analogy, although it's an extreme one, is the criminal justice system which has been known to find individuals guilty of a crime and years later evidence surfaces that exonerates the individual. We can't always depend on humans to the right thing, but we must trust humans and the systems that they create, at least some of the time.    

    Thanks for your response and for reading my article.


  10. The Source
    October 8, 2012

    Dear Eldredge, MadStad & Bolaji,

    I am very interested in whether any court finds the first-to-file system of the Leahy-Smith America Invents Act (AIA) to be unconstitutional.  There are those who vehemently say yes, and those who strongly disagree. Mr. Stadnyk sees his court case battle as similar to the opposition waged against the Patient Protection and Affordable Care Act, which the Supreme Court recently upheld.

    In the New York Times article mentioned in my story, Stadnyk is quoted as saying “Others took on Obamacare, and this is my fight.”  He goes on to say: “My property would be given away by the government under this new law.”

    Interesting.  We will see how far this case goes.

    Thanks for your comments.


  11. Daniel
    October 10, 2012

    SP, the patent registering offices have their own provisions to check whether the filed in details are forged or original. After that they will publish it for another 3-6 months for collecting opinions and defenses. If anybody has any objection, it can be filed within this time frame.

  12. SP
    October 10, 2012

    Thanks Nicole and Jacob.

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