The ink is hardly dry on the Supreme Court decision in Stanford v. Roche and already those who oppose patent reform are concocting one of the most ridiculous arguments I have ever seen to oppose first to file provisions. There are some, including at least one Member of Congress, that have started saying that the Supreme Court’s decision in Stanford v. Roche makes it clear that the first to file provisions of patent reform are unconstitutional. Just sit right back and allow me to explain to you exactly why that is perhaps the most specious argument I have ever heard.
Let me begin with attempting to explain how presumably intelligent people erroneously conclude that the Supreme Court earlier today held first to file unconstitutional. The argument goes like this: Chief Justice Roberts wrote, “Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.” This was repeated several times and in slightly different ways throughout the decision. So those misconstruing the case twist this beyond all reasonable logic to conclude: “patent rights have to belong to the inventor, so those who file first cannot receive the patent ahead of the person who invented first.” Oh my goodness! Is this the level of debate in Congress? No where in the decision is that said! It is no wonder our leaders have failed us so miserably.
First, the Stanford v. Roche case had absolutely nothing to do with patent reform and did not deal with issues of first to invent or first to file. Let me be as clear as possible: those saying the Supreme Court decision in Stanford v. Roche means that first to file provisions are unconstitutional are either lying, grossly demagoguing (as opposed to just plain old demagoguing) or just not well enough informed to take seriously. In the Stanford case a researcher assigned invention rights to Stanford, then in exchange for access to private sector technology at the urging of Stanford agreed to assign rights to Cetus, which were later acquired by Roche. The question was whether Stanford could sue Roche for patent infringement. The answer was no because the researcher, who was the inventor and the original owner of the patent rights, had lawfully assigned rights to Roche through Cetus. So the case said the inventor is the one who absent an agreement owns the rights. By agreement he gave rights to both Stanford and Roche (by and through its predecessor in interest Cetus). For a more complete summary of what Stanford v. Roche really means see: Supreme Court Affirms CAFC in Stanford v. Roche on Bayh-Dole.
Second, patent reform passed in the Senate and under consideration in the House of Representatives would NOT give the patent to someone who did not invent. In fact, the bill is excruciatingly clear; the patent would go to the FIRST INVENTOR to file. So the patent would still go to an inventor, so to the extent that Stanford v. Roche has anything to do with patent reform (which it does not) the bill under consideration would clearly be in keeping with what Chief Justice Roberts wrote.
Third, there is a terrible lack of understanding of basic patent law at work. To think that Chief Justice Roberts saying an inventor owns patent rights in the first instance means that first to invent is embedded in the Constitution requires one to simply not comprehend basic U.S. patent law. Under the patent laws one who invents second is still considered an inventor the same as those who invent first. Those who invent second just don’t typically get the patent.
You see, presently 35 U.S.C. 102(a) says that a person is entitled to a patent (generally speaking) unless someone has previously invented. But according to 35 U.S.C. 102(f) a person is entitled to a patent unless they did not invent. If the law treats those who subsequently invent as individuals who are not inventors then 102(f) is superfluous. The law typically does not interpret different provisions as being superfluous though, and this case is no exception. 102(f) prevents one from obtaining a patent where they did not invent, or in other words took the invention of another and filed a patent application. 102(f) prevents nefarious activity. On the other hand 102(a) treats those who engaged in the mental activity of invention as an inventor although they might not be the first inventor.
So did Chief Justice Roberts say in Stanford v. Roche that 102(a) is unconstitutional because those who are inventors are denied patent rights because they did not invent first? Of course not, but that would have to be what the Supreme Court meant in order for the tortured logic of the anti-patent reform crowd to be correct.
Additionally, 35 U.S.C. 102(b) presently says that one is entitled to a patent unless certain activities have occurred more than 1 year prior to the filing of a U.S. patent application. For example, 102(b) requires a U.S. patent application be filed within 12 months of a public use that occurs in the United States or an offer for sale in the United States. So is 102(b) unconstitutional because those who undeniably are the first inventor are denied patent protection because they waited too long to file a U.S. patent application? Of course not, but that would have to be true in order for the ruling in Stanford v. Roche to mean what the anti-patent reform crowd wants you to believe it means.
Moreover, in an interference proceeding under 35 U.S.C. 102(g) the law presently requires the person who is claiming to be the first inventor but was the second to file to demonstrate that they diligently worked on the invention from immediately before the conception of the person who filed first straight through and uninterrupted until they either actually or constructively reduce the invention to practice. Diligence is strictly enforced. An inventor that goes on vacation is not diligent, an inventor who has to raise money to continue research is not diligent and patent attorney delay in filing an application forfeits diligence if the inventor is relying on a constructive reduction to practice. So presently the law imposes significant hurdles for those who invent first to prevail and receive the patent. In fact, we can all universally agree who invented first but if they were not diligent then they cannot be awarded the patent. So is 102(g) unconstitutional or otherwise in violation of Stanford v. Roche? Of course not.
Simply stated: Stanford v. Roche had nothing to do with first to file or patent reform, and it does not say what those who despise patent reform are trying to twist it to mean. Many of those who oppose patent reform will grasp at every straw and make every ridiculous and provably false argument they can. This is an example of everything that is wrong with American politics if you ask me.
First to file can justifiably be challenged for at least several reasons. First, and most importantly, once the Senate added first to file the tech giants that make up the Coalition for Patent Fairness started arguing that if we have first to file we need prior user rights. That was never argued in the Senate, and it is just flat ridiculous. The Constitutional purpose of the patent clause is to disseminate knowledge, not to reward those who affirmatively keep knowledge secret, which is exactly what a prior user rights regime does. So if prior user rights is absolutely necessary in a first to file regime (which is not true) then we shouldn’t have first to file. See Expanded Prior User Rights is a Bad Idea.
The primary argument for first to file is that it virtually never matters. This, however, is also one of the best arguments against it. As it turns out we have a de facto first to file system because in upwards of 99.9% of cases the first to file is the first to invent. So the supporters say: “why have a first to invent system with all the archaic rules that go with it (i.e., interference practice) when it matters hardly ever. In fact, since 2004 exactly 1 independent inventor out of 2.7 million patent applications was successful in proving they were first to invent when they were second to file. See First to File Fight Looms. The retort, however, is that if it hardly ever matters then why make the change?
There are plenty of legitimate avenues to challenge first to file, but I find it reprehensible to fabricate fallacious arguments out of whole cloth in order to attempt to prevail in an argument that cannot legitimately be won on the merits. Such immoral trickery makes a mockery out of the system, insults those who genuinely support first to file for thoughtful reasons and makes it all the more difficult for those who oppose first to file on legitimate grounds to be taken seriously. It is wrong when the Coalition for Patent Fairness pretend prior user rights are an essential component of a first to file system, and it is equally wrong when those who despise first to file knowingly, intentionally or ignorantly misrepresent a Supreme Court ruling.