I have been watching in utter amazement as individuals with a variety of experience in the patent field debate the constitutionality of the first to invent proposals. This started when those who will not allow truth and accuracy to deter from their arguments started saying that the Supreme Court ruled first to file unconstitutional in Stanford v. Roche. That argument was, and still remains, specious because Standord v. Roche had nothing to do with the issue, nowhere in the case did Chief Justice Roberts make such statement, hint that he was thinking such a thing, or say anything colorably related to such a conclusion. See Did the Supreme Court Rule First to File Unconstitutional?
Now the argument is morphing into a discussion of whether the word “inventor” must mean “first inventor.” This very question is being seriously raised in some academic circles, by some patent practitioners who ought to know better, and by those who simply want to kill patent reform at all costs even if they have to engage in gross misrepresentation in order to do so. Indeed, there are those ranging from neophyte to relatively experienced that are seeking to change history, ignore logic and refuse to acknowledge well established patent law precedent in order to twist the word “inventor” in the U.S. Constitution to mean “first inventor,” which would then call into question the constitutionality of the first to file provisions of patent reform now before the House of Representatives; H.R. 1249.
Simply stated, the overwhelming evidence suggests that the United States Supreme Court, the Federal Circuit and even early political and judicial leaders of the United States all envisioned the truth that one can legitimately be called an inventor even though they are not the first to invent. Unlike the many arguing in this debate I will actually prove this if you keep reading, with actual citation to cases and statutes. You see, when truth is on your side it is easy to come up with support for your argument. Sadly, those who want to challenge truth don’t provide citation to cases, they simply think that the passion of their beliefs ought to be enough to will their erroneous statements accurate. I suspect you will see citation-less arguments in the comments to this very article. But why? If those who disagree are correct why can’t a single citation ever be produced on point when so many can be provided to demonstrate what I am saying is correct? Curious indeed!
But why does it matter whether the law recognizes a Johnny-come-lately as an inventor? Article I, Section 8 of the United States Constitution says that Congress has the power to: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” So if the term “Inventors” means “those who are first to invent,” or the equivalent, then the first to file provisions of patent reform would violate the Constitution. If “Inventors” does not incorporate a notion that of first inventor then Congress would have the right to choose among inventors to reward with a patent, as is currently the case. So it becomes critical to understand whether the Supreme Court and other courts have identified those who come after the first inventor as inventors in their own right.
Without further ado, please allow me to present an overwhelming case to prove that the patent laws of the United States have always recognized the reality that one can be (and is) characterized as an inventor even when indisputably not being the first person to invent.
First, allow me to observe that the history of patent law in the United States is replete with discussion of “first inventor”, “first to invent,” “earlier inventor,” “original inventor,” “later inventor” and “subsequent inventor.” In fact, the Patent Act of 1836 included a defense to infringement that would allow the defendant to demonstrate that the patent owner was not the “first inventor.” The defense in the 1836 Act explained that the defendant would prevail if the patentee was “not the original and first inventor of the thing patented, or of a substantial and material part thereof claimed to be new.” (emphasis added). But what does “original and first inventor” actually mean?
Although Reed v. Cutler would not be considered good law today because the holding is in direct contravention of 35 U.S.C. 102(g), and was overruled by subsequent Supreme Court decisions (keep reading and you’ll see), it is notable because Justice Story’s 1841 opinion gives us a clear understanding of what it means to be an “original and first inventor.” Story wrote: “Under our patent laws, no person, who is not at once the first, as well as the original, inventor, by whom the invention has been perfected and put into actual use, is entitled to a patent. A subsequent inventor, although an original inventor, is not entitled to any patent.” (emphasis added). Clearly, in the mind of Justice Story an “original inventor” could be a “first inventor” or a “subsequent inventor.” Thus, the term “original inventor” meant one who conceived of the invention on their own.
Dating back even further than 1841, in 1813 in the case of Woodcock v. Parker, Justice Story wrote: “The first inventor is entitled to the benefit of his invention, if he reduce it to practice and obtain a patent therefor, and a subsequent inventor cannot, by obtaining a patent therefor, oust the first inventor of his right…” (emphasis added).
While Justice Story’s view that concealed prior art is still, nevertheless, prior art is no longer the law of the land, the 1836 Patent Act together with Woodcock and Reed clearly demonstrate that from the earliest days of United States history it was understood that one could invent separately, later in time and still be characterized as an inventor. There is even at least one case where the subsequent inventor is characterized as the first inventor because the true first inventor concealed. Heath v. Hildreth, 11 F. Cas. 1003 (1841)(“If the invention be the mere speculation of a philosopher or mechanician in his closet, and he takes no steps toward obtaining a patent, but keeps his invention secret, and another person, who is also an original but subsequent inventor of the same thing, obtains a patent for it and brings it into use, it has been held, both in England and in this country, that the patentee in a suit at law is to be considered as the first inventor.”)
But what about more modern cases that would be interpreting laws more familiar to those on the books today? The United States Supreme Court has explained: “it is well settled that a concealed, forgotten, or abandoned invention is not a bar to a patent to a subsequent inventor.” Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926). This is important for several reasons. First, once again we see what should be obvious; namely that if there are those who are considered “first inventors” there are others who are “subsequent inventors.” Second, this case is important because it is a pronouncement of the United States Supreme Court that does away with the notion raised by Justice Story that hidden prior art can and should prevent the issuance of a patent to a subsequent inventor. That is not the law today, so I provide this case to preempt those who will want to argue — pretend really — that Justice Story’s comments on that point are still the law. They are not. Congress and the Supreme Court have long since done away with that interpretation, which wasn’t even a universally held understanding of the patent laws at the time. A subsequent inventor can and does win the patent over a previous inventor who concealed. It is hard to believe the United States Supreme Court would announce a “well settled” rule that violates the Constitution.
But what about the Federal Circuit? The Federal Circuit has explained: “as between an earlier inventor who has not given the public the benefit of the invention, e.g., because the invention has been abandoned without public disclosure, suppressed, or concealed, and a subsequent inventor who obtains a patent, the policy of the law is for the subsequent inventor to prevail.” OddzOn Prods. v. Just Toys, 122 F.3d 1396. So obviously there is such a thing as a “subsequent inventor” in the view of the Federal Circuit, which is completely consistent with what the Supreme Court says.
Still further, according to the Federal Circuit: “Early public disclosure is a linchpin of the patent system. As between a prior inventor who benefits from a process by selling its product but suppresses, conceals, or otherwise keeps the process from the public, and a later inventor who promptly files a patent application from which the public will gain a disclosure of the process, the law favors the latter.” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540.
But what about the predecessor to the Federal Circuit, the Court of Customs and Patent Appeals (CCPA)? According to the CCPA: “it is the simple rule that the property right shall reside in the second inventor who disclosed and not in the first inventor who concealed.” Horwath v. Lee, 564 F.2d 948. It is also notable that Horwath forcefully explains that the law has always favored the party that discloses early because “[t]he man who secretes his invention makes easier and plainer the path of no one. He contributes nothing to the public… Where an invention is made and hidden away it might as well never have been made at all, at least so far as the public is concerned.” This is, of course, true and in reality why a first to file system is far more in keeping with the purpose of the Patent Clause to the U.S. Constitution.
I could keep going on with case after case showing that throughout the 200+ year history the U.S. patent laws there has always been an understanding that there are “first inventors” and “subsequent inventors” and that “subsequent inventors” have been awarded patents over “first inventors.” Furthermore, if you search through United States Supreme Court cases you will find literally dozens of cases where interference proceedings were discussed and directly relevant to the outcome of the case. Never once did the Supreme Court in any of these cases suggest it was anything other than appropriate and justified to grant a patent to subsequent inventor over the first inventor where the first inventor waited too long to file or was not diligent.
What is clear is that the Supreme Court has already addressed the matter of whether can be deemed an inventor when they did not invent first, even saying that it is well settled that a subsequent inventor is the rightful patent owner in at least the situation where the first inventor concealed the invention. That would mean that the Supreme Court would have to overturn at least one of its rulings in order to rule first to file unconstitutional. The Supreme Court overruling earlier cases is extraordinarily rare, and in this case where there are dozens of cases that would need to be overruled or questioned it seems a foolish mental exercise to even ponder the incalculably small odds of the Supreme Court ruling first to file unconstitutional.
It is an undeniable logical and historical truth that if there is one who is a “first inventor” there has to be those who are “subsequent inventors,” otherwise the term “first” and “inventor” are redundant. Hopefully now we can put to rest the tiresome and nonsensical assertions by those unfamiliar with patent law, as well as the assertions of those who should know better. There has always been room in the patent laws for subsequent inventors, many of whom has received a lot of patents over the years.
The likelihood that patents granted to subsequent inventors will be ruled to violate the Constitution in the future asymptotically approaches zero. While nothing is ever truly impossible, very little is as close to impossible as thinking any court would rule first to file unconstitutional.
The frivolity of these current arguments against patent reform does nothing more than to show the desperation and extraordinary lengths some will go to. This is unfortunate indeed because the legitimate arguments over patent reform are being drowned in a see of ridiculous assertions. Truly disappointing.