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.
Patent Act of 1793, Ch. 11, 1 Stat. 318-323 (February 21, 1793).
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.