Have U.S. Patent Laws Become Unconstitutional?

By Adam Ullman
November 6, 2016

Constitution with American flag.As we look at the contentious discussions about the impact of the America Invents Act, IPRs, and other legislative reform on the current patent landscape, it’s important to take a step back and look at how our patent system is enshrined in our nation’s Constitution, the purpose of the patent system, and whether recent legislation impacts the bargained for exchange of the patent system.

The basis for our patent system is spelled out in Article I, Section 8, Clause 8 of the Constitution which grants Congress the power “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.”  In establishing the USPTO, Congress has used its authority under Article I, Section 8, Clause 8 of the Constitution.  The patent system “promote[s] the progress of science and useful arts,” by disseminating information about an invention and how to practice (or implement) it.  This disclosure of information is a benefit to society because a) it teaches our society about the invention and b) it spawns creativity for related inventions.  The example that most directly explains the benefits of disclosing an invention to society and why our government is willing to protect an inventors’ rights to their invention is as follows:  if I have the cure to cancer and keep it as a trade secret and get hit by a bus, the cure to cancer dies with me; however, if I patent my cure to cancer and get hit by a bus, society still benefits from my invention because the patent disclosed my invention and how to practice it.  This dissemination of information promotes innovation for the betterment of society.  The question now is whether Congress has setup the USPTO and our patent laws in a way that is congruent with its obligations under the Constitution for “securing” our discoveries and whether our laws still “promote” as required by the Constitution.

There is little record of how Article I, Section 8, Clause 8 was added to the Constitution.  Since we do not know the founders’ full intent on this matter, I believe it’s relevant to examine the language used in context to the other provisions of Article I, Section 8.  The first word to closely examine in Article I, Section 8, Clause 8 is the word “securing.”  Some will argue that our inventions are “secure” when you are awarded a patent.  I, however, maintain that the patent merely defines the scope of an invention and that it does nothing to “secure” an invention.  In practice, you cannot call the police to help you “secure” your patent rights in the same way you would for the theft of something else.  Others argue that the patent laws allow for litigation to enforce your patent rights, but the exorbitant costs for patent infringement litigation are out of reach for all but the wealthiest of inventors.  Does that make this an equal protection claim or has Congress inappropriately pawned off the responsibility of “securing” an inventors exclusive right to their discovery to the Judiciary Branch?  I believe the latter.

My belief for this comes from the other powers delegated to Congress under Article I, Section 8.  Specifically, the Constitutionally granted powers (and clauses) that support my opinion include Congress’s power: “to declare war” (Cl. 11); “to raise and support Armies” (Cl. 12); “to provide and maintain a Navy” (Cl. 13); “to coin money” (Cl. 5); and “to provide for the punishment of counterfeiting the Securities and current coin of the United States” (Cl. 6).

When the term “securing” is used in the same set of powers that grants Congress the power to declare war, build and maintain an army and navy, and prosecute counterfeiters of our currency, it implies that “securing” an inventors exclusive right to practice their invention should be backed by the full faith and credit of the U.S. government.  With the recent adoption of the trade secret act, why else would an inventor be motivated to disclose their invention in support of the betterment of society.  Strangely, our system is setup where we can record copyrights and trademarks with customs and border patrol, but we are unable to register our patents.  This hardly seems to be proper for any number of reasons. The basis for copyrights and patents are mentioned in the Constitution, but copyrights and trademarks (not mentioned in the Constitution), not patents, can be registered with customs and border patrol.  Yet, patents are supposed to provide the right to exclude from importation, so the inability to register with customs and border patrol absolutely frustrates the property rights system.

Another point to consider is that Cl. 6 specifies “securities” too.  Any good intellectual property (“IP”) license agreement should be recorded under the UCC and this generates a security interest in the IP.  Yet, while Cl. 6 gives Congress the power “to provide for the punishment of counterfeiting the Securities and current coin of the United States,” it seems that securing an inventor’s exclusive right to practice their discovery or protecting the security interest in the discovery is beyond Congress’s ability.  Additionally, every other provision of Article I, Section 8 is enforced by the Legislative branch, not the Judicial Branch or individual citizens.

In a dysfunctional partisan political system, where our politicians discuss jobs being shifted overseas, perhaps they should better look at securing our innovations here to justify the investment in our economy rather than letting foreign corporations profit when they steal our innovations and sell them on our shores.  As more reports come out that patent filings for individuals and small businesses are down and a general recognition that real innovation does not come from large organizations, but rather small ones, it is becoming clearer that changes in our laws have decreased the previous standards that were in place to “promote the progress of science and useful arts.”  As such, it seems to this author that our current patent laws are unconstitutional, or at the very least are thoroughly and completely frustrating the constitutional purpose for which they were created since our laws are promoting less and not “securing” our discoveries. We need to strengthen our patent laws to have a system that promotes the progress of science and useful arts by efficiently and affordably securing for inventors the exclusive rights to their discoveries and innovations.

The Author

Adam Ullman

Adam Ullman is a 3rd generation inventor and entrepreneur. He created his first invention after his freshman year of college, successfully developed The Glove, a wrist-motion based controller for video games, and brought it to retailers nationwide. Adam then worked at Razer and managed the final development, initial production, and market introduction of their first computer mice. Realizing a high need for legal advice in early stage businesses and wanting to better protect intellectual property assets, Adam earned his J.D. and an LL. M. in Intellectual Property, Commerce and Technology from the UNH School of Law. Adam is currently the CEO of Shoe Care Innovations Inc. where he developed and commercialized the first UV shoe sanitizer, SteriShoe®, and he also consults on IP strategy, product development, and IP commercialization through PDCIP, LLC. He is a named inventor on 10 U.S. patents and others internationally. Adam is also a passionate advocate for legislative reform to make it easier for all inventors to protect and secure their IP rights.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 51 Comments comments.

  1. step back November 6, 2016 12:06 pm


    Thank you for stepping back and taking a closer look at that word “secure”.

    It’s been one of my peeve points for years that the latest laws and court decisions do the opposite of securing.

    PGRs (post grant reviews) clearly de-secure inventors of their government granted property rights. They do so without due process and equal protection of the laws as afforded to owners of other kinds of properties.

    The US Supreme Court holds inventors to be presumed guilty purveyors of witchcraft and abstract ideas, aided by their devious familiars (legal counsel) in the conjuring up of obtuse claim language that disguises claims to “fundamental” building blocks. The burden of proof has been shifted to inventors to prove they are not guilty by demonstrating an unobtainable “something more” while using a compass needle that always “directs” itself to the abstractionism pole. This is a perversion of all that had been deemed to be a bedrock of a fair and balanced American justice system.

  2. David November 6, 2016 12:59 pm

    Cooper v Sqaure is scheduled for conference this week. The resolution of that petition should be a clear indicator as to whether these constitutional issues will gain traction.

  3. Simon Smith November 7, 2016 2:58 am

    Hello Adam,

    Simon Smith from eVestigator and “RPL Central”, the case that was never allowed special leave in Australia to fix the full court of the Federal Court’s misunderstanding of what a ‘method of manufacture’ actually is. The sad fact is, well at least in Australia is that our justices are untrained and have no possible ability to understand what they are supposed to hand down judgement for.

    If you were to examine our High Court appeal documents, which the judges were too busy eating donuts to grant, you would note that the actual facts of the appeal clearly pointed out an error of law in:

    a) The threshold standards of Australia’s innovation patent, meaning the judgement was unlawful; and

    b) The misunderstanding of what the patent actually did, explained in a diagram a 2 year old could understand with basic computer knowledge.

    The sad thing is, even in its most simplest format, and this is a pure factual statement, there is no sour grapes, as the patent was ended by the time the litigation completed anyway, the facts of the full court appeal were just blatantly wrong. It should be mandatory that Justices have subject knowledge in areas they are supposed to be making judgements of, or – the court should mandate Expert Witness testimony on both sides to inform the court. Half these Justices don’t even know what a computer is, and how to turn it on, and they are making worldwide decisions that destroy innovation.

    The repercussion? Australia’s inventors walk. No wonder Australia complains about its cyber attacks and is so far behind other countries. No matter how many pamphlets they hand out, or websites they make pretending they know what they are talking about, they are so far behind the US – and at least the US (as it seems) has competence in its judiciary unlike Australia. If the word ‘computer’ exists in a patent, bang – it’s out!

    Some of Australia’s best computer science patent attorney’s have quit due to the lack of appreciation our country has for this expertise. Australia will learn probably the hard way and then when the judiciary are all retired they will watch the news and wonder if they made the right decision when all our computer systems go down.

    That’s my thought – from an international perspective. I am an inventor and Computer Digital Forensics Expert and have been programming since I turned 11 years old. Cheers,

    Simon Smith

  4. Good Morning Vietnam November 7, 2016 7:00 am

    Great thinking here. Jefferson worried that individual inventors would get crushed by vested interest who would steal ideas, produce knockoffs, and drive out innovation. That is why he set aside his hatred for monopoly and supported the patent system in word and deed.

    Take the issue of “pre-emption.” The courts have created pre-emption and have mistakenly used that to prevent market disruption. The problem is that the judges can usually see only the economy we have. Patents are the driving force that enables a new future to take hold. They are supposed to disrupt the current economy. That is their purpose. Patents at a deeper level enable “the brightest people” to develop a zone of economic progress that creates an easily demonstrable shift in economic power towards the best and brightest, the makers of the economy over the horizon that we can’t yet see. Preemption has become a form of protectionism where Article III judges risk overstepping their authority to pick the winners and losers. Preemption is the opposite of promotion and securing the unknown future. The future, the poet said, is already here, and it is happening in the labs and conference rooms of the unknown inventor.

  5. Dennis J Solomon November 7, 2016 8:59 am

    Distinguishing patent-protected products from lawful alternatives is beyond the scope of onsite law enforcement such as police and custom officials – and this is especially true in the crowded arts which constitute the bulk of commerce.

  6. Paul F. Morgan November 7, 2016 9:02 am

    Adam, there has been a lot of artificially sweetened CoolAid spilled on this and other blogs promising unconstitutionality decisions for things folks don’t like, but so far not a single vote from any judge in any decision, in several tries. Also note that several of the changes in patent law complained about the most came from the Sup. Ct. itself, and in mostly unanimous decisions. Others came from highly bi-partisan votes in Congress. So don’t drink all the CoolAid.
    [Since I have no personal or other financial stake here, just long years of patent law legal history observations, I can take a more realistic and objective view of this situation than those whom it is costing personal incomes.]

  7. Paul F. Morgan November 7, 2016 9:35 am

    BTW David, as to “Cooper v Sqaure,” from what I just quickly read, subsequent to that cert petition being filed [objecting to any and all PTO post-grant agency proceedings, not just IPRs] the PTAB IPR found all the challenged claims invalid and the Fed. Cir. has sustained that decision per curium without even bothering with any discussion! [Not making for an appealing case of a clearly valid patent being unfairly and baselessly challenged in a post-grant proceeding?] Correct me if that is not correct.
    But since hope springs eternal, we can all wait and see what happens. Personally I would like to see the Supremes take up one of these cert petitions to end the speculations and client expenses, but those are really long odds.

  8. Anon November 7, 2016 9:53 am

    Mr. Morgan,

    Your portrayal of the discussions around constitutionality remain p00r themselves – and your cheerleading for IPRs (to the exclusion of actually partaking in any of the constitutional question discussions in any meaningful manner) indicate that you are not nearly as “objective” as you would claim to be.

  9. David November 7, 2016 11:40 am


    Whether the patent is good or bad is irrelevant to the question of whether an Article I administrator may cancel issued claims from a patent for intellectual property.

    More broadly, whether the patent is good or bad is irrelevant to the question of whether the validity of an issued patent for intellectual property is a matter of public rights or is a private property right. It is either a public right or a private property right. It cannot be both.

    My point was merely that if Cooper v Square is denied in the coming days, it will likely mark the end (or the beginning of the end?) of the varied constitutional arguments and complaints.

  10. Martin Snyder November 7, 2016 1:19 pm

    AIA was enacted to fix a real problem. The problem is information processing; subject matter not dealt with in the historic development of patent law. The AIA did not address that problem.

    The manifestation of that problem is a mass of patents that should not have issued and a mass of litigation that still draws-in businesses involved with trivial putative infringements, creating existential threats due to the sheer cost and length of patent litigation.

    If anyone still wants to debate that there ever was a problem or that all the intervention(s) were about Google and general anti-patent currents, go right ahead, but history has passed you by.

  11. step back November 7, 2016 2:18 pm

    Ah, another false choice menu: “It is either a public right or a private property right. It cannot be both.

    All real estate is both a matter of private property rights and public rights.
    The public may place certain restrictions (i.e. zoning codes) on the enjoyment of the land and yet the private owner may retain exclusive (or semi-exclusive if easements apply) private rights over the property. It is not an either or situation.

  12. Anon November 7, 2016 3:04 pm

    step back,

    I would beg to differ and posit that it is a binary decision.

    That does not mean that a private property item is free of any or all (public) encumbrances. It merely means that the private property item remains a private property item even with public encumbrances.

    Note that the Congress is not free to place just any public encumbrance on private property. This is where “takings” law comes into focus. It is not a place where a spectrum of “fully public” to “fully private” property comes into existence. The nature of the underlying property itself is much more limited.

  13. David November 7, 2016 3:17 pm

    @9 – I’d love to read the case that says this:

    “All real estate is both a matter of private property rights and public rights”


  14. jbavis November 7, 2016 4:45 pm

    Good Morning Vietnam @ 4:

    Your post may be one of the better posts that I’ve seen, in particular the fact that patents are supposed to disrupt:

    “The problem is that the judges can usually see only the economy we have. Patents are the driving force that enables a new future to take hold. They are supposed to disrupt the current economy. That is their purpose.”

  15. Edward Heller November 7, 2016 5:54 pm

    Adam, the reason we have a Patents Clause is because the states thought that inventions should be protected throughout the nation, as opposed to just within state borders. See, Federalist 42, and Bracha, “Owning Ideas.” In 1789, only States issued patents in the former Colonies. Even with Federal patents, States continued to issue patents for decades after 1789. But within 40 years, the practice died out.

    As to the language of the Patents Clause, it tracked the idea the founders had patent rights were fundamentally common law rights. See again, Federal 43. Just as one could not pirate a man’s work of authorship and publish it, one could not pirate a man’s invention. This idea of protection against piracy goes back to Roman times, and is now recognized throughout the US in trade secrecy laws.

    What was different about patents from trade secret protection, as you suggest, is a requirement that the inventor publish the invention in exchange for broader protection. As we know, this essential feature of patents was first created in Venice, but soon migrated to England.

    But you should also know that in England, the Monarch granted patents on existing trade for one reason or another. By the early 1600s, many in England considered these to be odious. That is why they were banned by the Statute of Monopolies in the 1624 and why the Privy Council maintained jurisdiction to revoke a patent which adversely affected trade. Even so, in 1753, when a patent was being reviewed for validity both at the Privy Council and by the common law courts, the Privy Council surrendered its authority to review the validity of a patent to the common law courts. This was to avoid a constitutional crisis because the courts asserted the exclusive rights to determine disputed issues of fact when “legal rights” were at issue, and certainly, patents were legal rights.

    You should also know and consider that one of the reasons for the American Revolution was one of these “odious” patents – the patent granted by Queen Elizabeth in 1601 to the British East India Company. That company’s monopoly on trade with the American Colonies was the origin of the Boston tea party. Even by 1789, years later, most Americans still thought that patents on trade were odious and that patents on invention should be revocable by the legislatures if mistakenly granted.

    There is no doubt that the argument of the government in MCM Portfolio LLC v. Hewlett-Packard smacked heavily of this antipathy to odious patents. They argued that patents were public rights because “validity” was a public concern and because patents could monopolize trade. There is some merit in this thinking, and it is hard to argue against it. But even if the rights of the public are potentially involved by issuing a patent on an invention, the question still arises as to whether the owner of a patent has a right to have disputed facts resolved in a court of law and to a jury. As I said, the English in 1753 resolved this question in favor of the jurisdiction of the courts. The Americans have now resolved this question in favor of jurisdiction of the patent office, where a patent owner is not guaranteed an impartial jury, a right guaranteed by the Seventh Amendment.

    To some of us, it seems rather like we have now lost one of our fundamental rights as Americans.

  16. David November 7, 2016 6:48 pm

    Ned – the third petition is still pending.

  17. Edward Heller November 7, 2016 7:15 pm

    David, I know. But it really does not raise the Seventh Amendment issue.

  18. Edward Heller November 7, 2016 7:19 pm

    Does the flag of the East India Company remind anyone of some other flag?


  19. angry dude November 7, 2016 9:15 pm

    The question boils down to this:

    if your invention can be reasonably well protected by trade secrets then why on Earth do you want to deal with the broken and corrupted US patent system ?

    I’ m out myself: fool me once – shame on you, fool me twice – shame on me 🙂

  20. step back November 8, 2016 12:25 am

    Angry Dude @16

    You may be right.

    The message that the US Congress and the US Supreme Court is sending to small time inventors (often also NPEs) is this: We don’t like you very much. We want you to go away. We have erected all sorts of barriers and pitfalls to trip you up. So don’t even bother thinking about getting a NPE patent.

    Of course this is not a policy favorable to the nation as a whole, only to the big money players.

  21. Paul F. Morgan November 8, 2016 11:07 am

    Angry Dude, the problem with that is that most inventions, especially those by individual inventors, are NOT protectable by trade secrecy law. Once any article or product containing the invention is publicly sold, trade secrecy protection will end for anything that can be figured out by examining that article.

  22. Paul F. Morgan November 8, 2016 11:10 am

    P.S. If you contract to have products based on your invention manufactured in China, as so many do, your effective trade secrecy protection may end even before your product launches.

  23. angry dude November 8, 2016 12:11 pm

    Paul @18,19

    Well, it’s still a MUCH better deal than relying on (currently worthless) patents

    Most high-tech products relying on some embedded software functionality can be reasonably well protected – there are tools for this, from secure booting micro controllers to custom made silicon ASICS

    Note that even when you give your complete silicon hardware blueprint (mask) to the Chinese foundry to make your ASIC chips they still CAN’T completely steal your product because they do not know how it functions – associated software documentation, codes to run the device, external interfaces, drivers, entry points, debug commands etc

    Even en-encrypted but compiled and obfuscated code running on ordinary MCs and DSPs is MUCH better deal than patent protection – for most of the infringers it would be much cheaper to pay you than to try to reverse engineer and re-implement your code (unless they simply copy your binary in which case there is still a copyright protection)

    But of course, if your invention is a simple tool or kitchen utensil then you are screwed anyway: buy one unit then go to China and have 1 million copies manufactured for a fraction of the cost.

  24. Mr. V November 8, 2016 4:46 pm

    A patent confers a private right but it is also a matter of public concern. The inventor/patentee has the exclusive right to exclude others from exploiting the patented invention; exclusive as in “private.” During patent prosecution, it is the examiner’s job to decide whether or not the subject matter claimed in the patent application can essentially be “carved-out” from the public domain (for a limited time) in light of the disclosure relative to the prior art.

    I really don’t see how anyone familiar with Patent Law could logically conclude that patents are “public rights” when nothing more than the mere disclosure of the invention is conferred to the public as of the date the application publishes.

  25. Anon November 8, 2016 6:01 pm

    Mr. V,

    Your notion of “carving out” is a rather poor one, given the requirements of novelty and non-obviousness fly directly against the (implicit) nature that “to carve out” means that the public was already in possession of something.

    I suggest that you get the basic premises of the patent system down before forming your views.

  26. Mr. V November 8, 2016 8:06 pm

    Anon –

    I’ll concede that “carve-out” is not the best analogy. I’m sorry I didn’t take the time to hold your hand through the various parts of the forest that is 35 USC. It can also be argued that the public is in “possession” (also a poor choice of words on your part) as of the date of publication of the application, which, as I’m sure you already know, can be quite different than what ultimately issues in the patent.

    Given your track record on this blog, I’m not all that surprised at you taking this opportunity to flex your intellectual prowess on this subject like you do on nearly every other thread. Perhaps you should make like a lamp and lighten up. Have a beer, maybe 2 in your case.

  27. Anon November 9, 2016 3:14 am

    You lament not holding my hand, but engage in insulting based on my track record.

    Perhaps it is you that needs to reflect on how best to use one’s time. The advice to “lighten up” addresses nothing related to the current discussion. As it is, your attempted insult comes across rather empty.

  28. DC November 9, 2016 1:03 pm

    Adam, I am trying to understand your point. The Constitution give Congress the power to do several things, including securing exclusive rights to authors and inventors. It seems like you contend that Congress must do so, and that failure to secure those rights to the uttermost is unconstitutional, or that failure to grant the executive branch the power to enforce patents is unconstitutional. Is that the point?

  29. Edward Heller November 9, 2016 3:46 pm

    DC, you hit the nail on the head. The only rights actually secured by the constitution are the right to a jury trial as it existed at common law. That is it.

    I agree with you that Congress does not have to secure rights in inventions. But if it chooses to give exclusive rights in exchange for disclosure of the invention, it cannot also strip the patent owner of his rights to due process (which requires an impartial judge) or his rights to a trial by jury before is patent is declared invalid.

    The argument about Article III is essential an argument for due process.

  30. Edward Heller November 9, 2016 3:51 pm

    Martin, I thought the AIA was generally an effort to get FTF. What happened was that IPR, allegedly an improvement on inter partes reexamination, was snuck in by Google and its allies. Think of the AIA as the Trojan Horse, and IPRs the Greeks hiding inside.

  31. step back November 10, 2016 1:46 pm

    Ed @29

    Forgive me because I am not a Constitutional law expert.

    Isn’t there some provision in there prohibiting the nullification of legal contracts? Isn’t a patent a quid pro quo contract between government and the inventor? And do not the PGR procedures nullify the contract without due process of law (deprivation of life, liberty and property without equal protection under the laws)?

    Sure all citizens are equal. However inventor citizens are less equal than others.

  32. Adam Ullman November 10, 2016 2:39 pm

    DC, as you said the Constitution gives Congress the power to do certain things, but is does not “require” Congress to do these things. The language is “Congress shall have the power to.” However, when Congress enacts legislation to implement one of the provisions in Article I, Section, 8 it has an obligation to adhere to scope of that provision and clause. In setting up the USPTO, Congress has attempted to “secure” our discoveries and thus has chosen to enact implement Article I, Section, 8, but I question if they have met the scope as required by this provision.

    The points that I am trying to make are as follows:

    1) 35 U.S.C. does nothing to “secure” our discoveries and inventions. It spells out a process to define the scope of one’s invention.

    2) The USPTO, which grants a patent, is not involved in “securing” an inventors exclusive right to their discovery. This responsibility, I believe incorrectly so, is punted down the road to the judiciary branch. I would feel differently if the USPTO examined claims of infringement, offered an infringement determination and then had the courts involved for damages, willfulness, injunctions, etc.

    3) There is a way to register copyrights and trademarks with customs and border patrol, but not patents. This is likely because we rely on our courts to determine if there is infringement of a patent, but this also falls short of helping me “secure” my innovations.

    4) Without the government doing more to help a patent owner secure their rights, the recourse is the same as theft of trade secrets. Why would any inventor disclose their invention for the betterment of society without some benefit?

    I hope that helps explain my statement and article.

  33. Edward Heller November 10, 2016 3:11 pm

    Step, don’t you find it odd that an inventor has a right to his day in court, to a trial de novo, if the PTO denies him a patent (after his public disclosure), but that same inventor is denied access to the court before the same PTO strips him of his patent?

    What gauls me is that the PTO is dealing with the property of people here, legal rights, without access to the courts and an unbiased judge and jury.

    This all came about because of what we now call elites, both of the Democrat and Republican variety. In truth, it is more amazing to me that any Republican would favor the bureaucratic state over the rights of the individual. But such was the state of that GOP until the recent election. It had lost its way.

    It is my understanding, however, that the Republican elites are moving to seize the agenda. We need to pay attention and stop them. The battle for the future of the patent system is now at playing.

  34. DC November 10, 2016 8:22 pm

    Step back: The contracts clause applies only to the states, and forbids them from passing laws impairing the obligation of (private) contracts. It was intended to stop what states had been doing in the Confederation, which threatened to undermine foreign investment in the thirteen states. I don’t think the guys who wrote the constitution would have considered a patent, or any other entitlement from a government, as a “contract” even though we currently speak of a quid pro quo.

  35. DC November 10, 2016 8:33 pm

    Adam: The determination of infringement by the PTO would violate the jury trial rights of the 7th amendment. Your item 2 would seem to be clearly unconstitutional. An argument that the patent clause implicitly calls for, or allows, an administrative determination would fail in view of the explicitly stated right to a jury trial. Since we view patents as a property right (I think it is a special kind of property right, not as clear cut as who gets to sleep in my house or drink my beer), a suit at common law is required to enforce it.

  36. Adam Ullman November 10, 2016 11:59 pm

    DC, I never stated that the trial by jury under the 7th Amendment could not be utilized. What I was stating is that the PTO could offer a determination of infringement. If the involved parties wanted to then go to a jury trial, that would not be prevented in any way.

    Getting a determination of infringement from the PTO, the government body that grants patents, could be used as a presumption of infringement, just as 35 USC 282 states that a patent is presumed valid. If done so properly, a jury should pay deference to this determination, but could also disagree with it.

    No issue with the 7th Amendment as the initial determination is not a trial.

  37. DC November 11, 2016 12:57 am

    Adam: Interesting idea. But a presumption of infringement would deprive a defendant of his right to trial by jury. Basic rule of litigation is you have to prove your case. Telling the jury that the case is made by the PTO, but the defendant might disprove it, would displace the jury. It’s like saying you have a right to a jury because your guilty, or, a Q says “Off course your guilty, what would be the point of a trial.” Infringement is an issue fact. Two hundred years of American jury trial require that arguable issues of fact go to the jury. I don’t know of any reason, or any precedent, for displacing the jury with an administrative decision.

  38. Adam Ullman November 11, 2016 1:05 pm

    DC, not true. The trial by jury is 100% preserved.

    What I am proposing is not very different that the PTO performing a prior art search where one needs to demonstrate that the invention is not anticipated by prior art. This “review” should likely not even include the alleged infringer. The patent owner would be asking the government that granted and defined the property right if it believed it’s patent was being infringed. As such, it would be a prima facie determination still subject to a jury trial.

    This would accomplish several things. It could:
    1) Give a patent owner more confidence before bringing a patent infringement claim;
    2) Open up a dialog between the patent owner and alleged infringer where the presumption of determination may be enough to engage in licensing discussions (potentially removing NPE’s from the process); and
    3) Reduce litigation costs. Looking at the system in Germany, they have a shorter/more restrictive discovery. This dramatically lowers litigation costs.

    If the parties still want to proceed with a jury trial, nothing would prevent that. This would merely offer some additional support that not only is the patent presumed valid, but that it is being infringed. As we have seen, many patents in trials are no longer held valid and a jury trial would clearly remain intact to decide if the patent is being infringed.

  39. DC November 11, 2016 1:28 pm

    Adam: I understand what you are saying, and it might be a good idea, but I don’t think courts will see it as consistent with the right to a jury trial (unless big corporations want it that way ( I’m so cynical)). Maybe there is precedent for it.

  40. Paul F. Morgan November 11, 2016 1:49 pm

    Even if both parties wanted a PTO BRI product infringement determination, and even in the more highly unlikely event that either the PTO or Congress wanted such legislation, the PTO is not now equipped for those very different discovery and fact finding issues. Comparing products to patent claims is very different from comparing patent claims to prior art patents or publications.
    If both parties really wanted a faster, simpler, cheaper, and more expert patent infringement opinion they can do so right now – by expert arbitration or even in-suit by an agreed-upon special master’s opinion. Or even by hiring a retired judge to arbitrate. They seldom do any of these because most patent owners prefer law suits to continue until there are defendant litigation settlement payments or lay jury decisions.
    [P.S. I won’t get into debated statistics but it is widely alleged that the majority of patent owners bringing patent infringement suits these days are PAEs.]

  41. Adam Ullman November 11, 2016 5:03 pm

    DC, glad you think this could be a good idea. How would you feel if the PTO issued an “advisory opinion” rather than an initial determination of infringement?

    Paul, I think there is no better office than the PTO to examine the claims they are granting compared to the inventor’s explanation of why they believe something infringes. I agree the PTO is not currently staffed for this, but that’s a different issue.

    Arbitration or other methods you suggest, miss the point of what I am proposing. I am looking for an initial, neutral 3rd party assessment of the infringement claim for the patent holder (that does not involve the alleged infringer). When an inventor runs the risk of being hauled into court for a declaratory judgement, they must have funding to be prepared to go up against a big company before putting them on notice. This system is pro-patent owner and helps the inventor “secure” their rights to their discovery so when they put an alleged infringer on notice they have more credibility than just a patent — it’s a patent that seems to be infringed.

  42. Paul F. Morgan November 11, 2016 8:43 pm

    Adam, what value would a completely ex parte advisory opinion by a PTO employee with no patent litigation experience have, especially when based solely on the patent owners one-sided description of what the infringing product is and how it works? No court or defendant would take that seriously.
    If you want a somewhat better neutral advisory opinion of infringement before suing hire a competent patent litigation firm that is clearly told it is NOT going to be the firm hired to sue on the patent. [Just like anyone facing major surgery gets a second opinion from a different doctor first.] [But for some strange reason patent owners rarely think to do that before suing.]

  43. Adam Ullman November 14, 2016 11:51 am

    Paul, this has strayed significantly from the article topic which brings up a question whether our patent laws are still Constitutional. With that said, I never suggested a single examiner, but rather an organization with some credibility behind it. Law firms and attorneys must zealously advocate for their clients and as such their opinion is not neutral and cannot be used for what I have suggested. Again, I am not claiming to have all the answers here, but rather am raising the question as to whether our patent laws are still Constitutional and posing suggestions how our government can do a better job of “securing” an inventor’s right to their discovery.

  44. DC November 14, 2016 1:18 pm

    Your “advisory opinion” idea is intriguing. Current ex parte reexamination practice sometimes works as an advisory opinion on validity. When the PTO confirms the validity of a patent in ex part reexam, the defendant in corresponding litigation can take that for what it’s worth. In my experience, the PTO is apt to mistakenly confirm validity (that’s a narrow data set).
    Such a system could help both patentees and alleged infringers avoid the consequences of their own biases, and their over-eager litigators. Why aren’t we doing it yet?
    What would be the consequence for a litigant who proceeded in the face of a competent negative advisory? or an incompetent negative advisory? Would the advisory be shared with the jury or hidden from the jury? Would the advisory be public?

  45. Paul F. Morgan November 14, 2016 2:13 pm

    OK Adam, back directly on topic, for another reality adjustment, Cert was just reportedly denied by the Sup. Ct. in Cooper v Square. This is the third and final denial of all the seriously attempted constitutional challenges to the APA IPRs [none of which had been supported by a single vote of any Fed. Cir. judge either].
    Further wishes for draconian action on this subject would be more appropriately directed to Congress, rather that clogging the blogs.

  46. Paul F. Morgan November 14, 2016 3:06 pm

    D.C. you ask why there is not more use of ex parte reexaminations? A major problem is that, unlike an IPR, they take too long. First in their CRU examination and then at the PTAB. [A D.C. suit on the patent will normally get settled or go to trial first.]
    Also, since they are ex parte, only one side gets to say anything, and never gets any depositions, cross-examinations or rebuttals of whatever that one side alleges or swears to. [Reexaminations do get used by those defendants that missed their one year deadline for filing an IPR petitions after being sued.]
    Note that patent owners widely avoid filing reexaminations in spite of all their advantages for them, including the extensive claim amendment opportunities. Even avoiding the new reexaminations [Supplemental Examinations] provided for patent owners in the AIA.

  47. Edward Heller November 14, 2016 3:43 pm

    Paul Morgan. Reexaminations take too long. Meaning? They may still be pending when the lawsuit that inspired the reexamination is over, that is, unless the infringer could convince the court to stay. But if the action or any and all actions for infringement are stayed, then patent term is wasting. Hence, serial reexaminations: Once one is being concluded, file another. The patent owner might never get out of the PTO ’til his patent expires, or he or she goes bust.

    “Taking too long” was the same problem with inter partes reexaminations.

    A good primer on abuses is Mercado, Raymond A. “Use and Abuse of Patent Reexamination: Sham Petitioning before the USPTO, The.” Colum. Sci. & Tech. L. Rev. 12 (2011): 92. http://lockwoodreexam.homestead.com/The_Use_and_Abuse_of_Patent_Reexamination_-_Raymond_A__Mercado.pdf

  48. DC November 14, 2016 4:16 pm

    Paul: I was actually wondering why we don’t do infringement advisories if they are such a good idea. But I appreciate your insights re why some might avoid ex parte reexam. I have just been lucky with the few reexam’s I have filed, filed before, or quickly after answering a complaint. In one case, the PTO totally blew it, but the judge fixed that (so, you can think of the PTO decision as an advisory opinion, which I had to consider when pushing forward to argue the same exact invalidity argument to the judge). In some district courts, invalidity contentions are required within months of answering, so you if have good contentions, you might as well re-format them and send them into the PTO to get a binding (if successful) or non-binding (if unsuccessful) opinion. Perhaps I am naïve. It really cuts into my billing.

  49. Paul F. Morgan November 14, 2016 4:52 pm

    DC, glad to hear your reexaminations went faster. Perhaps the CRU has worked off its prior backlog.
    Saving client legal bills with a cheaper legal alternative to a favorable outcome, when it is available, is what all attorneys are supposed to do if not obligated to do. I am frankly shocked that some defense counsel still apparently do not even counsel trying to do so with either reexaminations or IPRs.

  50. Anon November 14, 2016 9:53 pm

    “Clogging the blogs”…?

    That type of “hush child, don’t tell the emperor that he is wearing no clothes” is the exact opposite of what we should be doing on the blogs.

    And please, Mr. Morgan, let’s not pretend that only three cases in one term (with none of the proponents in those cases quite up to snuff) is anywhere close to being decisive on the matter.

  51. Adam Ullman November 15, 2016 7:01 pm

    DC, again, glad you think this is an intriguing idea. I believe we run into issues with “notice” when an alleged defendant can IPR the patent owner or go for a DJ and haul them into court. If those actions were stayed, the determination could (or possibly should) have an impact on enhanced damages.

    Paul, your suggestion of clogging the blogs is silly. Blogs are designed for discussions exactly like these. While I agree that Congress is the body that would need to pass the new law, this article questions whether existing laws “promote” and “secure” as required by our Constitution. If this has been challenged in a case where cert was denied, please let me know; if it has not been challenged, this is an untested challenge.

    Losing sales to infringers/knock-offs becomes a big issue for small businesses. Time is critical and needs to be looked at in weeks/months, not years.