Is the America Invents Act unconstitutional?

When the Framers drafted the U.S. Constitution, they conferred upon Congress the right to grant patents to authors and inventors for their writings and discoveries. Under the first-to-invent system currently utilized in the U.S. prior to this year’s America Invents Act, the patent office awards limited monopolies to inventors who were first to conceive of a previously unknown invention or reduce it to practice. If two patents are filed and granted for the same invention, a court will conduct interference proceedings to determine whom the rightful patent owner is.

 

This system presents significant difficulties for courts attempting to properly award patent rights, requiring them to take into consideration each inventor’s time of conception and reduction to practice, as well as the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to the conception of others. Such interference proceedings can become extremely complicated and imprecise, providing ample impetus for the government’s desire to employ a more streamlined approach to granting patents. In addition, the U.S. is the only country following the first-to-invent system, whereas the rest of the world has been following a first-to-file system. In the spirit of harmonizing patenting systems on a global scale, it makes sense, therefore, for the U.S. to assimilate to the majority standard.

 

Yet, does the first-to-file system subvert the Framers’ intentions in granting patent rights? I asked this question of Director David Kappos at the Finnegan Distinguished Lecture on Intellectual Property at the American University Washington College of Law on November 30. I approached him during the networking dinner following his keynote lecture on the impact and goals of the America Invents Act to inquire whether a first-to-file system might be unconstitutional by granting patents not to “inventors” for their “discoveries,” but rather to the first person to win the race to the patent office, regardless of whether he was actually the first to conceive of or reduce the idea to practice. Director Kappos said he appreciated my question, but emphasized that the America Invents Act is very much in keeping with the bounds of the Constitution, and explained that, while the U.S. has been operating under a first-to-invent system since the patent office’s foundation, Thomas Jefferson envisioned a system much more akin to a first-to-file regime.

 

Giving the words “inventor” and “discovery” their meanings as they were understood at the time of the Constitution’s inception, patents should be granted to one who produces something new by revealing or disclosing a secret. The first-to-invent system closely conforms to this interpretation by granting a limited monopoly to the person who conceives of something new first. One would do well, however, to look beyond the dictionary definition of the words in the Patent Clause, and instead consider the Framers’, and especially Thomas Jefferson’s, the founder of American patent law, intent in drafting that clause.

 

In a time when the Framers were hesitant to carry on England’s practice of granting monopolies, Jefferson defended the patent system based on its utilitarian and economic justifications. He desired to confer the privilege of monopoly on inventors who shared their ideas with the world at large, just as an inexhaustible flame spreads the light of understanding throughout the world. In this way, one can interpret the Patent Clause’s purpose as encouraging a first-to-file system, insomuch as this regime would reward those inventors who exposed their ideas to the public first. The first-to-invent system, in contrast, grants exclusive rights to an inventor who may have been harboring an idea for years before bringing it to light, a practice which forestalls Jefferson’s economic and intellectual goals.

 

Attempting to interpret our Constitution’s writers’ intent over two hundred years later is a daunting task, and leaves much room for differing opinions. It is likely that, over the next year before the America Invents Act is enacted, scholars, attorneys, and politicians alike will voice their support or concerns for the propriety of converting the U.S. patent system from first-to-invent to first-to-file. In the midst of this discord, it is encouraging to know that the Director of the U.S. Patent and Trademark Office is convinced of the propriety of the new system, and that his conviction is grounded in a firm understanding of the Framers’ intent.