On September 8, the U.S. Senate followed the House in passing the "America Invents Act," which the President is expected to sign it into law on Friday, Sept. 16.
The Act makes a number of wide-ranging, significant changes to U.S. patent law. The one that has captured the most attention in the legal and mainstream media, and that is the subject of this post, is the adoption of a "first-to-file" rule for determining who the first inventor is. The change is important, since disputes over who invented a new technology arise fairly frequently in patent law. "This phenomenon of simultaneous discovery -- what science historians call "multiples" -- turns out to be extremely common." Malcolm Gladwell, "In The Air" (The New Yorker, May 12, 2008) (available online here) (citing, among other examples, the telephone, invented by Alexander Graham Bell and the less well-known Elisha Gray, who filed their patent applications on the same day).
The first person to win the race to the patent office and file an application is deemed the first inventor under a "first-to-file" system. U.S. law has long had a "first-to-invent" system, in which the Patent and Trademark Office (in an interference proceeding) or a court (in a patent infringement suit) tries to determine who actually invented first.
The unhappiness in some quarters over the first-to-file rule is reflected in an email I received in early September from the Ohio State Bar Association Intellectual Property Section, which I quote below:
Dear Section Members:
The OSBA Intellectual Property Section has discussed the various bills comprising the Patent Reform Bill over the past year, and all the members of the Section at the meetings when the legislation was discussed were against the Patent Reform Bill. One of the most troubling provisions of the Bill is the change from the First to Invent to the First to File system. Members expressed strong concerns that the First to File system will harm small businesses, individual inventors and universities, since the financial circumstances of these groups often necessitate that they wait until after an invention is developed before incurring the cost of filing patent applications.
The Senate will be voting on the Patent Reform Bill next Tuesday. We urge you and your clients to contact Senators Brown and Portman. [Contact information for the Senators is omitted.—Don B.]
For the record, I did not contact Senators Portman or Brown before the vote on the Bill (which passed the Senate 89 to 9). The perceived financial burden of patent applications cited by the OSBA section may be mitigated by a provision in the new law that treats an inventor's pre-filing "public disclosure" as the equivalent of a filing in some instances. Further, the law does bring U.S. patent law into harmony with patent law in the rest of the world, in which "first-to-file" is the norm.
The main virtue of "first-to-file," though, is its apparent simplicity. Critics of the "first-to-file" rule should also note that the old rule started with, in effect, a presumption based on who filed first. The first-to-file under the old rule was called the "senior party" and the second to file was the "junior party," with the burden of proof on the junior party. Under the old rule, the next step in the analysis was determining who was the first to "reduce" the invention "to practice", i.e., make a working example. Again, the first to file had a significant advantage, because the filed application was considered a "constructive" reduction to practice.
The first-to-file was not conclusive, though; when someone challenged the first-filed party with a claim of prior invention, some fairly labyrinthine rules and tests became applicable to determine who was first (as opposed to determining who’s on first, which can also be a complicated question). For example, an earlier, proven, actual reduction to practice trumped the constructive reduction to practice date. However, the later to reduce to practice could be deemed the first inventor if he was the first to "conceive of the invention," but only if he also showed "diligence" in reducing to practice from the date of conception to the date of reduction in practice, e.g., the time period from the first conceptual drawing to the first successful prototype. Diligence needed to be shown for that entire time period. Whether diligence existed was a question of fact. Further, for the date of conception to be applicable, the inventor would have to show evidence that he had the "complete" conception in mind. Moreover, from an evidentiary standpoint, a claim of earlier conception or reduction to practice required corroboration. An interested person's oral testimony (“I invented it first – I swear”) requires documentary corroboration (such as a dated, witnessed laboratory notebook), although, in general, corroboration is a “totality of circumstances” test. Note also that these concepts were designed to be applied to a priority dispute between two parties. Law professors wrote a number of articles raising "priority paradoxes" that could occur when one tried to apply the first-to-invent rules to a priority dispute involving three inventors. Another wrinkle under the old system was that the inventor who "abandoned, suppressed or concealed" the invention forfeited a claim to being the first inventor. "Concealed" could include, but was not limited to, keeping the invention a trade secret; if, in contrast, the invention were shown to potential trade partners, one would nevertheless need to consider whether they were shown the invention confidentially. "Abandoned" meant failure to pursue a patent after inventing -- shelving the invention, essentially. No amount of time was conclusive to show abandonment under the old rule; it was a question of fact.
Have you got all that? And that's just an abbreviated version of first-to-invent law -- the basic points of that area of law that came to mind. In short, while the critics of the first-to-file rule have a point about the specific effects of the statute (that may or may not be confirmed by empirical experience), it's also a fair point in this context that complexity in the law generally tends to lead to more expense and uncertainty.