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Reinventing Patent Law: Congress Considers Adoption of "First to File" Rule for Patents
Seymour J. Mansfield, Attorney at Law
The Congress shall have 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. -U.S. Constitution, Article I, Section 8
Almost a year ago, in April 2007, a bipartisan group of leaders from the U.S. Senate and the U.S. House introduced identical patent-reform legislation that experts believe has a good chance of passing. The Patent Reform Act of 2007, introduced by Senators Patrick Leahy (D-Vt.) and Orrin Hatch (R-Utah), and Representatives Howard Berman (D-Calif.) and Lamar Smith (R-Tex.) is similar to legislation that has been tried in years past but never succeeded.
The Act updates current patent laws and provides reform for patent seekers and patent holders. Among many important reforms, the bill would create a pure "first-to-file" system.
The United States is currently the only country in the world that gives priority to the application that claims the earliest invention date, regardless of which application arrives first. The first-to-invent doctrine, first enacted in the Patent Act of 1836, and now codified in 35 U.S.C. § 102(g), a patent will not be issued to a later inventor or applicant, if the invention claim, was made in United States by another person, who has neither abandoned, suppressed or concealed the prior invention. Priority among rival inventor applicants is decided by the United States Patent Office in int erference proceedings.
The first-to-invent system is thought to benefit small inventors, who may be less experienced with the patent application system.
Adopting the first-to-file standard would bring this country in line with the rest of the world. Foreign nations have repeatedly insisted that the United States adopt a first-to-file system. While the General Agreement of Tariffs and Trade ("GATT") does not mandate the first-to-file system be adopted by the United States, the World Intellectual Property Patent Organization Patent Harmonization Treaty ("WIPO Treaty") requires the United State's adoption of a first-to-file system.
Critics of the first-to-file system also contend it will create a "race to the mailbox," and result in sloppier, last-minute patent applications. Other critics cite the provisions of Article I, Section 8 of the U.S. Constitution, which they claim grants Congress the authority to adopt a system for securing the rights of inventors, not second inventor-first filers, claiming the first filer rule would be unconstitutional. However, the first-to-invent system requires the United States Patent and Trademark Office (USPTO) to undertake lengthy and complicated "interference" proceedings to try to determine who invented something first when claims conflict. The first-to-file system, supporters contend, would inject much-needed certainty into the patent application process.
The American Bar Association's policy-making House of Delegates endorsed the first-to-file rule in 2005 at the recommendation of its Intellectual Property Law Section.
One problem with the proposed "first-to-file" rule contained within the Act is that it is not a pure first-to-file. Many first-to-file proponents, including the Intellectual Property Law Section, have cooled to some of the provisions in the legislation before Congress that would commit the United States to the first-to-file rule only if Europe and Japan agree to adopt a U.S.-style grace period that would allow an inventor to file a patent application up to one year after the invention is made public. In effect, that would retain some semblance of the first-to-invent rule. This grace period provision is very controversial in Europe and Japan, and conditioning adoption of a first-to-file regime on other countries' modification of their systems is seen as essentially nullifying the effect of the change.
Few experts are willing to predict when and if Congress might finally agree on legislation - or what its final substance will be. If the end product is a first-to-file system, free of conditions, then the Congress will have affected a sea change in the patent law system, bringing the United States in line with the rest of the world and leveling the playing rules in the ever-increasing global economy a change that is sorely needed in light of ever-increasing globalization.
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Seymour J. Mansfield is a founding shareholder of Mansfield Tanick & Cohen, P.A. His practice includes complex and class action litigation (including antitrust and consumer protection cases). Mr. Mansfield is the Firm's representative for Lawyers Associated Worldwide (LAW), an association of independent law firms located in more than 100 major commercial centers throughout the world. Membership in LAW allows member firms to service the legal needs of clients that are expanding their operations and relationships into new domestic and foreign markets because of the increasing globalization of the business world. Mr. Mansfield has served on LAW's Executive Committee (governing board) since 2004. He can be reached at 800-4016-194 or via e-mail at smansfield@mansfieldtanick.com.
