Thanks for your comment. I would disagree that the America Invents Act is unconstitutional. The U.S. constitution doesn’t define a “first-to-invent” system. There isn’t even a mention of that system. It was simply the creation of Congress. Article 1, Section 8, Clause 8 of the Constitution states: “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.” As one can see, there is nothing regarding how one is to decide who has invented something first. (Nor is there any mention of companies owning the inventions of their Inventors, but that is a different problem, one which arose long before the enactment of the America Invents Act.)

There are two misconceptions in the idea that the new system is unconstitutional. First is the belief that under the current system, the first-to-invent inventor always gets the patent. This isn’t the case. Given more than one inventor within a short space of time, who gets the patent may turn on the diligence of the inventor in reducing the invention to practice, or whether an inventor was deemed to have abandoned, suppressed or concealed the invention. In many cases, over at least the past hundred years, many patents have been awarded to the later-to-invent. In any case, the current system does not award the patent to the inventor who conceives of the invention first. The system requires a reduction of it to practice.

Second, the constitutional argument seems to embody the idea that inventions happen only once and the person who comes later is a thief. Yet inventions may be invented by multiple inventors, working independently, with no knowledge of each other. There is nothing in the Constitution that prohibits Congress from awarding a patent to the inventor who filed first, based on the benefit received by the public. I have heard law professors argue that the public benefit is irrelevant because patent was “originally” conceived of as a property right akin to real property, but the Constitution clearly says “To promote the Progress of Science and the useful Arts,” and that goal would not mean anything if there was not an accompanying public benefit. Those who drafted the language were not making an abstract point.

The notion that the first-to-invent system protected the small inventor who had nothing more than an idea and the gumption make his fortune on it is mythical. Certainly today, acquiring robust patent rights requires a high degree of sophistication and substantial financial investment. As the New York Times has noted, there is no evidence that the first-to-invent system is better than the first-to-file system for the individual inventor. Yet there is reason (although not yet evidence) to think the opposite: the first-to-file system provides greater patent certainty, which should allow inventors to file early and raise money. In the first-to-invent system, there was a built-in uncertainty as to who was the first to invent which in more recent years clearly benefited big businesses that had the resources to mount interference actions. That uncertainty also provided a poor foundation for inventors to begin to monetize their inventions.

None of us can know for certain whether the first-to-file system will ultimately prove better, but the potential is great for improvement in the United States patenting system. Moreover, given that we are in a global economy, the relative harmonization of the US laws and practice in other countries is another reason for optimism.