Did Congressional Debate Over Patent Reform Bill Open Up A Backdoor For An Independent Inventor Defense?

from the follow-me dept

I have to admit that I had almost entirely checked out on the House debate this week on patent reform. I’ve been writing about Congressional attempts at patent reform for nearly a decade now and, from the very first attempt onward, the proposals had serious problems — and each year the bill would get more and more watered down, removing what few good pieces were in there, until we got the bill this year, which had little of substance. As we noted when the Senate approved it, the bill was pretty useless in that it didn’t address any of the actual problems with the patent system. There was a flurry of activity this week as various Reps sought to make changes to the bill (and I’ve never been contacted by so many press reps or Congressional staffers wishing to get publicity for their boss’s amendment than this week), but nearly all of those proposals failed.

The House has now approved its version of the bill and I can only imagine that it will be signed into law pretty quickly — leading to all sorts of talk about how this is the first “overhaul” to patent law in almost sixty years, and blah blah blah. The truth is that there’s very little in this bill that does much of anything. The people complaining about how it will destroy small businesses are being hyperbolic. The most controversial bit of the bill was the debate over switching from a “first to invent” system, as we have now, to a “first to file” system — which most of the rest of the world has. I explained my opposition to this switch more than seven years ago, and my reasoning still stands: a first to file system encourages filing more patents faster with less effort to make sure the patents are good and accurate, which isn’t good for an already overwhelmed patent system. That said, the actual impact of the change might not really be that big, as so many firms already file pretty quickly and given how rare it has been to have someone challenge a patent by claiming they had invented it first and deserved the patent. There are much bigger problems with the patent system (and this bill addresses pretty much none of them).

That said, there was one element of the Congressional debate on this clause that caught my eye. In order to avoid angry ranting about a “first to file” system, supporters of the bill conveniently changed the language to make it a “first inventor to file,” rather than strictly a “first to file.” They claimed that this helps avoid the “Constitutional” question. You see, supporters of keeping the system as “first to invent” have claimed that a “first to file” system is unconstitutional, because the Constitution’s clause that allows a patent system to exist, famously reads:

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

Those who are claiming “first to file” is unconstitutional point out that the clause specifically says that you can only secure such rights to inventors, so if a non-inventor files first, then that violates this part of the constitution. Frankly, that seems like a stretch (and if taken literally, might call into question whether anyone but authors and inventors could hold copyrights or patents. That said, those in support of the “first inventor to file” setup made some interesting statements:

Rep. Jerrold Nadler (D-NY) said the bill still requires patent seekers to be inventors, and argued that the Constitution is not explicit on how Congress must ensure patent rights. Rep. Bob Goodlatte (R-Va.) agreed.

“This is first inventor to file,” Goodlatte said. “You must be a bona fide inventor to qualify for this.” Both Nadler and Goodlatte are on the Judiciary Committee.

Now that gets pretty interesting. Because, in the past, we’ve suggested that what the patent system really needs is an independent invention defense — such that those who come up with things entirely independently of the patent in question are not guilty of infringement. One of the main arguments against that idea, when we’ve brought it up, is that there’s “no such thing” as an independent invention, since once something’s invented, anyone else coming up with the same thing is no longer the inventor. That is, they were defining inventor by being only the very first person to come up with it.

Now, I don’t believe this is true. I think many people can invent the same things entirely independently, and history seems to support that conjecture. One of my major problems with the patent system is that, despite the claim that it’s supposed to help inventors, it actually harms every single other inventor, except the one who gets the patent. That seems incredibly anti-inventor to me. If, as is common, you have a bunch of different folks working on a particular innovation, and all of them come up with more or less the same solution, why should only one get the monopoly? That directly harms everyone else by taking away their right to use their own invention!

So, now, however, we have Congress pretty clearly stating that multiple people can invent the same thing entirely independently. While not in the law, it is in the Congressional record. If we then look at the plain text of the Constitution, it makes me wonder if someone could craft a legal argument that the patent system, as is, now violates the rights of those independent inventors by excluding them from the right to make use of their own discoveries…

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Comments on “Did Congressional Debate Over Patent Reform Bill Open Up A Backdoor For An Independent Inventor Defense?”

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senshikaze (profile) says:

I am sorry Mike, but I don’t see it. Other than the quote that starts out with “This is first inventor to file,”, I don’t really see any mention of independent inventors. And it seems to me that congress only cares about the first to file anyway, regardless of how many people actually invent something.

I still think software patents should be outlawed, though.

KeithV (profile) says:

Re: Re:

Senshikaze, I completely agree with you. The distinction is between inventor and non-inventor, not independant inventors.

During a development project, I ran across no less than a dozen real grossly questionable patents. Of them, only two had ever been reduced to an actual working invention; all the rest were concepts and drawings only.

What the quotes tell me is that I could challenge my standing against the ten that were pipe dreams, because I was an actual “inventor”. The other two, that had acutally been reduced to a working invention by real inventors would still be in my way,

KeithV (profile) says:

Re: Re:

Senshikaze, I completely agree with you. The distinction is between inventor and non-inventor, not independant inventors.

During a development project, I ran across no less than a dozen real grossly questionable patents. Of them, only two had ever been reduced to an actual working invention; all the rest were concepts and drawings only.

What the quotes tell me is that I could challenge my standing against the ten that were pipe dreams, because I was an actual “inventor”. The other two, that had acutally been reduced to a working invention by real inventors would still be in my way.

Lawrence D'Oliveiro says:

Re: ?I don't really see any mention of independent inventors.?

It?s right there in front of you, in the phrase ?first inventor?. If the inventors other than the first are actually ?inventors? and not ?copiers?, then they, too, must have come up with the idea. Otherwise they could not be called ?inventors?, and the phrase ?first inventor? would be as meaningful as ?World Series?.

chuck says:

I see your point Mike. As I read the above story I was reminded of the many times when in search of a “cure” scientists have independently come up with the same answer (solution) I can’t see when multiple inventors are working to fill a known need that they could not come up with the same invention, especially if the resulting invention(s) are the obvious solution to the initial problem. Are we entering a Whack-a-Mole patent application era? Where inventors will rush to file before the idea is completely worked out?

E. Zachary Knight (profile) says:

Here is a list of things I think we need to do to fix out patent mess. This list is not all inclusive and more can be added.

1. Get rid of software patents.
2. Get rid of gene patents.
3. Get rid of business method patents.
4. Require a working prototype with the application.
5. Change the system to a 10/10 system. In this, the applicant has 10 years from filing to get the product to market, if they do, they can continue to control the patent for the remaining 10 years. If not, the patent expires.

Josh in CharlotteNC (profile) says:

Re: Re: Re:

13 years of monopoly protection? Insane.

13 years ago very few people had mobile phones.

13 years ago, if you had a brand new computer, it had a Pentium 2 (or slower) processor, ran Windows 98 (first edition), and was unlikely to have USB ports.

13 years ago, if you were online, you were using a 28.8k dial up modem with AOL.

Hulser (profile) says:

Patent co-"owners"?

we’ve suggested that what the patent system really needs is an independent invention defense — such that those who come up with things entirely independently of the patent in question are not guilty of infringement

So, are you saying that an independent inventor could just use their own invention and not be found “guilty of infringement” or that they would also actually be co-“owners” of the patent and use it commercially?

Because if it’s the former, it doesn’t seem like that great a benefit. (“Yay! If I ever get cancer, I can use the cure that I invented, but I can’t actually make any money from it.”)

And if it’s the latter, it seems like the level of complexity would be huge. Assuming that you could come up with a fair and reliable way to determine if an invention was truly independently developed, how would the co-owner thing work? Could the “new” inventor sue someone for infringement, possibly the same party that the original inventor had sued or was currently suing? Would the new inventor be entitled to any benefits from existing contracts with the original inventor or worked out in previous lawsuits involving the original inventor? Would the new inventor be able to license the patent to other parties, say to the original inventor’s competition? If I trained someone who was otherwise completely ignorant of a particular technical field, put them in a “clean” environment, and they independently invented something in every day use, could we start suing people for infringing on that patent? Could the current owner of a patent do the same thing to get around their own patent expiring, thus leading to a perpetual patent?

I’m not saying that I’m against this idea. There are probably ways to get around the questions I’m asking. But I’m guessing one of the reasons that the “first to” model exists is to keep the whole thing simple, if not fair.

Anonymous Coward says:

Just to clarify a point. The Senate and HR have each passed their own versions of the bill. It now moves to a conference committee comprised of some members of the Senate and HR to reconcile the two versions. Once this is done the bill will be re-presented for vote, and if it passes (odds: 100%), it will be sent to the President for signature and enactment into law.

Over the past couple of years there are some of us who for various reasons have called this “patent deform”, for which we were regularly castigated. Several of your comments above touch upon why this expression was used. For example, while interferences have always been exceedingly rare (typically two inventors filing applications for essentially the same invention), this is hardly a reason to change from one filing system to the other if its end result is to turn things into a race to the USPTO. Before, inventors were cut some slack to allow for further development, testing, etc. before filing an application. Now, it will all be a race, and in my view does not bode well for filing relatively comprehensive applications that actually do teach the public what has been done. Now it will be all about speed, and with speed comes cutting corners regarding the comprehensiveness of disclosures. This worsens the problem as people shift to a “we have to get it in quickly; no time to reflect, experiment further, etc.” This was seen as a step backwards if one of the fundamental goals of the patent system it to “educate” the public in a generally comprehensive manner.

Pre-1980 there were three basic processes associated with examining applications, examinations, on accasion interferences, and reissues (either to correct minor errors or to narrow/broaden some claims). In 1980 it changed to four with the additon of ex parte reexams. Later it was changed to 5 with inter parties reexams. Now there will be somewhere in the order of about 8 processes. In the dogged pursuit of speed, all these processes will be instituted to ameliorate problems associated with speed. The net effect will be to make the process much more comples, much more expensive, much more unpredictable, and certainly require the hire of more people on the government payroll to handle problems/issues, none of who will be part of what is really needed…more examiners to handle the examination of applications so that each examiner can devote some additonal increment of time examining an application, identifying relevant prior art, and then engage in more thoughtful analysis and decision making.

Still another is Congress’ refusal to give up its opportunity to raid the USPTO coffers and divert money to the general fund, where it can be used for whatever strikes Congress’s fancy, which is precisely the main reason the USPTO has been unable to obtain and retain staff sufficient to make the system work as intended. The USPTO will continue to suffer staffing problems, and the result of this is all too predictable.

The above are just examples, but they fairly well illustrate that there is nothing likely to result from so-called “reform” that will mitigate real problems. Moreover, it will introduce significant uncertainty in the body of law that is the dream of litigators, who almost to the person are not steeped in the intricacies of the law itself. Anyone even remotely familiar with patent law realizes that the end result will be for the long term an increase in litigation, and not a decrease as some of the act’s proponents would have you believe.

BTW, talking about First Inventor to File versus First to File is pure doublespeak, and raising it as a rationale is yet again likely to engender more litigation.

I have always questioned the constitutionality of the “work for hire” doctrine. Stanford v. Roche certainly lends a measure of support for those inclined to challenge the constituional legitimacy of this section of copyright law.

On a final note, I see nothing in the proposed legislation that lends support to any independent inventor defense. Quite the opposite. The law will plod along as before where almost contemporaneous, independent inventionsmay be used, as has always been the case, as a factor in establishing obviousness under Section 103 to Title 35.

out_of_the_blue says:

Don't skip "whether anyone but authors and inventors"...

as it’s a key point to move forward from the current swamp of corporatism. Also, the words from the Constitution are “for a limited time”. Together those make a reasonable approach to copyright and patent that have been subverted and perverted by the rise of corporations. Corporate “authors” are effectively immortal, have huge incomes which can finance sheerly speculative patents filings without a real product in hand, and so long as patent rights can be sold to other than “inventors”, they become a mere hook to hang exortion demands on.

So, as usual Mike, you mention the cure, then leap right back into dealing with tertiary actualities and legalisms that should simply be swept aside.

David Good (profile) says:


I am a little confused. Does this mean that if an inventor works for a company, let’s say GE for example, the inventor has to file the patent application? Or is GE the patent holder?

Last time I checked if an inventor was doing work for hire the company he worked for would be the patent holder, not the inventor.

What if an independent inventor is really busy and chooses to have a representative file the patent for him? This seems unclear.

Anonymous Coward says:

Re: clarification?

There is no “work for hire” equivalent in patent law. In the first instance all rights associated with a patent reside with the inventor, whether employed by GE or otherwise. This is precisely why most employers, at the time new employees come on board, require some, but not all, employees to presently assign rights to them covering certain classes of future inventions (unless, of course, you worked in the past for Stanford. See: Stanford v. Roche, issued about two weeks ago by the USSC.)

Anonymous Coward says:

If you put all of the pieces together: only the inventor can file for a patent contitutionally, rights can’t be sold (right to sue proven by the Righthaven debacle, but yet I can’t see my citizenship rights either), it seems like the current content industry doesn’t really own the content, constitutionally, that they are always complaining about people stealing.

Stephan Kinsella (profile) says:

Not sure I see it the same way

Mike, I’d love an independent inventor defense (plus prior user rights). But look, the patent law already has various requirements for being awarded a patent, and one of them is you have to be the inventor of what you claim (and this does not mean no one else independently invented it; you just had to independently invent it yourself).

As it is, if someone else is an independent inventor of the same idea and files a patent claiming the same thing, then you have an interference proceeding, because of the rule that you cannot have two patents to the same claimed invention. And that proceeding then uses the first-to-invent rule (which does not assume the second guy is not an “inventor”–only that he’s not the first) to determine who gets the patent.

So if you move to first to file, that only means that in an interference, you make the decision based on filing date not conception date. But the requirement that you have to be “the inventor” of what you claim, to get a patent in the first place, will not be eliminated AFAIK. I think the congressmen were just emphasizing this, by saying first INVENTOR to file. Of course it’s first inventor to file, since if a non-inventor files, he is not entitlted to a patent at all. So I do not see this emphasis as recognizing that multiple inventorship is possibly any more than was already recognized in the law, in the first-to-invent rules themselves. I don’t see that this means there is an independent inventor defense on the horizon at all.

Gene Cavanaugh (profile) says:

Patent reform

Where to start? In spite of the overall very high quality of Techdirt blogs, there’s this:
1. The HOUSE approving a bill does NOT make it ready for the President to sign!
2. First to invent CLEARLY has problems, with massive abuse. Primarily, though, it is a question of fairness, as the world goes, so should we.
3. We are retaining the Provisional Patent Application, so we do NOT have the need to rush to the patent office!
4. Yes, independent inventors should be protected – but wow! Would that be abused! You know it would!

Anonymous Coward says:

Perfectly Simple Fix

As the economic losses from the broken patent system spiral ever higher, nobody is addressing the real cause of the problem. The whole extortion racket, which is now the end-game of the patent system, is built on the offense of patent infringement. Get rid of patent infringement. Inventors are entitled to the exclusive right to be known as the inventor named in the patent. End of story. They do not get any extra rights. They do not get the right to prevent others from using the patent. That would not “promote the progress” would it? So the idea of patent infringement was always a mistake. Repeal the part of the law which defines patent infringement and makes it illegal. With infringement gone, the extortion racket is gone and the economic losses stop. Wake up, Americans. There are other parts of the world where it has been recognized that having a legalized extortion racket, destroying your manufacturing sector, is economic madness.

LordBinky says:


Just going back through TechDirt articles and came across this one, and something popped out screaming “That argument negates all patents!” I don’t know if this is in the comments somewhere.*points to subject* So forgive me if it is. The arguement of “once something’s invented, anyone else coming up with the same thing is no longer the inventor” deny’s all patents ever. You can not claim to have invented something, if it has been invented anywhere and anytime before. It does not matter if you had no knowledge of this invention. Therefore you cannot prove that an invention has not been done before without a complete record of time since the begining of the universe. Without proof you were the first to invent, and you cannot claim that not knowing or being unable to find a previous inventor makes you the legitimate inventor, all patents are voided until a complete record of the past to the present across the universe is finished.

experienced (profile) says:

here's the drop

In these “Error of Terror” days… warrantless wiretaping/surveillance/NatSec papers are allowed on nearly all of us… but concentrated on the most valuable of us, or most ‘threatening’ (to tyrants).

MANY bad agents/ ‘screw-crews’ in NSA & FBI have caved to ‘personal exceptionalism’ instead of ‘American exceptionalism’; they voraciously work towards the former (possessing: means, motive, & oppty). Fortune 500’s & Private Equity’s with contacts within such use these ‘fallen angels’ as their personal mafia. FISA/PatAct is now used largely for this… not the “terrorism” they drumbeat daily.

For every ONE (1) “terror event” claimed to be thwarted… 100k patents/(c)’s/(TM)’s/Trade Secrets/business strategies/Financial Trades/etc… are front-run/”filed first” by these rogue intel gangs at the expense of American Innovators/ capitalism. Do you suspect such is happening to you (ANY American who communicates/collaborates overseas… or who has an “Axis of Evil” flare to their ethnicity)?

Well, maybe you’re not crazy (like they want you to believe)!!! Close to 50% of patents issued by the USPTO the past 10 years came from such demographics. Now do you ‘get’ why they ‘got’ “USAMA” just before the FISA/ PatAct extension vote? AND, exactly while they’re sending first to file “patent reform”???

Oh, and now hear how often Obama is pushing Americans to innovate!!! You are supposed to be smart people who see the future using the truth in front of you… what happened???

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