Is the Proposed Patent Law Reform Unconstitutional?

Patent Law

October / November 05 By: Mark Baron Volume 3 Number 5

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Congress will further consider and debate the Patent Act of 2005 with hopes of finalizing a bill that will improve patent quality, reduce patent litigation costs and harmonize the United States Patent System with other countries. Unless the proposed legislation is significantly altered, however, research and development policies across all industry will face considerable upheaval in their efforts to adjust to dramatic changes in the patent system.

Among the many revisions to the patent statute, the act introduces provisions altering two distinguishing features of the U.S. patent system:

—€¢ Awarding patent rights to the "first inventor to file" a patent application, as opposed to the current system that awards patent rights to the first person to invent, and
—€¢ Eliminating the requirement that a patent application must include the "best mode" of the invention.

Not only would these proposals force tremendous change in corporate policy, but constitutional principles upon which the patent system was founded could face extinction as well.
The patent system was established by Article 1, Section 8, Clause 8 of the United States Constitution and first codified in 1790. The Constitution grants Congress authority to promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries. U.S. patent jurisprudence has accordingly recognized the equitable principle of preserving for an inventor proprietary interest in an invention, even if the inventor was not the first to file a patent application for the invention.

Similarly, based on the Constitutional grant, Congress enacted a "best mode" requirement of patent applications designed to promote the progress of science by ensuring patent applicants fully disclose "the best mode contemplated by the inventor of carrying out his invention." This stringent requirement necessarily imposes a high burden of disclosure to the patent office by an applicant, but also safeguards against applicants withholding critical technology in their disclosure.

While the goal of harmonizing intellectual property laws with other countries in an increasingly global economy is desirable, global conformity should not supplant the Constitutional mandate of Congress to preserve inventors' rights and promote the progress of science. Accordingly, Congress has charged the United States Patent and Trademark Office with a stated mission of ensuring that the intellectual property system contributes to a strong global economy, encourages investment in innovation and fosters entrepreneurial spirit. Changes to the patent statute should not be contrary to these principles, nor should changes contravene equitable principles of the patent system established through common law.

The abandonment of a system that ensures that the first person to invent retains proprietary interest in the invention appears to be contrary to the Constitution as well the equitable principles upon which U.S. common law system is based.

The two proposals have surprisingly not encountered widespread public opposition, however, as the requirements have been labeled as subjective elements that bear difficult standards of proof during patent enforcement.
Prominent intellectual property professional organizations, such as the Intellectual Property Owners Association, the American Bar Association—€˜s Section on Intellectual Property Law and the American Intellectual Property Law Association have all publicly endorsed the proposal. Furthermore, the National Academy of Science and the Federal Trade Commission both issued reports on the patent system preliminary to the current proposed legislation, similarly endorsing the changes.

Inventors and entrepreneurs seeking to obtain patent rights will face substantial hurdles to obtaining a patent. Independent inventors particularly are often less patent savvy and more prone to delays in filing a patent application. Any delay in filing an application could fatally impact patent rights of the true inventor.

Corporate research typically proceeds by committee review of research groups to determine which technology meets patent statutory requirements and commercial viability standards to seek patent protection. Streamlining the committee process would be necessary to ensure patent position for technology.

Further, elimination of these "subjective elements" would most likely reduce the patent quality that the act seeks to bolster. The hastening of patent procurement strategy to ensure speedy filing of applications to obtain the earliest possible filing date contrasts with the current system that allows an inventor and patent representative to engage in substantial discourse in order to fully develop an inventive concept and fully develop and disclose the invention to the patent office in an application. The new system would not allow appropriate time to fully develop the invention. Patent applications would accordingly contain hastily prepared disclosures where the inventive concept has not been fully developed.

The net result of the act would therefore reduce the quality of patents and most likely increase enforcement issues arising in a litigation context, both of which are contrary to the goals of the legislation.

Mark Baron is an associate in the Boston office of Kirkpatrick & Lockhart Nicholson specializing in intellectual property law.