IP Law Daily, PATENT NEWS: MadStad brings constitutionality challenge of “First-Inventor-to-File” provisions to High Court, (Oct 2, 2014)

By Peter Reap, J.D., LL.M.

An inventor (Mark Stadnyk) and his Florida company, MadStad Engineering, Inc. (collectively, “MadStad”), have petitioned the U.S. Supreme Court to review a ruling by the U.S. Court of Appeals for the Federal Circuit that they lacked standing to challenge the constitutionality of the “First-Inventor-to-File” (“FITF”) provisions of the Leahy-Smith America Invents Act (“AIA”).

In July 2012, MadStad filed suit against the USPTO, its then director in his official capacity, and the United States of America in the federal district court in Tampa, Florida, seeking a declaratory judgment that “First-Inventor-to-File” provision of the Leahy-Smith America Invents Act (“AIA”) was unconstitutional under Article I, Section 8, Clause 8 of the U.S. Constitution and that the challenged provision was not severable from the remainder of the Act. MadStad requested a permanent injunction barring enforcement of the AIA.

The AIA was signed into law on September 16, 2011. Section 3 of the AIA generally provides that priority among patents and patent applications will go to the first inventor to file a patent application. 35 U.S.C. § 102 (2012). Before the AIA, the USPTO typically gave priority to the first to invent.

In its petition, MadStad contends that AIA’s elimination of the traditional “First-to-Invent” system of patent law with a new “First-to-File” system (described in the AIA as the FITF system) flies in the face of traditional practice and the Constitution. The FITF system awards the patent not to the first inventor of a genuine discovery but rather to the first to submit an application to the USPTO. This was unconstitutional because the intellectual property Clause of the Constitution bars Congress from vesting patents in anyone but the actual “Inventors” of genuine “Discoveries.”

News: Patent