On May 8, 2013, a federal judge in Florida dismissed a constitutional challenge to the AIA’s first-inventor-to-file system, concluding that the plaintiff lacked standing to bring suit. In dismissing the case, the judge ruled that plaintiff MadStad Engineering and its owner had not established a “certainly impending” injury.  

MadStad argued it had standing based on four asserted injuries. First, due to the first-inventor-to-file system, it expended additional money to maintain heightened computer-security measures to protect its data concerning potential inventions from being hacked by intellectual-property thieves. Second, the first-inventor-to-file system caused it to acquire and maintain additional equipment for in-house product development and testing so that it could avoid sending unpatented intellectual property to outside vendors. Third, the first-inventor-to-file system caused it to spend more time and incur higher costs to file additional patent applications to protect its ideas. And, fourth, it lost business and investment opportunities because the first-inventor-to-file system deters inventors from sharing ideas with potential partners and investors.  

In his order dismissing the case, the judge concluded that none of MadStad’s alleged injuries constituted a concrete and imminent injury-in-fact that was fairly traceable to the AIA’s provisions. Rather, the judge ruled, MadStad’s alleged injuries were based on an attenuated chain of possibilities and did not present a prospect of a “certainly impending” injury. According to the judge, a determination of the constitutionality of the AIA’s first-inventor-to-file system will have to “await a more tangible, immediate, defined, and sharp dispute by a more directly affected party.” 

This ruling suggests the constitutionality of the first-inventor-to-file system will likely remain unanswered until an original inventor who files an application for an invention, but who was not the first to file an application for that same invention, is denied a patent and seeks relief in federal court.