The U.S. Patent and Trademark Office (USPTO) has filed its opposition to a lawsuit challenging the constitutionality of the Leahy-Smith America Invents Act (AIA), and the plaintiffs have filed their reply to the opposition. MadStad Eng’g v. USPTO, No. 8:12-CV-01589-SDM-MAP (U.S. Dist. Ct., M.D. Fla., Tampa Div., reply filed September 13, 2012). Details about the litigation appear in issue 41 of this Bulletin.

The government argues that the plaintiff, a “garage inventor” who holds a patent on a motorcycle windshield, has failed to show irreparable harm if the AIA and its new first-to-file patent system take effect, as scheduled, in March 2013. Because irreparable harm is needed to justify a preliminary injunction, the government contends that such relief is unwarranted. The government also forcefully argues that the AIA awards patents to “inventors” only and thus, that “first filers may only receive patents if they are in fact inventors.” The government further notes that “derivation proceedings replace interferences” under the patent reforms; the derivation proceedings will “determine whether one applicant or patentee derived—i.e., stole—the claimed invention from a true inventor and then applied for a patent, without the inventor’s authorization, before the inventor.”

Arguing that none of their injuries are speculative, the plaintiffs argue that they have incurred significant expenses to guard the secrecy of work intended to lead to new inventions, in a reversal of previous practice where inventions could be shown to potential investors or partners and otherwise shared. The plaintiffs also argue that “the AIA encourages theft by increasing the value of stolen IP (as shown by overseas experience).” The plaintiffs insist that the AIA has eliminated any inventorship requirement and, by doing so, is unconstitutional “because the Patent Clause does indeed constrain Congress to granting patents only to whom the Government calls ‘first inventors’ (and what the Constitution calls ‘inventors’).”

By deleting section 102(f) of the Patent Act, “which formerly made inventorship a condition of patentability,” Congress purportedly “allows a statutorily valid (although not a constitutionally valid) patent to issue to one who is not an inventor at all,” according to the plaintiffs. They also maintain that derivation proceedings will not identify “the first true inventor”; rather, the proceedings will determine whether “the first-filer stole or copied the invention. This is not an inventorship requirement.” The plaintiffs further claim that the “Government apparently believes that losing the race to the [U.S. Patent and Trademark Office] is equivalent to ‘suppressing’ or ‘withholding’ a patent.” They cite cases allowing good faith delays in filing patent applications to allow for testing and perfecting inventions.