One year ago, on September 16, 2011, the America Invents Act’s first provisions became effective, although many provisions were delayed by twelve to eighteen months. Now, one “little guy” innovator wants a Florida federal district court to declare as unconstitutional one of the most far-reaching AIA provisions, the so-called “first-to-file” priority scheme that will otherwise go into effect March 11, 2013. Mark Stadnyk, who already holds issued patents, is suing to enjoin the shift from first-to-invent to first-to-file, as codified in Section 3(b)(1) of the new AIA. That new statute deletes 35 U.S.C. § 102(f), which formerly provided that “A person shall be entitled to a patent unless…he did not himself invent the subject matter sought to be patented.”

By an early motion for a preliminary injunction, Mr. Stadnyk and his company, co-plaintiff Madstad Engineering, Inc., are challenging the USPTO Director and the federal government’s power to implement such broad-ranging changes to the manner of deciding exactly who should be entitled to patent protection. In essence, Mr. Stadnyk argues that under the new “first-to-file” system, the AIA will not award patents to the actual inventors of genuine discoveries, but rather to the first filers to invoke the administrative process at the USPTO. Click here for a link to the Plaintiffs’ injunction briefing. The USPTO, on the other hand, dismisses the constitutional challenge by arguing that the new first-to-file regime will not take away any rights and that the overall scheme (including new “derivation” proceedings, which replace interferences) protects the rights of those who invented first but filed second. Click here for the USPTO’s opposition brief.

No hearing date has been publicly announced for the preliminary injunction motion.