Constitutional Challenges to the America Invents Act

Welcome back, this is the first installment of the fall semester.

A constitutional challenge to patent reform (AIA) has been circulating in the news lately. Read the complaint in Madstad & Stadnyk v. USPTO. The Constitutional question posited by the suit is a challenge to the AIA’s implementation of a first-to-file (rather than a first-to-invent) system of awarding patents. The plaintiffs claim this change is unconstitutional and the merits of their claims have been discussed on other IP blogs ad nauseam.

However, I want to ask whether this case is ripe to be brought in the first place. The Complaint alleges several grounds for the plaintiffs to have standing. However, courts rarely want to take on controversies that are only hypothetical in nature. And many (if not all) of the alleged damages are hypothetical, and only tenuously related to the implementation of first to file.

This leads to a discussion of the current system, which is a de facto first to file system anyways. Inventors can, under 37 CFR 1.131, swear behind a previously filing inventor. This is, however, rare in practice and no attempt has been made under the AIA to do this, as first-to-file has not yet been implemented. Thus, in my opinion, a case that really has a good chance to challenge the new AIA process should include a few basic elements:

  1. A patent application filed under the AIA.
  2. That patent denied based on a previously filed patent application.
  3. The inventor would have been able to successfully swear behind the previously filed patent under pre-AIA patent law.

If the courts follow these guidelines Constitutional challenges to the AIA will be few and far between.