The America Invents Act: First to File versus First to Invent? - Podcast

Intellectual Property Practice Group Podcast

June 20, 2011

Timothy Holbrook, F. Scott Kieff, Adam Mossoff, David S. Olson, David L. Applegate

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  The America Invents Act:
 First to File versus First to Invent?
- MP3

Running Time: 00:59:08

Practice Groups Podcasts

Since the first U. S. patent statute in 1790, United States patent law has authorized the grant of patent rights to the first to invent or to discover a patentable invention, subject to specified terms and conditions. Currently under consideration as S. 23 and H.R. 1249, the America Invents Act will substantially change the American patent system by eliminating this uniquely American approach in securing property rights in inventions to only their first and true inventors. Section 2 in the Senate (S.23) and the House (H.R. 1249) bills will replace the current “first-to-invent” system with the “first to file” system long enforced in England and in other countries by deleting or rewriting numerous references to priority of inventorship in the existing statutory sections concerning novelty (35 U.S.C. § 102) and obviousness (35 U.S.C. § 103). Does the proposed change from a first-to-invent to a first-to-file system rewrite core patent law fundamentals in this country by shifting the balance among individual inventors, large corporations, and patent holding companies? What is the likely effect of this proposed change on innovation and development, the keys to a growing economy? Are the projected benefits worth the anticipated costs? Under Article I, Section 8, Clause 8, is the proposed change even Constitutional? These and other topics are debated and discussed among a panel of law professors moderated by an experienced practitioner.

 

Featuring:

  • Prof. Timothy Holbrook, Emory University School of Law
  • Prof. F. Scott Kieff, George Washington University Law School
  • Prof. Adam Mossoff, George Mason University School of Law
  • Prof. David S. Olson, Boston College Law School
  • Moderator: David L. Applegate, Partner, Williams Montgomery & John LTD


 

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Related Links

Patents as Constitutional Private Property: The Historical Protection of Patents under the Takings Clause by Adam Mossoff
The First-to-File Provision in H.R. 1249 is Unconstitutional: A Textual and Historical by Adam Mossoff (PDF)
Holbrook, Janis, et. al. Letter to Lamar Smith, June 13, 2011 (PDF)
35 U.S.C. § 102
35 U.S.C. § 103
America Invents Act, S. 23, Section 2 (PDF)
America Invents Act, H.R. 1249, Section 2
Democratic Policy Committee Legislative Bulletin, February 28, 2011, S. 23, America Invents Act of 2011
The End of the First-to-Invent Rule: A Concise History of Its Origin by Michael F. Martin (PDF)
The Perils of Patent Reform by F. Scott Kieff
Welcome to Patent Purgatory by F. Scott Kieff
Patent Reform Goes Haywire by F. Scott Kieff
File First, Invent Later? by F. Scott Kieff
Who Cares What Thomas Jefferson Thought About Patents? Reevaluating the Patent “Privilege” in Historical Context by Adam Mossoff