Which is more important, to harmonize US patent law with that of other countries, or to keep it consistent with the insights expressed in the US Constitution, which supports progress through the personal rights of inventors?
The Constitution allows the federal government to
To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.
This clause stands as a fundamental reservation of rights for inventors. We have seen the emergence in copyright law of “work made for hire”, where the author becomes the employer or commissioning party, as a consequence of where the authorial control for the work resides. It’s not pretty, but it makes some sense. But as for invention, which is a recognition not a shaping, it does not appear that an employer can be an inventor. The employer is always an observer, an after-thinker, an opportunist–never an inventor.
The patent “reform” law would make employers able to take title to inventions merely on the strength of an agreement to assign–without giving standing to the inventor to determine whether any given invention is within the scope of that assignment agreement. The employer would be able to file patent applications and have patents issue to the employer without any formal assignment from the inventor. I know, from a corporate perspective, that assignment is just bother, a nuisance. But wait: what if that assignment actually means something–that the idea of progress is tied, in US law, to the work of individuals, not companies?
This is where again, university patent administrators have gone over to the dark side. What they didn’t get with Stanford v. Roche–using federal law to strip university inventors of their rights–they hope to get with “patent reform”. I have an analysis of Bayh-Dole that will make their hearts sink. But in the meantime, it would be great if universities would stick up for faculty (and student, and research staff) entrepreneurship and oppose the present “patent reform” bill.
Rather than harmonizing with the “rest of the world”, which apparently believes that patents are about a race to the patent office, not inventors, and rather than harmonizing with “large corporations”, who see patents as an accumulation of assets for later disposition if ever–why not harmonize with individual liberty and creativity? Is that such a bad thing, in the land of the free?
[Update: I’ve seen an interesting take on first to file part of the reform law, which I’m not addressing directly above, but comes up as related. The argument goes, it may be that first to file actually works out to be more favorable to inventors. That’s worth considering.
The constitutional clause is premised on progress, and ties that to a reservation of rights to individual inventors. For all the attorneys who make the constitution their study, this is an issue of law, but for folks who live with this text as a backing statement, the matter is first and foremost one of purpose, before dealing with how disputes have shaped interpretations, what principles courts have used to guide their arguments, and before folks attempt to connect this body of work with public policy. That is, the law part of the statement is not supreme. The ideas on which it is based on the things that matter. If they are true and worthy, then the law that permits their expression in federal policy has a chance also to be worthy.
It is our world, the world of the living, and we have it in our power to make inventions owned outright by employers if we decide to. The world will keep on going. The matter is, is that good for progress? Is it better than how we have gotten on so far? Will the effect be, individuals working on inventions for longer times will have fewer opportunities for patents, and corporations that have the resources to run expensive labs will have more and better patents? And even if so, is this a better argument for progress than we have at present? Or is progress itself boring and unworthy these days?
While patent law is clearly home to lawyers’ opinions, and on the technical stuff, it’s great to have these folks around, on the broader matters of how we handle patents in society, we should be not be treating this only as law, even if the order of business is changing the law.
What we are working on here is a vision of practice and anticipated effect, supported by changes in the law. Some will gain, others will not. For that, I would rather listen to the inventors, and not to secondary commentators, whether attorneys, company representatives, policy wonks, or even practitioners like me. We are all secondary stuff. It’s silly to ask, but why doesn’t Congress send out a request to all inventors and would-be inventors and ask, does first to invent serve you well? would first to file serve you any better? would first to file be better now, given the circumstances in the world? Maybe some folks can think better than inventors about inventors, but I’d like to hear what they have to say, without being told what to say be their bosses or advocates or anyone.
Once the law is changed so that employers see inventions as their assets outright, then it makes perfect sense to have first to file, because invention is no longer something in the mind, but something represented from what is disclosed. Along with the fiction of the company as a person, we have the fiction of the company “coming up with an invention” and we conveniently efface that in the natural history of things, each invention is personal to individuals.
If a company can be an inventor, then I suppose the constitutional clause can be applied equally to companies, but only by changing what we have meant by invention all these years. Perhaps we should do that, but it would be worth a discussion first on whether that gets us anywhere as a society. I don’t see that it does, but I’m keen for the discussion to learn how it might.]