URGENT ALERT!

H.R. 1907 - Patents are NOT the same as copyrights

Following are Mr. Paugh's comments about Prior User Rights in which he attempts (erroneously) to compare the protection afforded to copyrights to that afforded to patents. His misinformation is one of the reasons that H.R. 1907 is being accepted by those who previously fought this legislation.

To rebut Mr. Paugh's comments, Robert Rines, patent attorney, prolific inventor and law professor, prepared a statement which has been sent to all members of the House of Representatives. (Mr. Rines' comments are reprinted in this message following Mr. Paugh's statement.)

If you have not already done so, I would urge you to contact your Congressman and urge him or her to understand what H.R. 1907 really is and, in the case of Prior User Rights, to understand that they are not getting the accurate information about the Constitutionality of this provision.

FROM: Wayne Paugh, Rep. Dana Rohrabacher's office:

Title II - First Inventor Defense Act

With respect to this title, there has often been some confusion regarding its constitutionality. In fact, of all the subject areas of H.R. 1907, unequivocally this is the title that has bred the most contention and passionate opposition.

Of course, the section of our Constitution that applies to the first inventor defense argument is Article I, section 8, clause 8:
"The Congress shall have Power 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."

It is well settled that both copyrights and patents are addressed by this clause. Copyrights encompass promoting the progress of science by securing to authors the exclusive right to their writings. Patents encompass promoting the progress of the useful arts by securing to inventors the exclusive right to their discoveries.

It has often been argued that ANY form of a first inventor defense or prior user right is unconstitutional because the patent holder would no longer have an "exclusive right." Ultimately, since a successful use of this defense would permit an exception to the patent holder's absolute right to exclude, the right is therefore not exclusive and thus unconstitutional.

This argument cannot accurately flow from the language or interpretation of the United States Constitution. In copyright law, despite the federal registration of a valid copyright, if another author - through independent creation - arrives at an identical expression, he cannot be held for infringement. In other words, notwithstanding a valid copyright, there can be no infringement of that copyright if it has been re-created through independent effort.

In copyright law, therefore, a copyright is enforceable as an exclusive right against everyone, except those authors who have achieved an identical result through independent creation. Essentially, this is a type of "prior user" defense to infringement that is already codified in copyright law. The form of first inventor defense currently proposed for patents, however, is significantly more narrow than that in copyright. First, it is strictly limited to prior independent creation and second, it is limited to processes only.

The "exclusive right" of Article I, section 8, clause 8, applies equally to both patent law and copyright law. Independent creation is a valid defense to copyright infringement that has never been held unconstitutional. Furthermore, the existence of this defense has not inhibited the promotion or progress of science and useful arts. Much the opposite, copyright registration is at record levels.

Likewise, the existence of a first inventor defense in patent law would not be held unconstitutional based on principle and consistency of law. Considering the current function and effectiveness of our copyright system, the patent system will not be fundamentally weakened by a proposed first inventor defense that applies only to processes. To the contrary, our patent system will continue to thrive. Furthermore, before last year, processes and business methods were generally difficult to patent or couldn't be patented at all.

A first inventor defense that is strictly limited to processes and business methods will severely reduce its applicability. Furthermore, the defense applies only to processes or methods that have been reduced to practice at least one year prior to the effective filing date of the patent in question. Even further, to successfully use this defense a litigant must satisfy a clear and convincing evidentiary standard and risk being subjected to paying reasonable attorney fees to the prevailing party. Bottom line, the best defense to a charge of patent infringement will remain the successful assertion of invalidity, and not a first inventor defense.

RE: Comments on so-called "Patent Reform Legislative Update" of June 4, 1999, from Mr. Wayne Paugh of Congressman Dana Rohrabacher's Office regarding H.R. 1907, "The American Inventors Protection Act of 1999."

FROM: Robert H. Rines, The Law Offices of Rines & Rines
Founder, Franklin Pierce Law Center, Concord, New Hampshire
Founder, Academy of Applied Science
Inductee, National Inventors Hall of Fame and holder of more than 80 patents
M.I.T. faculty ( and formerly Gordon Mackay lecturer on Patents at Harvard)

Title II - "First Inventor" Defense Act
Improper Legal Use of the Term "First Inventor" in Proposed Act
The correct term "prior user" right or free license under a patent, has now been replaced by "first inventor," which is, unfortunately, a blatant misnomer, and contrary to all legal precedent as to the meaning of the term "first inventor," and contrary to the statutes in American patent law for at least 150 years.

"Since 1850 [Gayler v. Wilder, 10 How. 509, 51 U.S. 477, 13 L. Ed. 504] it has been settled . . . that an inventor who had merely made a secret use of his discovery should not be regarded as the first inventor." Gillman v. Stern, 114 F. 2d 28, 31 (2d Cir. 1940), Dunlop Holdings Ltd. v. Ram Golf Corp. 524 F. 2nd 33, 35 (7th Cir. 1975).

Our current patent statute 35 U.S.C. Sec. 102 (g) specifically requires that the legally recognized first inventor is not the one who, though making the invention earlier, "suppressed, or concealed it . . ."

Our consistent patent interference law for over a hundred years to the present, deciding who between two contesting patent applicants is the "first inventor," similarly requires the earlier conceiver not to have "suppressed or concealed" the invention to qualify as the "first inventor."

To introduce this ambiguity and mischief of terming Title II as the "first inventor" defense, instead of what it is -- a proposed right or license under another's patent to use a prior concealed or secret process -- borders on irresponsibility.

The Fallacious Argument as to Constitutionality
While apparently conceding that Article I, Section 8 of the Constitution requires that the author (copyright) and inventor (patent) receive "exclusive" rights -- the argument is advanced that a supposed exception to "exclusive" is permitted under the copyright laws and recognized as Constitutional.

This is a totally incorrect statement, and reflects an amazing misunderstanding of the copyright laws.

A copyright only protects an author's "writings" (the words of the Constitution), say a book, from being copied by another.

In the theoretical situation that another, without copying, should in the words of the up-date, "through independent creations -- arrive(s) at an identical expression" -- i.e., write the "identical" book -- [a circumstance that, to my knowledge, has never happened at least for books in the whole history of the U.S. copyright statutes or anywhere else in the world] -- such an independent creator is not deemed an infringer of the author's copyright.

Of course not; there was no copying of the author's copyrighted work! This is because the "exclusive right" granted in copyright law promulgated under the Constitution is solely the right of protection against copying from the author's writings -- the author has the exclusive copy right -- that's all.

Thus, this fictional independent creator of the "identical expression" (the fictional independently created and not copied identical book) has not been given any free license under the author's copyright at all; and, indeed, has not taken away any of the author's exclusive right against another's copying; that right stands exclusive against copying.

In patents, on the other hand, unlike copyrights, ideas (defined in patent claims) are protected from being used by others, and copying has nothing to do with it. Totally unlike copyrights that protect only against copying from the author's book, and not even the idea behind the book, but merely the specific expression by the author of that idea, in patents, it is the idea itself that is protected and cannot be used, irrespective of whether it was independently conceived or deliberately copied!

To favor a prior user who deliberately chose to conceal a process and keep it secret from the public over one who chose to follow the public policy of Article I Section 8 of publicly disclosing the discovery in a patent, actually takes away from the patentee the Constitutionally mandated "exclusive right" of the patent against any use of the patented idea protected by the patent.

Merely trying to make more palliative prior user rights under the misnomer "first inventor" defense, does not render the unConstitutional emasculating of patent exclusive rights suddenly Constitutional. "A rose by any other name . . ."

Why Does Congress Insist On Trying To Force A Prior User Right On The Inventive Community That Overwhelmingly Opposes Such Rights?

The continued battle to include prior user rights in this legislation is believed to be principally led by a single individual who fears that Japanese-obtained U.S. patents may challenge his company's right to use processes he deliberately chose to keep secret. And he has lobbied well.

In my M.I.T. patent courses, my graduate students have earlier and presently surveyed various patent-using communities, and consistently found that significant majorities of independent inventors, small businesses, start-up companies, university faculty members and whole communities of high technology companies, including the biotech industry, venture capitalists and others are strongly opposed to the concept of prior user rights as downright harmful to the American patent system and their interests in using that system.

Here are summaries of our latest research:

1) A Survey of Small Biotechnology Companies on Prior User Rights (M.I.T. 6.901 Inventions and Patents Course, Professor Robert H. Rines, December 14, 1998)

127 small biotechnology companies.
"78% of our respondents were very opposed, indicated by a response indicated between 1 and 3, to the implementation of prior user rights. 13% seemed undecided . . . 4% were in favor of prior user rights . . . 4% had no comment."

Venture Capital Firms Sampling Group
"Surveys were mailed to 349 venture capitalists of which twenty-nine (8%) responded. . . 59% of the respondents focus their investments in start-ups . . ."

University Inventors Sampling Group
"M.I.T., Harvard, Yale, Princeton, Carnegie Mellon Univ., Columbia, Cornell, Rensselaer Polytechnic Institute, Stanford, U.C. Berkeley, UCLA, UCSD, Cal Tech, UT, Austin, Rice, Georgia Tech, Duke, Johns Hopkins, Purdue, University of Michigan, Chicago, Univ. of Illinois, Univ. of Wisconsin at Madison, Northwestern, UCSF, Northeastern and USC. Four hundred university inventors were solicited to respond to the survey. Seventy-seven responses were received which is a response rate of 25%."

Results: Views of all three of the above groups on Prior User Rights

". . . the majority of all groups disagree with the provision . . . 68% of the respondents either disagree or strongly disagree with this provision, while only 22% either agree or strongly agree. In addition, university inventors and patent lawyers were five times more likely to strongly disagree than to strongly agree, and venture capitalists were twice as likely to disagree than to agree. These results clearly indicate that these groups of people disagree with the provision."

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