The “First-To-File” Patent System: Why Adoption Is Not An Option!

Richmond Journal of Law and Technology Volume 14 | Issue 1 Article 4 2007 The “First-To-File” Patent System: Why Adoption Is Not An Option! Rebecca C.E. McFadyen Follow this and additional works at: http://scholarship.richmond.edu/jolt Part of the Intellectual Property Law Commons Recommended Citation Rebecca C. McFadyen, The “First-To-File” Patent System: Why Adoption Is Not An Option!, 14 Rich. J.L. & Tech 3 (2007). Available at: http://scholarship.richmond.edu/jolt/vol14/iss1/4 This Article is brought to you for free and open access by UR Scholarship Repository. It has been accepted for inclusion in Richmond Journal of Law and Technology by an authorized administrator of UR Scholarship Repository. For more information, please contact . Richmond Journal of Law & Technology Volume XIV, Issue 1 THE “FIRST-TO-FILE” PATENT SYSTEM: WHY ADOPTION IS NOT AN OPTION! By: Rebecca C.E. McFadyen * Cite as: Rebecca C.E. McFadyen, The “First-to-File” Patent System: Why Adoption is NOT an Option!, 14 RICH. J.L. & TECH. 3 (2007), http://law.richmond.edu/jolt/v14i1/article3.pdf. [1] As the United States’ national pastime, baseball has taught valuable lessons to generations of Americans. For example, players often learn how to be good teammates, how to set goals, and how to exercise discipline. Baseball has other important life lessons to share as well such as the value of “chemistry.” Chemistry is that intangible quality that allows individual players, each with a differing skill set and personal agenda, to work together and propel the team forward. It is what makes a team, a team. [2] Consider the following situation. The best player on the team, the shortstop, has been injured. The only player currently on the bench is lefthanded. What are the coach’s options? The first option involves the coach making the changes necessary to move the players to their “logical” positions. For example, the coach could move the third baseman, the team’s second best fielder, to the shortstop position. He could then move his able-bodied first baseman to third base, a position with which he has some experience. Finally, he could put the left-handed player at first base, a position suitable for left-handed players. This series of “logical” changes to the defensive line-up has filled the void of shortstop. Because * J.D. Anticipated (University of Florida, December 2007); Ph.D. (University of Florida, 2004); B.A. (College of the Holy Cross, 1998). The Author thanks her family for their constant love and support, and particularly, her husband, whose patience and understanding allows the author to pursue all her passions. 1 Richmond Journal of Law & Technology Volume XIV, Issue 1 the coach avoided the potentially awkward placement of a left-handed player at shortstop, the first option seems like a good choice. Then there is the second option, in which the coach could simply allow the left-handed player to fill the void at shortstop. [3] Although both options accomplish the task of replacing the injured shortstop, is one option better than the other? Which option should the coach choose? Most baseball aficionados instantly recognize that a lefthanded player at shortstop is an awkward fit. For example, the throw across the diamond is more difficult for a left-handed player than it is for a right-handed player, and it is more difficult for a left-handed player to protect the middle of the field. The first option prevents this awkwardness while the second option embraces it. At first glance, the first option appears to be the best choice. [4] However, for others – those who have studied the game of baseball – the second option is the preferred choice. Why? It is the option that provides the greatest number of players with an opportunity to be successful. As a coach, you must consider the role of each player on the field and how those players interact with one another. While the coach might be able to substitute the skill set of the injured shortstop, he is unlikely to replicate the injured shortstop’s comfort level. His feel for the game. His experience. For example, he is familiar with that part of the field and can predict how the players in his immediate vicinity will react to certain conditions. He is accustomed to watching the batter from that position. He knows where he is supposed to be on any given play and understands the expectations and demands of his position. He has made the plays before. Armed with this knowledge, experience, and a sense of comfort, a player has the greatest chance for success. Now, which option should the coach chose? [5] In many ways, Congress is the coach of Team Patent. Congress must ensure that the attorneys, inventors, agents, and examiners that comprise Team Patent have the best opportunity to succeed. Under the current “first-to-invent” patent system, each player knows the rules of the game. Each player knows how to prepare for the game and what to expect from his teammates. The players are comfortable in their respective roles. Like any other team, Team Patent will perform well on some days and stumble on others. Nevertheless, this team is successful. Any massive change to 2 Richmond Journal of Law & Technology Volume XIV, Issue 1 the team’s infrastructure jeopardizes the team’s likelihood of success. The threat to the team’s chemistry – that intangible quality that distinguishes the good from the great – intensifies. [6] Congress is under increasing pressure to reform the rules of the game by which Team Patent plays. These changes to the rules have been described as “the most sweeping reforms to this country’s patent laws in at least 50 years.”1 Like any good coach, Congress must take the course of action that least disturbs Team Patent’s game. The comfort level of Team Patent cannot be jeopardized because doing so diminishes the likelihood of its success. Too many deviations from what Team Patent expects from the game will yield a box score of trouble. PART I. BRIEF INTRODUCTION [7] The primary purpose of the American patent system is to advance the arts and sciences.2 During the 1941 hearings of the Temporary National Economic Committee,3 the Commissioner of Patents summarized the system by stating that “[t]he individual reward is only the lure to bring about this much broader objective. Every patent granted benefits society by adding to the sum total of human knowledge . . . .”4 In this regard, the United States distinguishes itself from all other nations with its unique adherence to the first-to-invent patent system. 1 Steven B. Kelber, Bill Has Issues All Will Debate, NAT’L L.J. Aug. 29, 2005. Sinclair & Carroll Co. v. Interchem. Corp., 325 U.S. 327, 330-31 (1945). 3 Alfred W. Knight, The Patent System, 6 ALUMNI REV. 16 (1943). At President Roosevelt’s suggestion, Congress established the Temporary National Economic Meeting (“TNEC”) in 1938. The President recommended a thorough investigation of the “concentration of economic power in American (...truncated)