First to File and the Patent Act of 1790


The United States Constitution is a relatively short document, but one that has provided guiding principles for over 220 years.  Article I, Section 8 of the U.S. Constitution granted Congress the power to grant patents and copyrights for limited times in order to promote the progress of science and the useful arts.  Clearly demonstrating just how important the Founding Fathers perceived a patent system to be, at the prompting of George Washington in his first State of the Union Address, the young Congress passed the the Patent Act of 1790 as the third Act of Congress.

Section 1 of the Patent Act of 1790 explained that a party would be awarded a patent in the event that it was deemed a sufficiently important discovery or invention:

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That upon the petition of any person or persons to the Secretary of State, the Secretary for the department of war, and the Attorney General of the United States, setting forth, that he, she, or they, hath or have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used, and praying that a patent may be granted therefor, it shall and may be lawful to and for the Secretary of State, the Secretary for the department of war, and the Attorney General, or any two of them, if they shall deem the invention or discovery sufficiently useful and important…

Patent Act of 1790, Ch. 7, 1 Stat. 109-112 (April 10, 1790).

The Patent Act of 1790 did not contemplate the possibility that more than one inventor or inventive entity would apply for a patent on the same invention.  The Patent Act of 1790 did, however, contemplate the possibility that the applicant for patent would not be the first inventor.  The relevant provision stated:

[I]if it shall appear that the patentee was not the first and true inventor or discoverer, judgment shall be rendered by such court for the repeal of such patent or patents…

Excerpt of Section 5 of the Patent Act of 1790, Ch. 7, 1 Stat. 109-112 (April 10, 1790).

Under the first Patent Act, the Patent Act of 1790, the United States had a registration system where the first to file was awarded the patent.  If it could later be determined that the first to file was not the “first and true inventor,” the patent was repealed, but not automatically granted to the first and true inventor.  Thus, Section 5 of the Patent Act of 1790 is not related to the “first to invent” provisions of pre-AIA 35 U.S.C. 102(g), but rather are akin to the provisions of the current 35 U.S.C. 102(a), where an inventor is not entitled to a patent if someone else previously invented.

That the U.S. patent system was at first a “first to file” system is bolstered by review of subsequent amendments to the Patent Act, including the first amendment to the Patent Act, which occurred with the Patent Act of 1793.  The Patent Act of 1793 was authored by none other than Thomas Jefferson (then Secretary of State). As one of the first patent examiners Jefferson recognized the need for more specific rules associated with granting patents. One of the steps Jefferson took was to require the applicant to affirm that they believed they were in fact the first and true inventor. Section 3 of the Patent Act of 1793 stated, in relevant part:

That every inventor, before he can receive a patent, shall swear or affirm that he does verily believe, that he is the true inventor or discoverer…

Patent Act of 1793, Ch. 11, 1 Stat. 318-323 (February 21, 1793).

The concept of “interfering applications” first injects itself into U.S. patent law in Section 9 of the Patent Act of 1793, which stated:

And be it further enacted, That in case of interfering applications, the same shall be submitted to the arbitration of three persons, one of whom shall be chosen by each of the applicants, and the third person shall be appointed by the Secretary of State; and the decision or award of such arbitrators, delivered to the Secretary of State, in writing and subscribed by them, or any two of them, shall be final, as far as respects the granting of the patent: And if either of the applicants shall refuse or fail to chuse an arbitrator, the patent shall issue to the opposite party. And where there shall be more than two interfering applications, and the parties applying shall not all unite in appointing three arbitrators, it shall be in the power of the Secretary of State to appoint three arbitrators for the purpose.

Patent Act of 1793, Ch. 11, 1 Stat. 318-323 (February 21, 1793).

Under the Patent Act of 1793, the panel of arbitrators could choose to award the patent to the individual or inventive entity that was not the first to invent.  As a result, there was no legal requirement that the first to invent be awarded the patent.

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