Filing First, Not Inventing First, May Become More Important for Securing Space Intellectual Property

November 2, 2007 at 2:05 pm | Posted in Space Law | 1 Comment

by Joanne Irene Gabrynowicz with the blog faculty

When it comes to recognizing a creator’s right to a patent, most of the world has adopted the “first-to-file” rule. This means that the person or entity that files the patent first, is granted the patent without having to prove that they were the first to actually invent it. It was, as a former law school professor of mine used to say, “a race to the patent office door.” On the other hand, the United States has abided by the “first-to-invent” rule. This means that the patent applicant has to prove that it was he/she/it that was the first to invent the patentable item by being the first to reduce the patent’s underlying idea to a practice. Generally speaking, the first-to-file rule appeals to those who value efficiency in the often long patenting process. While those who value equity are proponents of the first-to-invent rule which seeks to reward the labor of the inventor.

There is a bill in Congress that, if it becomes law, will bring the U.S. within the ranks of the first to file jurisdictions. This will be a fundamental change in U.S. intellectual property law and will have far reaching implications for space law, including the patents in outer space statute. Space activities are all about technology, engineering, science, and the processes and inventions they generate. In fact, the most difficult part of the multi-year negotiations that resulted in the International Space Station Agreement involved the sections on intellectual property. More and more, the day-to-day practice of aerospace lawyers involves intellectual property. If H.R. 1908 becomes law, their practices are about to change a lot. The bill also addresses the inventor’s right to obtain damages; willful infringement; venue and jurisdiction; inequitable conduct as a defense to infringement, among other items.