About | HeinOnline Law Journal Library | HeinOnline Law Journal Library | HeinOnline
LOG IN
LOG IN

16 Vand. L. Rev. 131 (1962-1963)
Priority Paradoxes in Patent Law

handle is hein.journals/vanlr16 and id is 149 raw text is: Priority Paradoxes in Patent Law Richard H. Stern* The author here outlines the law governing the Patent Office inter- ference proceeding for determination of the relative priority of claim- ants. He uses an axiomatic system to examine and illustrate the present statute and through the use of this system points out a paradox which under the existing laws allows an undesirable circularity of priorities among parties. Mr. Stern then proposes a statutory amendment elimi- nating this paradox. The constitutional provision governing patents gives Congress the power to promote the progress of useful arts by securing for limited Times to... Inventors the exclusive Right to their... Discoveries.' Because an exclusive right suggests an exclusive grant, the Patent Office interference proceeding has been created2 for the purpose of determining administratively the question of priority of rights between two or more parties claiming substantially the same invention.3 This article attempts to state in terms of an informal axiomatic system the rules of law for determining priority of invention, and then examine that system to explore its possible paradoxes Finally, an amendment is proposed to eliminate a serious paradox in the present statute, which permits the occurrence of a circularity of priorities in which a may be prior to b, b prior to c, and c prior to a. I. Tnx EXISTING LAW Interference proceedings grow out of patent applications pending in the Patent Office at the same time, each of which appears to claim °Law Clerk of Associate Justice White, United States Supreme Court. Member, Con- necticut Bar, U.S. Patent Office Bar. 1. U.S. CONST. art. I, § 8. 2. The interference as we know it stems from § 16 of the Patent Act of 1836, ch. 357, 5 Stat. 123; § 9 of the prior Patent Act of 1793, ch. 11, 1 Stat. 322, had provided for arbitration of conflicting claims for grants. Although the analysis which follows is couched primarily in terms of administrative proceedings to determine priority, essentially the same considerations are applied in civil actions for infringement when priority of invention is put into issue. See, e.g., Radio Corp. of America v. Radio Eng'r Labs., Inc., 293 U.S. 1 (1934); Reed v. Cutter, 20 Fed. Cas. 435 (No. 11645) (C.C.D. Mass. 1841). 3. U.S. Pat. Off. R. 201(a), 37 C.F.R. § 1.201(a) (1960). 4. WEBsTER, NEW INTERNATIONAL DICTIONARY (2d ed. 1958) defines paradox: 2. A statement self-contradictory or false. 3. Any phenomenon or action with seemingly contradictory qualities or phases. As used here, the term refers to inconsistent, contradictory, anomalous results which may follow from the interference laws as they presently stand. Cf. Pirates of Penzance, Act II (How quaint the ways of Paradox! At common sense she gaily mocksl); Othello, Act II, Scene 1, lines 139-40 (These are old fond paradoxes to make fools laugh in the alehouse ....).

What Is HeinOnline?

HeinOnline is a subscription-based resource containing thousands of academic and legal journals from inception; complete coverage of government documents such as U.S. Statutes at Large, U.S. Code, Federal Register, Code of Federal Regulations, U.S. Reports, and much more. Documents are image-based, fully searchable PDFs with the authority of print combined with the accessibility of a user-friendly and powerful database. For more information, request a quote or trial for your organization below.



Short-term subscription options include 24 hours, 48 hours, or 1 week to HeinOnline.

Purchase Access

Contact us for annual subscription options:

Contact Us

Already a HeinOnline Subscriber?

Log In

profiles profiles most