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.
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 ....).

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