One of the most fundamental aspects of patent law is that patents should only be awarded for new inventions. That is, not only does someone have to invent something new to them in order to receive a patent, is must also be a new to the world. If someone independently comes up with an idea, it doesn’t mean that person should get a patent if someone else already came up with the same idea and told the public.

There’s good reason for this: patents are an artificial restraint on trade. They work to increase costs (the patent owner is rewarded with higher prices) and can impede follow-on innovation. Policy makers generally try to justify what would otherwise be considered a monopoly through the argument that without patents, inventors may never have invested in research or might not want to make their inventions public. Thus, the story goes, we should give people limited monopolies in the hopes that overall, we end up with more innovation (whether this is actually true, particularly for software, is debatable).

A U.S. Court of Appeals for the Federal Circuit rule, however, upends the patent bargain and allows a second-comer—someone who wasn’t the first inventor—to get a patent under a particular, albeit fairly limited, circumstance. A new petition challenges this rule, and EFF has filed an amicus brief  in support of undoing the Federal Circuit’s misguided rule.

The rule is based on highly technical details of the Patent Act, which you can read about in our brief along with those of Ariosa (the patent challenger) and a group of law professors. Our brief argues that the Federal Circuit rule is an incorrect understanding of the law. We ask the Federal Circuit to rehear the issue with the full court, and reverse its current rule.

While the Federal Circuit rule is fairly limited and doesn’t arise in many situations, we have significant concerns about the policy it seems to espouse. Contrary to decades of Supreme Court precedent, the rule allows, under certain circumstances, someone to get a patent on something had already been disclosed to the public. We believe that is always bad policy.