A Possession-Based Approach to Patent Prior Art

A Possession-Based Approach to Patent Prior Art

Tim Holbrook

The concept of “possession” is central to much of property law. The first to take possession, or occupy, a wild animal is the owner; first to take possession of lost property is the “finder”; one who occupies and uses another’s land can become the true owner through adverse possession. Carol Rose views this role of possession as “something that requires a kind of communication, and the original claim to the property looks like a kind of speech, with the audience composed of all others who might be interested in claiming the object in possession.”

These concepts of possession also operate within patent law. Under the 1952 Patent Act we award the patent, with some exceptions, to the first person to invent the relevant innovation. As of March 2013, when relevant provisions of the America Invents Act come into force, we will award patents to the first inventor to file a patent application. In this way, the first to win the possession “race,” either by inventing first or filing a patent application, is awarded the patent.

A necessary prerequisite to either of the regimes is that the inventor have possession of the relevant invention, as demonstrated through their patent application. The patent statute requires the applicant to sufficiently disclose the invention so as to demonstrate that he possesses it and so as to ensure that others in the relevant technological field can make and use the claimed invention without undue experimentation. The extent of the disclosure can impact the scope of the rights afforded under the patent.

Patent law is different than other forms of property, however, in that merely winning the possession race is alone insufficient for the applicant to obtain the patent. The invention must also be new (i.e. novel), a technical term of art that means the invention cannot have been created or described in a single place – such as a prior creation of the exact invention claimed in the patent or a complete description of that invention in a publication such as a scientific article. The invention additionally cannot be merely an obvious variation over what is already known in the relevant technological field. The patent applicants, therefore, must show not only that they are the first to possess the invention by being the first to invent (under the 1952 Act) or the first to file (under the AIA) but also that they are the first to possess the invention ever, relevant to what is publicly known within the relevant field of technology.

This possession-based view of the prior art affords a novel theoretical framework for defining when an invention lacks of novelty (also known as anticipation) and when an invention is obvious. In essence, both of these doctrines, in essence we are asking whether the public was already in possession of the claimed invention and, thus, the applicant should be denied a patent. The possession lens, however, is not limited to the doctrines of novelty and obviousness: it also performs a theoretical basis for investigating what materials should count as “prior art,” i.e. what should be considered “known” when we are assessing the novelty and non-obviousness of an invention. Under both Acts, the statutory provision governing prior art under the 1952 Patent and America Invents Act is 35 U.S.C. § 102. Having taught the 1952 provision many times over the years, I kindly note that the statute is a mess. There is no rational structure to its provisions, and it really is merely a catalog of previous judicial decisions arbitrarily listed with in no particular order. Each section has a policy justification that is devoid of any broader theoretical architecture that informs the section. Given the lack of a theory, unsurprisingly many of the provisions overlap, creating considerable confusion. This Article seeks to fill this gap in the literature by exploring the prior art provisions of the Patent Act and articulating a theoretical perspective, based on the concept of “possession,” that can provide a theoretical framework for understanding and defining prior art. This piece is particularly timely given that the United States Patent and Trademark Office (USPTO) and the courts will begin to confront the new prior art provisions of the AIA. As we transition from the 1952 Patent Act’s ad hoc definitions of prior art, as confusingly enumerated in 35 U.S.C. § 102 (hereinafter “1952 § 102”), to the AIA’s new, more-streamlined yet equally-ambiguous definitions (hereinafter “AIA § 102”), this articles framework is timely and important. It serves to answer some lingering questions about the scope and purpose of the 1952 § 102 while offering insight and potential answers to the issues that will be forthcoming under the AIA § 102.