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.