Patent Anticipation and Obviousness as Possession

• Publication year: 2016

Patent Anticipation and Obviousness as Possession

Timothy R. Holbrook

Emory University School of Law

PATENT ANTICIPATION AND OBVIOUSNESS AS POSSESSION

Timothy R. Holbrook^*

Abstract

The concept of possession in property law operates to allocate property rights among competing claimants by awarding the property to the first to take possession. Possession in this context requires an act that communicates to third parties that someone has exercised dominion over the item. Patent law operates in similar ways. Inventors must disclose their invention in the patent document to memorialize what their creation is. This disclosure communicates to third parties the innovation over which the patent owner is asserting dominion. Patent law has similar first-in-time dynamics, awarding the patent among competing applicants to the first-to-invent under the 1952 Patent Act and the first-to-file under the America Invents Act. But patent law has another "racer"—the public via the prior art.

The doctrines of novelty and non-obviousness ask, in essence, whether the public was already in possession of the invention prior to the inventor. If so, then the patent application should be rejected. This possession-based view of novelty and non-obviousness offers important insights and prescriptions. As to novelty, the possession framework suggests that the current requirement that the prior art disclose the invention as arranged in the claim is unwarranted. It also suggests that the current doctrine of inherency is wrong. With respect to obviousness, the possession-based approach may be emerging through the Supreme Court's reinvigoration of the "obvious to try" standard. The possession-based framework also highlights the inconsistent treatment of obviousness as possession in other contexts. Prescriptively, bringing obviousness into line with the patent law doctrine primarily responsible for

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demonstrating possession—enablement—offers an opportunity to map patent law more closely with the lived experience of technologists. The proposed approach offers a potential bridge that renders obviousness more accessible to its intended audience—scientists, engineers, and other innovators.

Introduction

From an early age, children have an intuitive sense that something in their hands is "theirs." The ubiquitous "mine" tells others that whatever happens to be in their grasp belongs to them, in some sense. This strong intuition runs throughout life. On the second day of my property law class, I ask my students how many of them are in the same seat as the first day. Almost all of them raise their hands. I then inquire how many would have been annoyed if someone else had taken their seat. Again, nearly everyone raises their hand, suggesting they felt some intuitive right to this common resource—the seats—that attached when they occupied it, or took possession of it.

These intuitions are reflected in the law of property through various doctrines of possession. Indeed, the concept of "possession" is central to property law.¹ For example, we see the intuitive nature of possession in the adage "possession is nine-tenths of the law."² At common law, it offered an explanation for the origin of property.³ The first to take possession of "undiscovered"⁴ land or to conquer new territory was the owner. The first to

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take possession of, or occupy, a wild animal is deemed the owner,⁵ and the first to take possession of lost property is the "finder."⁶ One who occupies and uses another's land can become the true owner through adverse possession.⁷ The concept of possession, therefore, pervades property law.

At its most basic level, possession plays two important roles in property law. First, property rights are typically allocated to the first person to obtain possession. This "first in time" concept allows for the allocation of property rights over an item among competing claimants. Whoever wins the "race" gets the property. Second, and also essential, is that the acts that demonstrate possession must communicate to third parties that someone is now asserting dominion over the item. Only when this public notice aspect is satisfied does the law view a party as having taken possession of the item.

At first blush, it might seem that property-based conceptions of possession have absolutely nothing to do with patent law. After all, patents relate to the intangible, not a particular physical embodiment. Possession would seem to have no salience in the patent context.

Such a conclusion, however, is wrong. Concepts of "possession" do exist in, and often influence, patent law. At the most basic, intuitive level, inventors feel passionately about their creations, viewing them as the fruit of considerable labor. Innovators can have an intuitive sense of ownership—that they are entitled to rights with respect to their invention because they created it. Early patent treatises, taking a more natural rights perspective, specifically linked the invention and possession.⁸

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Patent law does work differently from tangible property, however. Inventors do not get protection for the particular physical embodiment of their inventions, such as the actual mouse trap they created. Instead, patents protect something intangible, the "invention," which may go beyond the inventor's original, basic creation. As a result, patent law requires inventors to memorialize their invention in the patent document itself.⁹ The patent document, therefore, provides the evidence of possession. While "possession" in the context of patent law presents some complications compared to the tangible assets in real and personal property, the concept is necessarily present. The patent system channels the delineation of the "thing" into the patent document.

Consequently, possession is an important aspect of patent law.¹⁰ To get a patent, an inventor must necessarily demonstrate that she has created something that can be the subject of the patent—her invention.¹¹ The applicant must show that she is in possession of her innovation. What the inventor physically created, however, does not define the scope of patent protection. Instead, the articulation of the inventor's creation takes place through the patent document's disclosure, referred to as the specification.¹² The specification must provide a written description of the invention and disclose information sufficient to allow the person of ordinary skill in the art (PHOSITA) to make and use the invention without undue experimentation based solely on the patent document.¹³

The Court of Appeals for the Federal Circuit, the court with national jurisdiction over all appeals arising under the U.S. patent laws, has expressly resorted to the idea of "possession" to assess whether a patent owner's disclosure is sufficient. Specifically, the court has held that the written description of the invention must "reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the

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filing date."¹⁴ The extent of the disclosure impacts the scope of the rights afforded under the patent, and the patent may be invalidated if the disclosure fails to show that the applicant was in possession of the claimed invention.¹⁵

By requiring the disclosure of the invention in the patent document, one key aspect of possession from a property perspective is satisfied—public notice. As a public document, third parties are able to review patents to assess the scope of the attendant exclusive rights. The patent document thus acts in a manner akin to the acts of possession in real and personal property that communicate to third parties that an item has been acquired by another.¹⁶

The patent also addresses the second aspect of possession: the first-in-time dynamic. In the property-based ideas of possession, property rights generally are awarded to the first to take possession. Patent law operates similarly. To get a patent, an inventor must demonstrate that she is first in some sort of race.

Our metric for assessing who "wins the race" has changed recently, however. Until March 16, 2013, the United States operated on a "first-to-invent" system, where generally the first person to invent the innovation was entitled to the patent.¹⁷ The statute in force until that date generally is referred to as the 1952 Patent Act, the date when it was adopted, although it has been subsequently amended a number of times. Under the 1952

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Patent Act, the patent was awarded among competing applicants to the first to have invented the innovation.¹⁸

The United States was the only country to have a "first-to-invent" system.¹⁹ In part in an effort to harmonize our law with the rest of the world,²⁰ Congress passed the America Invents Act (AIA) in 2011. The U.S. system, effective March 16, 2013, switched primarily to a "first-to-file" system.²¹ Since March 2013, however, the United States has operated under a "first-inventor-to-file" system, so that, with some exceptions, the first applicant to file a patent application covering a particular innovation gets the patent among competing applicants. In this way, patent law operates very similarly to property-based ideas of possession in that property rights are awarded to the first to demonstrate sufficient possession.

In this regard, possession has even more salience in patent law than real or personal property. Possession is used in property law to allocate property rights, but, in the modern era, rarely do we encounter situations where possession determines the outcome of a property dispute. It is the rare occasion where the legal system is allocating previously unowned property among competing claimants. In contrast, the patent system is continuously creating

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new property rights. Every time the U.S. Patent and Trademark Office (USPTO) grants a patent, a new right has been created, thus implicating aspects of possession multiple times per day.

Patent law does differ from...