Author:Holbrook, Timothy R.

TABLE OF CONTENTS INTRODUCTION 127 I. THE MORASS THAT IS PRIOR ART DOCTRINE 134 A. The Kitchen Sink of the 1952 Patent Act's Section 102 135 B. The AIA's Alterations to the Statutory Definition of Prior Art 138 II. POSSESSION, PROPERTY, AND PATENTS 143 III. PATENT PRIOR ART AND POSSESSION 148 A. Prior Art Generated by Someone Other than the Patent Applicant 150 1. Physical Creations of the Invention Must Be Publicly Accessible 150 a. A Prior Invention Under the 1952 Patent Act 151 b. Public Use and Possession 153 c. On-Sale Activity by Parties as Prior Art 157 d. Lessons for Physically-Based Prior Art from Possession Theory 158 2. "Paper" Disclosures of the Invention by Third Parties: Earlier Patents, Printed Publications, and Other Written Disclosures 161 3. Otherwise Available to the Public 163 B. Inventor-Specific Prior Art--Possession or Statute of Limitations? 164 1. How Possession Creates Consequences for Owners in Property Law 165 2. Inventor-Generated Prior Art--Public Knowledge or Statute of Limitations Punishment? 166 3. Patents and Printed Publications 168 4. Uses and Sales Activity 169 C. The Odd Categories: Derivation and Earlier Filed Patent Applications 175 1. Derivation Provisions--What Happens When Someone Steals the Idea? 176 2. Earlier Filed Patent Applications as Prior Art 180 IV. WHAT WOULD A TRUE POSSESSION-BASED PRIOR ART REGIME LOOK LIKE... AND WOULD WE WANT IT? 183 A. Advantages of a Possession-Based Prior Art System 185 B. Potential Objections to Possession-Based Prior Art 186 C. Conclusion--A Possession-Based Approach Seems More Attractive 188 V. WHAT DOES POSSESSION IN THE PATENT LAW CONTEXT ADD TO THE PROPERTY-BASED POSSESSION LITERATURE? 189 CONCLUSION 194 INTRODUCTION

Patent law is a difficult and intimidating class for most law students. The mix of technology, law, and economics can seem daunting. (1) Some concepts may make intuitive sense, at least at a high level of generality. For example, the requirement that an invention must be new, or novel, makes sense because we do not want to award patents for things that have already been created. (2) Similarly, the requirement that an invention must be more than a trivial advance in the state of the art, in other words, non-obvious, (3) is also easy to grasp, at least until the class jumps into the weeds of the doctrine.' (1) Both novelty and nonobviousness are relative, however. An assessment of those criteria requires a comparison between the invention as claimed in the patent and the "prior art," the set of information generally known to the hypothetical person having ordinary skill in the art (PHOSITA). (5)

The definition of prior art is one area in which students usually stumble. (6) The statutory provisions are complex and have been altered dramatically in the last few years. Under the Patent Act of 1952, prior art was defined by 35 U.S.C. [section] 102, which was, frankly, a mess. (7) There was no rational structure to its provisions; it was merely a codification of previous judicial decisions arbitrarily listed in no particular order. (8) Prior art under the 1952 Patent Act was devoid of any broader theoretical architecture that informed the section. (9) Given the lack of a theory, unsurprisingly many of the provisions overlap, creating considerable confusion. (10)

Section 102 was amended significantly with the adoption of the America Invents Act (ALA) in 2011." The AIA shifted the U.S. patent system from one that awarded patents to the "first-to-invent" to one where the patent goes to the "first inventor to file" a patent application on the invention. (12) This move brought us closer to the rest of the world as, before the ALA, the United States was the only country to award patents to the first-to-invent. (13) The ALA's section 102 provides a clearer analytical structure, though it remains complex. (14) Additionally, while much of the language in section 102 has an antecedent basis in the 1952 Patent Act, (15) there remains considerable debate about the scope of the various provisions. (16) Given that Congress imported much of the language in the AIA from the 1952 Patent Act, (17) these terms also represent an ad hoc compilation of previous judicial decisions. (18) As such, there still is no true theory of what constitutes prior art in patent law.

This state of affairs is problematic. The doctrines implementing these statutory provisions continue to evolve through case law with little theory to guide their development. (19) This Article offers a theoretical construct that can unify the prior art categories and offer important insights into their current and future development. Drawing on the concept of "possession" from property law, (20) this Article suggests that prior art should be considered information known either to the broader general public, when talking about prior art generated by third parties, or to the particular patent applicant. By asking "who possessed the information," various policies and concerns become clear. Indeed, the AIA embraces aspects of this approach: it excludes from prior art information generated by the applicant within one year of her application filing, whereas third-party prior art is not given this grace period. (21)

The concept of "possession" is central to, and pervasive throughout, property law. (22) The first to take possession of, or occupy, a wild animal (23) or abandoned property (24) is the owner of the item. The first to take possession of lost property is the "finder" and is thus a bailee with an interest superior to all except for the true owner. (25) One who occupies and uses another's land can become the true owner through adverse possession. (26)

Carol Rose views possession in these contexts as a form of speech: someone who is claiming the object is telling others that the object is hers. (27) Others have explored how possession acts as a statement to third parties about ownership over the item at issue, which is important given the in rem nature of property rights. (28)

These conceptions of possession also operate within patent law. (29) A necessary prerequisite to either the first to invent or first inventor to file regimes is that inventors possess the relevant inventions, as demonstrated through their patent application.' (0) The patent statute requires that applicants sufficiently disclose their inventions to demonstrate that the applicants possessed their inventions as of the filing date (31) and to ensure that others in the relevant technological field can make and use the claimed inventions without undue experimentation. (32) The extent of the disclosure also can impact the scope of the rights afforded under the patent, both literally (33) and under the doctrine of equivalents. (34) Indeed, given that the patent system awards new property rights on a daily basis, allocating rights to the winner of the patent race, possession has even more salience in patent than in property law. (35)

Patent law is different than other forms of property, however, in that merely winning the possession race against other competing inventors is insufficient to get a patent. (36) The applicant also has to "win the race" against what is already known. (37) Patent applicants must show not only that they are the first to possess the invention by being the first to invent (under the 1952 Patent Act) or the first to file (under the AIA), but also that they are the first to possess the invention ever, relative to what is publicly known within the relevant field of technology. (38)

Elsewhere I have explored how the use of possession informs the doctrines of anticipation and obviousness, positively and normatively. (39) In essence, both of these doctrines require the applicant to demonstrate that the public was not yet in possession of the claimed invention. (40) The doctrines of novelty and obviousness, therefore, delineate the "thing" that is the subject of possession, the invention. (41)

Possession goes beyond simply the "thing," both in the property and patent contexts. To constitute possession, the possessor's acts must communicate the exercise of dominion to third parties by some public act. (42) Prior art in patent law--the set of materials against which the novelty and nonobviousness are assessed--also generally requires some level of public accessibility. (43) The possession lens therefore provides "a theoretical basis for investigating what [information] should count as 'prior art.'" (44) In other words, novelty and obviousness are concerned with the sufficiency of the possession. Prior art doctrines, on the other hand, relate to the communicative function: the communicative act must be sufficiently public to be considered an act of possession, regardless of whether the prior art sufficiently discloses the invention. (45) The statutory provision governing prior art under both the 1952 Patent Act and America Invents Act is 35 U.S.C. [section] 102. (46)

This Article offers a novel exploration of the prior art provisions of both patent acts and advances a new theoretical perspective on prior art, based on the concept of "possession." This piece is particularly timely because the United States Patent and Trademark Office (USPTO) and the courts are confronting the new prior art provisions of the ALA (47) As we transition from the 1952 Patent Act's ad hoc definitions of prior art, as confusingly enumerated in 35 U.S.C. [section] 102, (48) to the AIA's new, more logical, and yet more complex structure, (49) this Article's interrogation of prior art is timely and important. It serves to answer some lingering questions about the scope and purpose of section 102 of the 1952 Patent Act while offering insight and potential answers to the issues that will be forthcoming under the AIA section 102.

Until recently, few scholars have considered the role of possession as it applies to intellectual property law. (50) Indeed, some have questioned its applicability. (51) This piece...

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