10/28/19

Who Owns A Fox? Possession is the root of title in patent law


Who Owns A Fox? Possession is the root of title in patent law

Christine Johnson

What is it to possess? This appears a very simple question- there is none more difficult of resolution, and it is in vain that its solution is sought for in books of law: the difficulty has not even been perceived.”

The most valuable public resource in America today may lie in the public common of human ingenuity and ideas. Like ferae naturae ideas in the public common are not subject to individual ownership in their wild state. In English law private ownership of ferae naturae is acquired by taking possession of them. The state of possession raises prima facie title. The Copyright and Patent Clause of the Constitution empowers Congress to secure to inventors exclusive rights to their inventions. A patent is a deed that conveys title to an invention as private property. The title is granted in a quid pro quo exchange involving public rights. When the PTO issues a patent, it “take[s] from the public rights of immense value, and bestow[s] them upon the patentee.” At the end of the patent’s term the invention described in the patent’s written description is conveyed to the public. Describing that invention in writing is an inventor’s burden in the quid pro quo exchange. The public benefits from the exchange to no more extent than the inventor meets this burden. To describe one’s invention one must have invented. Patents describing ideas for effects and results in the abstract of any completely conceived invention cause grave public harm. 

A title-eligibility model is proposed which aims to avoid this public harm. The model inquires whether a claimant’s written description raises prima facie title to qualify the claimant as an inventor to place the claimant within a statutory category of applicants who may obtain a patent under 35 U.S.C. § 101. The model highlights the role of possession in raising prima facie title to an invention. The model suggests a title eligibility inquiry may be more efficient and effective than a subject matter eligibility inquiry to determine compliance with 35 U.S.C. § 101. Part II relies on the capture doctrine of Pierson v. Post for the ‘first to possess’ rule of property ownership and for the proposition a factual inquiry on capture resolves the legal issue of possession to raise prima facie title to ferae naturae. A subject matter eligibility inquiry is distinguished from a title eligibility inquiry in the context of a quid pro quo exchange in which the public pays a bounty for captured ferae naturae. Part III suggests 35 U.S.C. § 100 and 35 U.S.C. § 101 implement the Progress Clause of the Constitution to define a statutory category of claimant who may obtain a patent and that 35 U.S.C. § 112(a) articulates a requirement to describe an invention to raise prima facie title to place a claimant in that category. Mergenthaler v. Scudder is relied upon to define conception of an invention. A written description that shows conception of an invention shows capture to raise prima facie title to the invention. Voelker v. Gray is relied upon to distinguish conception of an invention from conception of an idea. Conception of results alone fails to raise prima facie title. Part IV presents the proposed title eligibility model and applies it to patents describing functionally claimed results at issue in the Supreme Court’s decisions in Evans v. Eaton and Alice v CLS Bank.

The paper concludes a title eligibility inquiry may be more efficient and effective than a subject matter eligibility inquiry to determine compliance with the provisions of 35 U.S.C. § 101. The paper suggests 35 U.S.C. § 100 and 35 U.S.C. § 101 define a statutory category of claimant who may obtain a patent. Claimants who fail to raise prima facie title in an invention are an implied exception to the statutory category. Patent applications with insufficient factual evidence to raise prima facietitle could be rejected under 35 U.S.C. § 101 on grounds the claimant is not an inventor with their invention. The Progress Clause does not empower Congress to grant exclusive rights to individuals without their inventions. A claimant without their invention is not ‘whoever invents’ to be within a statutory category of claimant who may obtain patents under 35 U.S.C. § 101. A patent title is bad where prima facie title in an invention is not raised by its written description. Pending claims may be adjusted to have a scope commensurate with a claimant’s prima facie title. The title eligibility inquiry is dispositive of the issue of subject matter eligibility and is more compact. The model approach aims to avoid granting patents with claims excluding the public from more than a patent’s written description shows the claimant would contribute to the public domain as the claimant’s own invention. In patent law possession is the root of title.

101 J. Pat. & Trademark Off. Soc’y 72 (2019)

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