Pre-Possessory Interests in Patent Law

by Dennis Crouch

A newly canonical case in property law texts is Popov v. Hayashi, 2002 WL 31833731 (Cal. Super. Dec. 18, 2002).  The case involves a Barry Bonds record-setting home run baseball.  Alex Popov almost caught the ball, but as it entered his glove he was immediately engulfed by the crowd of fans who were deemed an “out of control mob, engaged in violent, illegal behavior.”  The ball came-out and Patrick Hayeshi (who was also knocked to the ground) picked up the ball and took possession. There was no credible evidence that Hayeshi took part in any of the violent or illegal behavior. Because of the oddity of fandom, the $6 ball was boosted to an expected value $1.5 million based upon its record-setting experience. (It was eventually sold at auction for ~$500k because of Bonds’ drop from fame).

Hayeshi had physical possession, but Popov wanted ownership and sued — pleading conversion, trespass to chattel, injunctive relief and constructive trust.

In its decision, the California judge partially ruled for Popov — holding that he had a “pre-possessory interest” in the baseball once it went in his glove, and that interest was unlawfully interrupted by the Crowd.

As a matter of fundamental fairness, Mr. Popov should have had the opportunity to try to complete his catch unimpeded by unlawful activity. To hold otherwise would be to allow the result in this case to be dictated by violence. That will not happen.

Although Popov had some interest in the ball, Hayeshi was the one who took actual possession (gaining complete control of the ball and stopping momentum), and did so using within the bounds of both law and baseball custom.

In the end, the judge was unable to figure out which of the two should win:

Neither can present a superior argument as against the other.

Mr. Hayashi’s claim is compromised by Mr. Popov’s pre-possessory interest. Mr. Popov cannot demonstrate full control. … Their legal claims are of equal quality and they are equally entitled to the ball.

The court therefore declares that both plaintiff and defendant have an equal and undivided interest in the ball.

Id. In the end, the two co-owners sold the ball. The case would have come out differently if Hayashi was seen as a wrongdoer (Popov would get full ownership) or if Popov had dropped the ball without being wrongfully jostled (Hayashi would get full ownership).  The halfsies outcome is somewhat unusual in property law but was made easier because both parties announced they wanted to sell the ball — it was much easier to split the money rather than share possession of the ball itself.

In patent law, conception used-to establish a pre-possessory interest in the future patent.  Conception created an inchoate (incomplete) right that could be secured by diligently reducing the invention to practice (either actually or constructively by filing the patent application).  This approach has changed substantially post-AIA where the focus is on completing the invention process by filing for patent rights with severe limitations on any pre-filing rights or interests.  Prof Oliar and Stern explained;

The first-to-invent rule was abandoned following enactment of the Leahy-Smith America Invents Act (“AIA”) in 2011, the most comprehensive overhaul of U.S. patent law in at least half a century. Its most prominent change was to replace the first-to-invent rule with a first-to-file system, or more precisely, a system that awards patents to the first person to disclose their invention to the public, whether by filing a patent application or through other public acts. The AIA thus pushes back the temporal lynchpin from the beginning of the inventive process to its end.

Dotan Oliar, James Y. Stern, Right on Time: First Possession in Property and Intellectual Property, 99 B.U. L. Rev. 395, 422 (2019) (DDC: Note that the FTF change hasn’t been the most prominent change as suggested by the authors).

Patent law presents an element beyond the Oliar article and the Popov v. Hayashi decision. The patent system is not not generally focused on a winner-take-all approach. We’re not talking about the single Barry Bonds ball (or even a half-dozen). Rather, there are hundreds of thousands of potential valuable inventions awaiting discovery.  The plethora of potential inventions naturally offers the partial reward granted in Popov v. Hayashi.  No single person or entity will be able to claim all (or even a substantial percentage) of the inventions.  But, to claim any rights, the inventor must actually capture the “wily quadruped” despite knowledge of other hunters.  Pierson v. Post, 3 Cai. 175, 175 (N.Y. Sup. Ct. 1805) (“Pierson, well knowing the fox was so hunted and pursued, did, in the sight of Post, to prevent his catching the same, kill and carry it off.”).

In thinking through Popov v. Hayashi, I would pause to distinguish between the Popov’s pre-possessory interest in the ball and the pre-filing inchoate rights of an inventor.  While the second has been long considered a property right — the former is more like a personal interest that should not be wrongfully injured.  The closest actions would be unfair competition or wrongful interference with contractual relationships. Those actions are powerful, but are generally seen as outside of the property law context and instead in the midst of torts. The Supreme Court, on the other hand, has explained the power of an inchoate right to a patent:

The discoverer of a new and useful improvement is vested by law with an inchoate right to its exclusive use, which he may perfect and make absolute by proceeding in the manner which the law requires.

Gayler v. Wilder, 51 U.S. 477, 493 (1850).

27 thoughts on “Pre-Possessory Interests in Patent Law

  1. 8

    Does an employer of an inventor of a patentable invention enjoy a pre-possessory and “inchoate” right to the patents on that invention?

    Perhaps not in the USA. But how about in the UK, given what Section 39(1) of the UK Patents Act 1977 provides. Here it is, cut short for ease of assimilation here:

    Section 39(1)
    Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer for the purposes of this Act and all other purposes if ­
    (a)::::::::::::::::::::::::::; or
    (b) the invention was made in the course of the duties of the employee and::::::::::::::::::::::::::::.

    1. 8.1

      Does an employer of an inventor of a patentable invention enjoy a pre-possessory and “inchoate” right to the patents on that invention?

      That question has been definitely resolved in the US Sovereign.

      Come now Max, I have taught you this previously.

  2. 7

    Following is the earliest discussion of the “inchoate right” concept in connection with inventions and personal property rights: It is a fact that Congress does not create the patent right, the statute only secures the exclusive right of which the inventor is already “in possession”. Chief Justice John Marshall explained that the Constitution and the patent statute, taken together, recognize the “inchoate and indefeasible property in the thing discovered” — a property right in the inventor “from the moment of invention,” which was “only perfected by the patent”; see Evans v. Jordan, 8 F. Cas. 872, 873-74 (C.C., D.Va. 1813) (Marshall, C.J., Riding Circuit) affirmed Evans v. Jordan & Morehead, 13 U.S. 199 (1815) (6:0) (Washington, J.)

    1. 7.2

      Importantly for the conversation here (and the abject evidence that Malcolm should not be involved with patent law), there are two distinct elements in play:

      1) The existence of the inchoate right; and
      2) The allocated path of turning that inchoate right into a full set of legal property rights (which draws on the notion of Quid Pro Quo).

      That some (and oh so typically anti-patent as Malcolm) refuse to understand foundational aspects of patent law, it is not altogether surprising then to see the advancement of fundamentally flawed views of what types of innovation may even be considered to be protectable (that, and he refuses to be inte11ectually honest about the design choices and their patent equivalency in the computing arts).

  3. 6

    Dear All,

    The English principle of “inchoate right” to an invention and its personal property right characteristic is really well explained in early English personal property treaties; i.e., Williams, Principles of the Law of Personal Property (1848). You all should read this and early studies on personal property right and inventions before 1850s. Discussing “inchoate right” in Gayler v. Wilder, 51 U.S. (17 Wall.) 477, 493 (1850) (interpreting assignment language of Section 11 of the Patent Act of 1836, Act of July 4, 1836, ch. 357, § 11, 5 Stat. 121).

  4. 5

    “Note that the FTF change hasn’t been the most prominent change as suggested by the authors.”

    True dat, Dennis.

    The most prominent change was the creation of the innovation-killing, death-squad PTAB; with their cadre of unconstitutionally-appointed “judges.”

  5. 4

    The term “inchoate right” is synonymous with “no right at all.”

    I have the inchoate right to hit a home run against last season’s Cy Young winner. Who cares?

    1. 4.1

      Even more to the point: there is no such thing as an “inchoate right” to a pre-filed invention after the passage of the AIA.

      Good grief, Dennis. Try harder please and stop huffing the maximalist spray paint.

    2. 4.2

      Your cognitive dissonance is noted.

      ANY patent attorney who understands the history and nature of protecting innovation would not blurt out such a thing as “the inchoate right is synonymous with “no right at all.”

      Did you skip the entirety of why we seek to protect innovation?

      Do you inform your ‘clients’ as to your views on patents? Out of fairness to them, they really should know your personal animosity.

  6. 3

    But none of this matters under Oil States. Patents are not property rights. A patent is a franchise purchased from the government. The government can grant the franchise, change the terms of the franchise, and revoke (retroactively!) the franchise. The inventor owns no property. The assignee owns no property. The assignee has a document that permits them to file a lawsuit to make someone pay them some money.

    1. 3.1

      Patents convey only a specific form of property right—a public franchise. See Pfaff, 525 U.S., at 63–64, 119 S.Ct. 304. And patents are “entitled to protection as any other property, consisting of a franchise.” Seymour, 11 Wall. at 533. As a public franchise, a patent can confer only the rights that “the statute prescribes.” Gayler, supra, at 494; Wheaton v. Peters, 8 Pet. 591, 663–664, 8 L.Ed. 1055 (1834) (noting that Congress has “the power to prescribe the conditions on which such right shall be enjoyed”). It is noteworthy that one of the precedents cited by Oil States acknowledges that the patentee’s rights are “derived altogether” from statutes, “are to be regulated and measured by these laws, and cannot go beyond them.” Brown, supra, at 195.2

      Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 1375 (2018)

      1. 3.1.1

        Inventions secured by letters patent are property in the holder of the patent, and as such are as much entitled to protection as any other property, consisting of a franchise, during the term for which the franchise or the exclusive right is granted.

        Seymour v. Osborne, 78 U.S. 516, 533 (1870)


            Deep deep stuff from the best Trumpists who’s appreciation of the law extends to the tip of their nose and their wallet and that’s it.

            Heckuva blog, Dennis.

    2. 3.2


      Greg DeLassus has made a big deal of differentiating mere public goods (which is what your take sounds like here) and the fact that a “Public Franchise” (important to recognize that the terms make up a single term of art) remains a type of personal property right.

      You are being ‘too colloquial’ in presuming that there is NO property right whatsoever left because of the Oil States case.

      Even if just a ‘franchise right,’ franchise rights remain a type of property.

      Of course, there are aspects that Greg will not answer in his ‘earnestness’ for saying that there really has not been a change for patents as property.

      He is quick to point out that a “Public Franchise” is still an item of personal property, but he steadfastly refuses to indicate just what NEW aspects must be present in the notion that “Franchise” is being invoked (which includes the natural duties and obligations of the party from whom the franchise is coming from to the party that is receiving the franchise).

      The change in term CANNOT have meaning only when it is convenient for Greg’s desired world view, but not change any other meaning that may — of necessity — ‘come along for the ride.’

      One quick example: since in Greg’s view it is perfectly fine for the government to maintain SOME legal hold on the item (there is no longer a completely full alienability), perhaps what SHOULD ‘come along for the ride’ is that the government who provided the franchise to the franchise holder should also be the one responsible for defending the validity of the item provided, as well as be the one that foots the bill for enforcing the franchise provided.

      Instead of the government having a “double-get-paid” system of being paid at the front end for examination AND being paid after grant for taking away the patent right, the government should be paying to defend the validity of patents in all post-grant challenges. Why NOT have the government out their money where there mouth is since THEY are the ones that “dealt out” the Frachise? Should not the person receiving the Franchise HAVE an expectation interest? After all, neither the AIA, nor the Oil States decision changed the fact that the act of grant created both a presence AND a level of presumption of validity.

      Should not the party presenting the Franchise back up what they present?


          News flash: the first step in fixing the broken scoreboard is realizing that the scoreboard is broken.

    3. 3.3

      “The assignee has a document that permits them to file a lawsuit to make someone pay them some money.” Why isn’t this property?

      1. 3.3.1

        Why isn’t this property?

        Indeed, good question. “Choses in action, rights and other interests, the benefits of which may be receivable now and in the future are classifiable as intangible personal property.” Hanify v. Hanify, 403 Mass. 184, 187 (1988)


            I kind of like the ambulance chasing analogy. Kind of like Pierson v. Post, only instead of two landowners each hunting a fox, one has two lawyers each chasing the potential plaintiff’s chose in action, and it does not belong to either until the one or the other actually takes possession.

  7. 2

    Would the prior use defense be a better example of pre-possessory interest than conception after the AIA?

    1. 2.1

      The prior user defense is not a ‘right’ per se and should be thought of more as a “get-out-of-infringement- liability” only after some other party goes to the trouble of exchanging in good faith the Quid Pro Quo and obtaining the exclusionary (negative) right that the patent property provides.

      It is ONLY when that right holder comes knocking on the door does the (true submarine) nature of the ‘prior user right’ surface.

      Further, this surfacing does not even destroy the patent right, which remains in effect against all others (and which provides a wind-fall free-riding effect for the party that has opted NOT to share or partake in the advancement mechanism of the patent system).

  8. 1

    This approach has changed substantially post-AIA where the focus is on completing the invention process by filing for patent rights with severe limitations on any pre-filing rights or interests.

    Inchoate rights were NOT affected by the AIA.

    In a classic comparison, competing inchoate rights merely switched to a ‘full race’ scenario.

    This is NOT like the baseball scenario (only one actual baseball), as there may well be more than one inchoate rights. Legal (and logical) error is introduced by trying to tie to analogies for which there is but one single item (in and of itself an item of legal effect).

    Or, to use a different analogy, there may well be — and perfectly legitimately so — multiple racers in a race.

    The mere fact that more than one is there to race has NO bearing on the winner of the race (and there is no sense that the winner somehow must share his winning prize just because others had been in the race).

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