The Patent Act indicates that patents should be treated as if “personal property” and that both patents and patent applications are “assignable in law by an instrument in writing.” 35 U.S.C. 261. Section 102 also suggests that the claimed invention may already be “owned” prior to filing. 35 U.S.C. 102(b)(1)(C).
A disclosure [in a prior-filed patent application] shall not be prior art to a claimed invention under subsection (a)(2) if … [T]he subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
Id. The reference to ownership of pre-filing inventions suggests a property right, but does not expressly define that right. In its 2011 decision, the Supreme Court offered the clue “that inventors have the right to patent their inventions.” Bd. of Trustees of Leland Stanford Junior U. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011). In Stanford v. Roche, the court also offered some cases for discussion:
- Gayler v. Wilder, 51 U.S.(10 How. 477), 493 (1851) (“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”);
- Solomons v. United States, 137 U.S. 342 (1890) (“whatever invention [an inventor] may thus conceive and perfect is his individual property”);
- United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933) (an inventor owns “the product of [his] original thought”).
Despite these old cases, it is remains unclear to me what does it mean to “own” a “claimed invention” before the patent application is on file. What law applies?