Not-Yet Filed Invention Rights

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?

52 thoughts on “Not-Yet Filed Invention Rights

  1. 11

    Dear Dennis —

    Do you do any kind of art? Let’s say it’s ceramics. “Hey Dennis. Throw me a pot.” “OK, David, I require payment in advance.” “Great Dennis, here’s $20.” “Great. I’ll keep your $20 in my IOLTA.”

    “And oh by the way my uncle tells me he;s amended his will to leave me his Bugatti Roadster. And he also left money to create a trust on his death, that doesn’t exist today, for benefit of the Boston Symphony.”

    A week later.

    “Hey David here’s your pot. And so sorry to hear about your uncle.”

    “Thank you.”

    Does anyone need to execute another assignment for any of the three transfers? No. You just said “Here’s your pot.” The rest of the law is perfectly comfortable with assignments of future interests. Why would patent law be different?


    1. 11.1

      David, the view from outside might help to illumine the problem that Dennis is addressing. I’m going to be trenchant here, in order to provoke further comment.

      Dennis’s difficulties are, I suspect, peculiar to 35 U.S.C. 102(b)(1)(C) and are caused by a confusion in the mind of the statutory draftsperson, in that the statutory provision wanders between three different concepts, namely, i) disclosure ii) whatever is “the invention” and iii) whatever is the subject matter of “the claim”. In my opinion, Dennis has ample justification for his confusion.

      Back in 1973, when the FF’s were drafting the European Patent Convention on a blank sheet of paper, they had for consideration two rival notions how to deal with the prior art represented by earlier filed applications, namely the well-established and self-sufficient “prior claiming” approach or the rival approach based on disclosure and dubbed the “whole contents” approach.

      As most everybody knows, they plumped for “whole contents” and the law has been clear ever since. To me, the statutory provision that troubles Dennis looks like a dog’s dinner of pick and mix muddled mixing of domestic prior claiming and ROW whole contents approaches, to the extent that I don’t know now what is prior art in America, and what is not.

      1. 11.1.1

        Vigorous or incisive…? And then you plod forth with your i), ii), and iii)….?

        You seem to have some notion of your Euro-view and some ‘battle’ there between “prior claim” and “whole contents,” but you do nothing to draw any such Euro-items to the immediate points at hand.

        Yours is the opposite of trenchant.


          To be more specific, I’m wondering about how one goes about resolving questions of ownership of something variously dubbed “the disclosure” or “the subject matter disclosed”.


            What does that have to do with your musings on prior art?

            The more ‘specific’ and ‘trenchant’ you try to be, the less clear and more muddled you become.

            Maybe not try to insert a commercial for the ‘EPO-way’


              Depending on its ownership, a prior disclosure is either AIA 102 prior art or its isn’t. So resolving its “ownership” will be decisive. Are you saying that resolving the ownership of some information content within the “disclosure” of an earlier filing is never a problem?


                I am saying that your postulations simply are nowhere near being trenchant.

                Try from the start, this time without trying to insert an EPO-Uber-alles commercial into your statements

  2. 10

    Great points Martin. It strikes me that current 101 caselaw fails to distinguish between claims that do not capture the inventive concept sufficiently (abstract claims) and those that lack an “inventive” concept (which, from my reading of current caselaw, may be synonymous with non-technical concepts).

    There is perhaps a third category: those concepts that might have been inventive at one time, but are now “well-understood, routine, and conventional.” This strikes me as the most problematic category to which Section 101 is applied.

    1. 10.2

      do not capture the inventive concept sufficiently

      Sufficiency of capture — what do you mean by this? Use current recognized patent legal terminology (and not the half-baked, messed up misuse that exemplifies Marty’s ramblings).

    2. 10.3

      How is “failing to capture (even if but insufficiently) and “lacking” any different from each other?

    3. 10.4

      … and then realize that US patent law does NOT have a “technical arts” requirement (no matter how much rewriting of the statutory law the SC may have been attempting to do.

    4. 10.5

      Your “third category” exemplifies the very worst of not understanding the conflation of 101 with 102/103.

      That’s the type of thing we should be working at eliminating — NOT ‘celebrating.’


          Not at all.

          Do not confuse a lack of response (because the person to whom comments are directed to CAN NOT provide a cogent rebuttal) with “talking to oneself.”

          You might want to ‘check’ your own pluralistic use of “we” in your own singular posting sense in that context, as it appears that you are yet again projecting your own habits onto others.


              Did you bother reading the content?

              The four are different.

              Please pay attention. It’s the least that you can do, given how much you already obsess over me.


                Lol – so you are saying that you have literally hundreds of posts to or about me, but you don’t bother with content…

                That is one super size anvil to your noggin — even for you.

                (And NO ONE — not in the almost sixteen years of this blog’s commenting has been like you in your obsess10n.)

                1. Where did you get the idea that I’m “saying” what you say I’m saying, Snowflake? As your own designated expert concluded, you are an incredibly sloppy reader, writer, and thinker.

                  Why is more of your nonsense not deleted? Not a rhetorical question.

                2. It does not take an expert, Shifty – the evidence is more than abundant that your only interest is in trying (emphasis on ‘try’) to game me.

                  With more than 600 posts in the last year directly to or about me, and yet ZERO times of you actually achieving your ‘gotcha’ moment – no matter how many times you want to ignore context – where I ‘get the idea’ is JUST LIKE connecting the dots on the fact that you have retired from the patent office.

                  You may not like the fact that I am correct in my summations, but nonetheless, I AM correct.

                3. Try to focus, Snowflake. Where did you get the idea that I’m “saying” what you say I’m saying, Snowflake?

                  We agree with your own designated expert that you are an incredibly sloppy reader, writer, and thinker.

                4. Yet again, Shifty, you seek to take a comment out of context (my ‘expert’ was so designated for a particular aspect that did NOT include his comments on me – precisely because while expert at one area, his ego is as big as a house, and I showed him to have an errant view of law when it comes to Void for Vagueness).

                  And to answer your question directly, see your own words at post

                  By the way, I see that you had slacked a bit last night (one post only), and that you seem to have decided to try to make up for it this evening by starting early with posts across 8 threads (sadly – for you, ALL of them being nothing more than the types that I enterprise on; but hey, Thank$$$$$$$$).

                5. Try to focus, Snowflake. Where did you get the idea that I’m “saying” what you say I’m saying? Show everybody that you are not an incredibly sloppy reader, writer, and thinker.

                6. Maybe this is one of those of yours “I did not read the content” ones,

                  But you should read the content when you ask questions. It would stop that anvil to the noggin proclivity of yours of asking questions already answered.

    5. 10.6

      Bryan thanks for the good word.

      Anon is useful as a reality check once in a blue. If he (or she) actually makes a discernible point from time to time, it’s going to be a contrarian take, which can be a useful reflection to test your premise. Mostly they produce just noise.

      To my argument:

      Is there something that makes one information invention intrinsically abstract and another intrinsically material?


      The judicial exceptions- and virtually every difficult subject matter case- are really all about INFORMATION.

      A natural law is information. An abstract idea is information. A natural phenomenon is not necessarily information, but it’s also not an invention & there are rarely hard cases in that category.

      The results of virtually every computerized non-hardware process invention are some species of information.

      The Patent Act and common law of patents was developed before the information age, when only occasionally new, useful and fully described methods of obtaining utility via information alone appeared as patent applications.

      The best lens to decide when an information invention is abstract or material is simply the nature of the consumer of the information.

      When human beings use information for human purposes, that utility is always abstract, and intrinsically abstract. When non-human actors use information for machine purposes, it’s never abstract, because no human mind=no abstraction.

      Abstraction in claims, on the other hand, can be a combination of obviousness and lack of description / too-functional claiming. The Alice test is actually fairly handy for handling these kinds of claims early in litigation.

      I’d invite you to read my thoughts in detail on this. I’m an activist- my goal is to change minds by infecting them with a view that’s hard to shake once understood.

      link to

      1. 10.6.1

        Which statutory category does “Information Invention” belong to?

        Which statutory category does the fabled “traffic light” belong to (seeing as the utility is necessarily extrinsic to the device)?


          Which statutory category does “Information Invention” belong to?

          It belongs to process, and just as claims are construed as a matter of law, the results of a process should have a Markman like procedure to determine the nature of those results. If the results of a process are not some species of information, they would not be subject to an information-results doctrine such as that I am proposing.

          The invention should be construed just as the claims are, because we have already established that they are two different things.

          Berkheimershould have been the case to establish that symmetry.

          Hopefully this will all tee up at the right time and USSC will do what needs to be done. Tillis and company could do it with a single sentence in 100(b) but odds are they will just make things worse if they manage to pass anything.


              An improved traffic light would be claimed like any other improved light fixture.

              A method where the result is a driver knowing to stop upon seeing a light would be ineligible.

              The same method applied to an autonomous vehicle would be eligible, but of course, obvious.


                Also, you did not quite answer my question, as I did not ask “how would be claimed.”

                You are being obtuse (at best) in not making the connection that the utility of a traffic light (thing) ‘suffers’ from the same affliction that you only want to see for the method statutory category.

                1. Your notion of unitary utility- thats its all the same all the time- is totally unsupportable and defies common sense.

                  The utility of a light fixture is containing a source of illumination. The use of that illumination is irrelevant: illumination is intrinsically useful. A sharper knife is intrinsically useful without regard to what it may cut.

                  Intermediate purposes exist and will always exist.

                2. I have no such “unitary” utility.

                  What I do have is the proper notion of the legal sense of utility for patent law.

                  You may want to try that.

  3. 9

    I would suggest that since Oil States patents do not seem to be property at all. Rather, they constitute a license grant by the federal government that in principle can be revoked. Thus perhaps the “attributes of personal property” should be “the attributes of licensed property” ?

    1. 9.1

      Sorry for the delay Bob, but I had missed your comment earlier.

      I would rebut your proposition with the observation made by Greg DeLassus that licensed property IS a form of personal property.

      I would though add the caveat (that Greg refuses to address) that IF we DO view these things as licensed property, then we must also call into the picture the legal ramifications of LicensEE and LicensOR.

      This may well include duties TO the licensee from the licensor.

  4. 8

    35 U.S.C. 261 states “Subject to the provisions of this title, patents shall have the attributes of personal property.” It does not say they are personal property. While patents have “attributes of personal property”, they are not simply “personal property.” Congress could easily have just said, “patents are personal property.” Instead they qualified it. The debate that follows is which attributes of personal property patents do and don’t have. Some argue they have all of them, while others argue for a much more limited set. Although it would be contentious, it would be useful for Congress to lay out which attributes of personal property patents do and don’t have.

    1. 8.1

      The words you yourself reference lay out the answer to the question you pose.

      Patents have ALL aspects of personal property subject to the provisions of this title.

  5. 7

    Another case on point: The Attorney General upon the relation of George V. Hecker v. The Rumford Chemical Works et al., (May 1876) (Shepley, J.): “So long as such writings and discoveries were not communicated to the public, authors and inventors had a possession of which was equivalent to a property in their writings and discoveries. When communicated to the public by the common law that property was lost. Consideration that an inventor will disclose the secret of his invention and put it in immediate practice and afford to the public the opportunity to practice it when it becomes public property at the expiration of the term of the patent the government grants to the author of a new and useful invention the exclusive right in that invention for a term of years.”

    1. 7.1

      I am waiting for you to alight upon the case (a critical case to this point) that the late Ned Heller and I discussed at great length on these pages many moons ago.

  6. 6

    Here is an opinion for food for thoughts: Pitts v. Hall, 2 Blatch., 229, 231 (1851) (Circuit Court, N. D. New York 1851) (Justice Nelson, Riding Circuit): “Now, there is no doubt that a person, to be entitled to the character of an inventor within the meaning of the Act of Congress, must himself have conceived the idea embodied in his improvement. It must be the product of his own mind and genius and not of another’s. Thus, in this case, the arrangement patented must be the product of the mind and genius of Carey, and not of Bower’s or Fowler’s. This is obvious to the most common apprehension.” This and subsequent holdings by the Riding Circuit Justices seem to suggest that from its inception, invention, is a quasi federal protected statuary right.

  7. 5

    Whether an invention exists or not is defined by federal law, inventor’s ownership rights and quasi-ownership rights in and to an invention are governed under state law.

  8. 4

    Your phrasing: “what does it mean to ‘own’ a ‘claimed invention’ before the patent application is on file” is misleading for two reasons.

    First, the statue says “not later than than the effective filing date,” and as such does not require ownership “before the patent application is on file.”

    Second, the statute does not imply that an invention can be “claimed” prior to filing, as your phrasing supposes. The statute’s discussion of a “claimed invention” is simply a reference to that which is claimed in the now-filed application, with recognition that ownership might occur prior to claiming. Thus, the only reasonable reading is with regard to “the subject matter disclosed and the [(now claimed)] invention, not later than the effective filing date of the claimed invention.”

    Further, nothing is strange about having rights that exist prior to filing. It is well established that only the inventor, or an applicant to which the inventor has assigned or is obligated to assign, has the right to file for a patent on an invention. No one else has that right. Clearly, rights thus exist prior to filing.

    1. 3.1

      “Are inventions distinguishable from claims?” Yes, one cannot claim that which does not exist.

      “Does the invention precede the claims?” Yes, one cannot file a claim prior to invention.

      “Or do the claims give the invention its body?” The claims define the metes and bounds of that which an applicant considers the invention.

      An invention exists, and claims draw lines around it. It is difficult if not impossible for anyone other than the inventor (or their agent) to define the invention absent the claims. That is why the onus of claiming is on the inventor (or their agent).

      1. 3.1.1

        The reference to “claimed invention” in 102 looks back in time at the actual invention, which is later claimed. The “claimed invention” defines the Federally protected invention. But, clearly the invention upon which the claims are based must have existed prior to being described/defined in the claims. An imperfect but illustrative real property analogy is that an owned parcel of property has its metes & bounds before the ‘claimed property’ defined in a deed and survey are recorded.


          I ask for a specific reason, not related to assignments & ownership, but to the policy and philosophy of the Patent Act.

          To me, it’s apparent that Section 101 is intended for inventions, and 102/103/112 is intended for claims.

          The judicial exceptions, such as they are, should apply differently to claims and inventions, because abstract claims are not the same thing as abstract inventions.

          Abstract claims are extrinsically abstract because they must relate to the extrinsic facts about PHOSITA and construed meaning of the words.

          The Alice test makes sense when applied to claims, but is totally non-repeatable, and thus unconstitutional, when applied to inventions.

          When an invention is composed entirely of information, it’s always abstract.

          But is there something that makes one information invention intrinsically abstract and another intrinsically material?

          Yes, there is.


          Extending your real estate analogy a little, the referenced portion of 102 seems somewhat analogous to adverse possession. Rights in a property are created under common law by exhibiting certain behaviors and the “metes and bounds” of those property rights are subsequently recorded. So by recording the extent of the property rights are retroactively defined even though the property rights vested before the recording.

          My guess (I’m not a real estate attorney) is that the act of recording or filing an action stating the extent of the vested property right has a legal effect of limiting the scope of the common law vested property right via estoppel. I.e., that you can’t, subsequent to a recording or decision on the first action defining the property right, refile or re-litigate to expand the property right based on the same activities.

  9. 2

    ? The “subject to an obligation of assignment” is of course typically an employment [or technical consultant] agreement re ownership of future inventions and patents ownership related to that employment. A contract that should be interpreted and limited by the applicable state contract law, and enforceable, including specific performance if necessary, in either a state court or in a federal court under Erie v. Tompkins.

    1. 2.1

      Of course if the later claimed invention falls outside of the terms of the employment agreement or outside of the scope allowed by the applicable state law, then it still belongs to the inventors. However in some cases in some states it might still be subject to an employers “shop right” license.

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