by Dennis Crouch
For my property law course this semester, students only get two credits, which means they get roughly half a page on patent law. That is not much space considering that I’ve written 9,000 posts covering every corner of our 235 year old system. The reading comes immediately after reading on Popov v. Hayashi and Pierson v. Post.
A core insight here is that Pierson v. Post, 3 Cai. R. 175 (N.Y. Sup. Ct. 1805), and the America Invents Act of 2011 are doing the same work. Both define a formal act that counts as “possession” and award priority to whoever performs it first. In Pierson, the act is killing or capturing the fox. In patent law, the act is filing the application. The shift from the old first-to-invent system to first-inventor-to-file is a rehash of the majority-dissent split in Pierson. The old regime, which rewarded the first person to conceive of an invention (so long as she proved diligence in reducing it to practice), resembled Justice Livingston’s dissent, which would have awarded the fox to the pursuer in hot chase. The new regime, like the Pierson majority, demands a clear, unambiguous act of capture. Note that this insight comes from Dotan Oliar & James Y. Stern, Right on Time: First Possession in Property and Intellectual Property, 99 B.U. L. Rev. 395 (2019), I just wrote it in a way that 1Ls can read and easily quickly.
The supplement works through each of the major IP regimes in turn. Patent law provides the closest analogy to the rule of capture. Copyright is different: protection attaches automatically at the moment of fixation, no examination required, and independent creation is a complete defense. Two photographers can take nearly identical pictures of the same Burr Oak tree, and each owns a valid copyright. Trademark sits closest to a pure first-possession model, with rights acquired through use in commerce, though what is “possessed” makes me a bit squeamish: the goodwill and mental association in the consuming public’s mind.
Do the short reading here: CrouchSupplement_IP_and_Possession
Great blog. Vaguely reminded me of my first property law class that also started with great historic examples of that fox, and passing a clod of earth for a medieval real property transfer, and tagging whales in Moby Dick. [But disappointingly much less interesting much of the rest of the semester.]
But as for pre-AIA patent law, “conception plus reasonably diligence until filing the patent application” was not nearly as significant and winnable as being able to prove a “prior actual reduction to practice” with no abandonment until filing the application. Both conception and reasonable diligence were often tough to have sufficient evidence for to beat an earlier filing date of the other party and the testimony of the inventors themselves was insufficient. The junior party, who filed last, lost in the great majority of all interferences, especially small inventors, as those drafting the AIA knew well.
One other example of when an employee inventor might want to have his or her own attorney: When that inventor’s former employer (or a PAE assignee) is suing on that inventor’s patent and the litigation opponent’s attorneys are deposing the inventor and trying to nail the inventor for inequitable conduct. [Likewise for the attorney that drafted and filed the application.]
LOL – I bet you would love my property class.