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Not-Yet Filed Invention Rights


The Patent Act signifies that patents needs to be treated as if “personal property” and that each patents and patent functions are “assignable in law by an instrument in writing.” 35 U.S.C. 261.  Section 102 additionally has shown that the claimed invention might already be “owned” previous to submitting. 35 U.S.C. 102(b)(1)(C).

A disclosure [in a prior-filed patent application] shall not be prior artwork to a claimed invention under subsection (a)(2) if … [T]he material disclosed and the claimed invention, not later than the efficient submitting date of the claimed invention, have been owned by the identical particular person or topic to an obligation of task to the identical particular person.

Id. The reference to possession of pre-filing innovations suggests a property proper, however doesn’t expressly outline that proper.  In its 2011 determination, the Supreme Court provided 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 courtroom additionally provided some instances for dialog:

  • 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 previous instances, it’s stays unclear to me what does it imply to “own” a “claimed invention” earlier than the patent utility is on file.  What regulation applies?


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