William & Mary Law Review


Prior art in patent law defines the set of materials that the United States Patent and Trademark Office (USPTO) and courts use to determine whether the invention claimed in a patent is new and nonobvious. One would think that, as a central, crucial component of patent law, prior art would be thoroughly theorized and doctrinally coherent. Nothing could be further from the truth. The prior art provisions represent an ad hoc codification of various policies and doctrines that arose in the courts.

This Article provides coherency to this morass. It posits a prior art system that draws upon property law’s conception of possession. Possession operates when an actor asserts dominion over a resource or object in a way that communicates that assertion to third parties.

In this way, public availability becomes the key lodestar to prior art. In the prior art context, the possession framework would divide prior art into two categories: prior art generated by third parties and prior art generated by the patent applicant herself. The former would require clear demonstration of publicly available information, suggesting that current law is wrong. As for the latter, a possession approach could treat inventor-generated material in the same way as third-party prior art. Alternatively we could take a strict statute of limitations approach to inventor-created uses and commercialization efforts, barring a patent if the inventor simply delays too long in filing her application, regardless of the public accessibility. Sadly, the status quo is an inconsistent blend of both. Finally, some forms of “secret prior art” should be addressed through administrative procedures.

The Article then assesses the advantages and disadvantages of such a prior art system, concluding that the benefits outweigh any disadvantages. It then also explores how patent law has done heavy lifting in the context of possession and public accessibility that property law has not. Patent law has more rigorously explored the appropriate audience for receiving the communications of possession. Property law stands to learn from patent law in this regard.