The Importance of Communication to Possession in IP

Abstract

In this invited online symposium piece, Professor Holbrook engages with the recent article by Dotan Oliar & James Y. Stern, Right on Time: First Possession in Property and Intellectual Property, 99 B.U. L. Rev. 395 (2019). This essay explores the important role that communication to interested third parties plays in possession for allocating property rights. The essay focuses on two aspects of patent law that demonstrate the importance of such communication: patent priority and utility. Under the first-to-invent regime, the first to invent could lose the right to the patent - and a second-to-invent could get the patent - if the first abandoned, suppressed, or concealed the invention. Thus, to qualify as being in "possession" of the invention first, there must be a communication of the invention. In terms of utility, patent law requires the disclosure of utility in the patent document itself. Exogenous demonstrations of utility are insufficient, again demonstrating the importance of the communicative act.

Keywords: patent, possession, first to invent, utility, first in time