Possession in Patent Law

55 Pages Posted: 11 Oct 2005 Last revised: 27 Apr 2018


Every patent system in the world requires an inventor to disclose his invention in the patent document. The courts rationalize this obligation as part of the quid pro quo of the patent system: the patentee must disclose the invention to the public in exchange for the patent's exclusive rights. The patent thus teaches the world about this new creation and enhances the storehouse of knowledge. The quid pro quo view of the patent system, however, is inconsistent with the theoretical justifications for patent law. Patents are meant to combat free-riding, yet this view of the patent as "teaching" the invention is based on the view that free-riding is normatively good. This article explains this apparent inconsistency by recognizing that the teaching function is not the primary purpose for disclosure. Instead, the purpose of disclosure, and specifically the manner of making the invention, is to demonstrate that the inventor was in possession of the invention. This shift in perspective from "teaching" to "possession" reconciles patent theory with the disclosure obligations and also provides significant normative power in explaining how patent law could work more effectively.

Keywords: Patent, enablement, written description, doctrine of equivalents, prosecution history estoppel, claim construction, public dedication, obviousness, possession

Suggested Citation

Holbrook, Timothy Richard, Possession in Patent Law. SMU Law Review, Vol. 59, No. 1, Available at SSRN: https://ssrn.com/abstract=813145

Timothy Richard Holbrook (Contact Author)

Emory University School of Law ( email )

1301 Clifton Road
Atlanta, GA 30322
United States
404-712-0353 (Phone)

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