John R. Thomas
93 Geo. Wash. L. Rev. 54
The courts and the U.S. Patent and Trademark Office (“USPTO”) assess whether an invention may be patented by comparing it to the state of the art, which the patent community terms the “prior art.” Heavily influenced by Oliver Wendell Holmes Jr. and Learned Hand, and more recently expanded by the America Invents Act, the Patent Act features the broadest definition of prior art in U.S. history. No matter how remote, evanescent, or obscure, any activity or publication that occurs one day before the inventor files a patent application—anywhere in the world—may prove patent-defeating.
The government also holds patent proprietors accountable for information it deliberately withholds from the public. The USPTO maintains pending patent applications—including information on climate change mitigation, public safety, life-saving medications, and other inventions of extraordinary social significance—in confidence for at least eighteen months and possibly far longer. Collectively, the agency withholds patent applications from the public for a duration of over one million years, each and every year. Yet this body of information, held in secrecy at a time when its disclosure would prove of greatest value, qualifies as prior art as of its fling date.
Patent law’s prior art definition poorly serves innovation policy. It extends inefficient patent races, and it adds to the persistent concern that USPTO examiners fail to identify the most relevant prior art when deciding whether to approve a patent or not. Worse yet, judicial invalidation of issued patents hinges upon a story in which innovative firms should have taken existing knowledge into account before engaging in their own research and development efforts. Proprietors of invalidated patents are deemed to have acted inefficiently and endeavored to pilfer the public domain by obtaining propriety rights in old inventions. This account simply does not hold where only the most exhaustive, financially unconstrained search could unearth secluded activities in distant lands, where members of the public could not discern secret prior art maintained by the USPTO under any legitimate circumstances, and where the USPTO has no realistic way to research the full scope of the prior art.
