6.4 Prior Invention by another who had not Abandoned, Suppressed or Concealed it

Patents / Biotechnology / US Biotechnology Practice

This section is the most important practical aspect of the United States view that a patent should be granted to the first person to make an invention rather than the first person to file a patent application. Although consideration of this provision occurs most commonly in the context of interference proceedings as discussed below, it should be noted that it is also relevant as a defense in an infringement action.

35 USC § 102(g)(2) bars the grant of a patent if:

Before the applicant’s invention thereof the invention was made in this country by another who has not abandoned, suppressed or concealed it.

35 USC § 102(g)(1), which was added to the law by the 1999 reforms, provides that during an interference proceeding or a priority contest between granted patents, the grant of a patent may be barred or if already granted a patent may be held invalid if:

Another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed or concealed. [125]

The section goes on to state

In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention but also the reasonable diligence of one who was first to conceive and last to reduce to practice from the time prior to conception by the other.

It should be noted that under this provision "offensive" use of prior invention made abroad so as to attack the validity of someone else's patent or application was not possible until the change made by the 1999 reforms. Prior to these reforms, one could only rely on an invention made in the United States to challenge another’s right to a patent on the ground of prior invention, although one could, since changes earlier in the 90's rely on evidence of one’s own invention in many countries abroad to establish a date of invention earlier than the date relied upon bu one’s challenger. The effect of the 1999 reforms was to enable inventors in other WTO-member countries to take full advantage of the first to invent provisions of U.S. law during interference proceedings or in court proceedings between interfering patents. . Prior to this change some concern has been expressed as to whether the prior amendments made to comply with the GATT-TRIPS Agreement should have amended this provision also. This has now been done.

Although issues of first invention normally come up in the context of interferences or priority contests between granted patents, 35 USC § 102(g)(2) makes it clear that in an appropriate case, prior invention by another can be a ground of invalidity of a patent or refusal of an application. However, in the absence of a U.S. patent or patent application, it is still not possible to rely on evidence of an earlier invention as a defense to an infringement action if that evidence is outside the United States. [126]

The practical effect of this provision is that normally the first person to reduce the invention to practice gets the patent [127] unless either he or she abandoned, suppressed or concealed the invention [128] or someone else who was first to conceive of the invention but was second to reduce it to practice was diligent in seeking to reduce the invention to practice from a date that is earlier than the conception date of the second to conceive. [129] This leads to the famous paradox that could occur in a three-way contest as to who had the right to a patent whereby no one is apparently entitled to a patent. An example of the paradox arises in the following situation: the invention was conceived by A, B and C in that order and reduced to practice in the order C, A, B; B and C were both diligent in reducing the invention to practice but A was not. As between A and B, A has priority as being the first to conceive and reduce to practice. As between A and C, C prevails since he was the first to reduce to practice and A's earlier date of conception does not help because he was not diligent in reducing the invention to practice. As between B and C, however, B prevails because although he was the later to reduce to practice he was the first to conceive and worked diligently from before C's date of conception to reduce the invention to practice.

Until the 1990's, 35 USC § 104 limited the rights of those who make inventions outside the United States to take advantage of this provision, at least until knowledge of the invention reaches the United States. [130] However, for "defensive" purposes at least for U.S. Patent applications filed since December 8, 1993 it has been possible to establish dates of invention a reference in Canada and Mexico that are on or after that date [131] and since January 1, 1996, it has been possible to take advantage of inventive activity in World Trade Organization-member countries in order to establish a date of invention (although the earliest date that will be recognized is January 1, 1996). [132] The party seeking to assert such a date of invention outside the United States must be willing to adhere to United States rules on discovery during any proceedings that are instituted to determine the veracity of the claim that has been made. [133] Up to now therefore, in most cases still, the earliest date that a foreigner can assert in such a conflict is the date of a foreign patent application from which his United States application claims priority under the Paris Convention or a reciprocal arrangement between the United States and the country of the original filing.

It should, however, be noted that even under the previous law, the mere fact that an invention is made outside the United States is not the determining factor in determining whether one can take advantage of 35 USC § 102(g) to establish a date earlier than the claimed priority date; the determining factor is the location of the evidence. It was therefore not uncommon for inventors outside the United States to send disclosures of their inventions to their United States patent attorneys and have them sign a statement that they have read and understood the disclosure so as to establish a date on which the invention was known in the United States. This date will suffice for establishing a date of conception of the invention in the United States.

In explaining what is required in order to establish a date of conception, the CCPA stated in Townsend v. Smith [134]:

The conception of the invention consists in the complete performance of the mental part of the inventive art. All that remains to be accomplished in order to perfect the act or instrument belongs to the department of construction not invention. It is therefore the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice that constitutes an available conception within the meaning of the patent law. A priority of conception is established when the invention is made sufficiently plain to enable those skilled in the art to understand it. [135]

It is not, however, necessary that the inventor knows that the invention will work for conception to be complete. [136] However, recent case law in the particular in the field of biotechnology has pointed out situations where conception was not complete until there was actual reduction to practice, for example where the invention lies in a piece of DNA which cannot be conceived until its sequence is known. [137]

In order to establish a date of conception there must be a disclosure or manifestation of the invention of sufficient detail that one skilled in the art could construct the invention without undue experimentation or research. [138] A mere idea without the means to apply it is not conception. [139] In chemical cases an idea of the utility of a compound as well as its structure and a means for its production may be required. [140] Case law makes it clear that because conception is a mental act, "the inventor must prove his conception by corroborating evidence, preferably by showing a contemporaneous disclosure." [141] While such corroboration typically comprises disclosure to someone other than the inventor, since Peters v. Hopkins [142] it has been possible that conception can be established by means other than disclosure. For example, an inventor might write a complete description of his invention and deposit the same in a sealed packet with another person for safe keeping, without disclosure of the contents. The production of the packet with proof of the date of receipt would be sufficient evidence of the existence of the conception on that date.

Reduction to practice involves actual physical production of an embodiment of the invention and a successful test thereof by or on behalf of the inventor. [143] However, the inventor must consider the test to have been successful. [144] Furthermore “ in order to establish reduction to practice, an inventor must prove that he contemporaneously appreciated that the embodiment met all of the limitations of the interference count. [145] Failure to be able to reproduce satisfactory results may evidence a failure to have reduced the invention to practice successfully. [146] On the other hand, there is no need for the reduction to practice to have developed an invention to the point at which it is commercially viable. [147] The reduction to practice requirement is, however, deemed to be fulfilled by the filing of a patent application in the United States (and possibly now in another WTO country as long as it was filed after the relevant date, although there is as yet no case law on this point) as long as that application meets all of the disclosure requirements for patent protection [148]. Filing of such an application is said to be a constructive reduction to practice. [149] In cases of chemical compounds, reduction to practice includes establishing a utility for the compound. [150]

The importance of the degree of diligence between the dates of conception and reduction to practice is as noted above set out in the statute itself. It should, however, be noted that diligence throughout the entire period from conception to reduction to practice may not be required. What is necessary is to show diligence from a date prior to the date of conception by the other party. The question of what is reasonable diligence is a factual one and may depend upon the inventor's resources [151]. However, unexplained periods of inactivity towards reducing the invention to practice will weigh heavily against a finding of diligence. Periods of inactivity by an attorney who has been asked to draft a patent application are imputed to the inventor. [152]

The question of whether an inventor has abandoned, suppressed or concealed an invention arises after the invention has been made (i.e. reduced to practice) but before a patent application has been filed. The question of abandonment is similar to that which arises under Section 102(f). As pointed out by Judge Rich in Paulik v. Rizkalla, [153] the wording was included in the statute as a codification of prior case law which have applied equitable principles on a case-by-case basis [154]. One thing seems clear, however, it is not necessary to show any intent to suppress or conceal an invention for a court to find that it was in fact concealed or suppressed. [155] For example the courts have deemed an invention to be suppressed, concealed or abandoned if the invention was not made public [156] or a patent application filed within a reasonable period after the invention was completed. [157] In one case where the first to invent was only spurred into filing a patent application after doing nothing for many years when someone else filed an application on the same invention, he was found to have concealed and so forfeited the right to a patent. [158] Similarly, scantily explained delay in the assignor's patent department of four years between the date on which an invention disclosure was apparently complete and the filing of a patent application was held to be suppression. [159]

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