April, 2007
ESTABLISHING PATENT PRIORITY
FOR INTERFERING PATENT APPLICATIONS
Under the
United States patent system, patents are awarded to inventors who are
the first to invent, as opposed to the first to file a patent
application. Unless another inventor can show that he conceived of an
invention first, and was reasonably diligent in later reducing the
invention to practice, the inventor who first reduces the invention to
practice is entitled to the patent. “Reduction to practice” can be
either constructive, such as by filing a patent application, or actual,
such as by constructing a working model or prototype of a product,
carrying out the steps of the invented method, or producing the
composition of an invented material.
In litigation
over competing, sometimes called “interfering,” patent applications for
the same invention, evidence of actual reduction to practice is pivotal
in establishing the priority of an invention. Such evidence is the “meat
on the bones” of a legal case for establishing priority in an
interference proceeding. The winning party will have to show that it
constructed the claimed embodiment or performed the claimed process,
that the embodiment or process functioned for the intended purpose, and
that there is sufficient evidence to corroborate the inventor’s
testimony as to the first two requirements.
The
importance of unassailable evidence of reducing an invention to practice
is illustrated by a case in which two companies were competing for a
patent for making an active ingredient in an allergy medication. Neither
party relied on a date of conception, so the case turned on who first
reduced the invention to practice. One company had the earlier filing
date on its application, but the second company claimed that it had
earlier reduced the invention to practice.
Given the
subject matter of the invention, the second company’s evidence was in
the form of laboratory data and notebooks kept by individuals closely
associated with the inventive process. Unfortunately for that company,
flaws in this evidence greatly diminished its weight and led the court
to rule in favor of the first company. Essentially, the evidence lacked
sufficient corroboration, such as by signing notebooks, using witnesses
to vouch for their authenticity, or having individuals testify as to the
genuineness of the notebooks’ contents. Such shortcomings likely would
have been enough by themselves to tip the balance, but evidence of
fraudulent backdating of notebook entries was another fatal blow to the
second company’s case.
Make Sure to Carefully
Document Evidence
There is no
single, exclusive method for marshaling and authenticating evidence for
use in a patent priority battle, but the case of the allergy medication
ingredient suggests that a meticulous approach is prudent. Examples of
practices that should be in place include bound notebooks for inventors,
with each page signed and dated in permanent ink not only by the creator
of the notebook, but also by a disinterested but informed noninventor;
placement of entries in chronological order; and initialing and dating
of any corrections. Inventors should record as much detail as possible
about their activities and conclusions relating to the invention, and
there should be a full explanation for any supplementary materials.
Finally, all of this attention to detail and following of procedures
could be for naught unless the information is kept in a secure place to
which there is authorized access only.
Just as
scientific methods must be followed in the very work that leads to a
patented invention, a company should adopt and rigorously follow
procedural guidelines for recordkeeping in connection with any of its
work that could lead to a patent. Otherwise, there is a great risk of
wasted effort and the loss of what could be very valuable intellectual
property.
All legal articles in this site
are general and informative. The articles or any other information on this
site is not legal advice nor is any information warranted or guaranteed.
Laws change over time and in different localities and jurisdictions laws may
be different from any laws mentioned on this site. It is advisable that you
consult an attorney and or an accountant in the area where your business
will be located.
-
All legal articles in this site
are general and informative. The articles or any other information on this
site is not legal advice nor is any information warranted or guaranteed.
Laws change over time and in different localities and jurisdictions laws may
be different from any laws mentioned on this site. It is advisable that you
consult a attorney and or an accountant in the area where your business
will be located.
-
Elias
Stassinos, Esquire
is a trademark and
incorporation attorney that has
helped thousands of small
business owners and entrepreneurs
launch their first business
enterprise. He's also an
entrepreneur who operates several
successful businesses not related to
his law practice.
-
Copyright
© E. Stassinos, Esq. 2005. All Rights Reserved.
|