Patents contested

The importance of an accurate and complete record of invention caimot be underestimated. The record of invention should serve as the basic document for estabUshing the date of conception and reduction to practice of the invention. The U.S. PTO issues patents to those who are first to invent. In a contest over inventorship, any available record of invention is submitted to the U.S. PTO to estabUsh proof of an inventor s rights. As of January 1, 1996, any inventor from a country belonging to the World Trade Organization may use such evidence before the U.S. PTO. Previously, this type of proof could be rehed upon only if the activity, documented in the notebook, record, etc, was undertaken in the United States. Similarly, activity undertaken after December 8, 1993 in Mexico or Canada may also be rehed upon to prove inventorship. 

An interference is a contested action in the U.S. PTO to determine inventorship between two or more patent appHcants or between at least one patentee and one or more patent appHcants. The principal contest in an interference concerns the right to claim the invention. The interference action results from U.S. law, which awards patents to the first inventor, generally irrespective of patent appHcation filing date. In the simplest situation, an interference occurs when a pending appHcation discloses and claims the same invention which is claimed in at least one other copending appHcation or issued patent. 

A chemical patent attorney could take a position with a medium- or large-sized firm and become involved in patent litigation. In this phase of the profession, the lawyer is required to match wits with an opponent in what is really an adversary contest. For those who find satisfaction in intellectual competition, this can be an exciting career avenue. 

Only one party can be awarded a patent to an invention (die same invention cannot be patented twice), and die prize usually goes to the party that can establish that it was die first party to invent the contested subject matter. This is a consequence of die United States being a first-to-invent country (more will be explained regarding this facet of U.S. law in Chapter 3). The first-to-invent system makes a provisional patent application less critical than if die United States were a first-to-file country like the rest of the world. However, filing a provisional patent application in the United States is still advantageous because any... 

In addition to the mandatory maintenance fees, there are certain postgrant procedures that can take place under special circumstances. For example, patent interferences occur where a contest is waged in the USPTO to determine the first inventor of contested subject matter. These contests may occur between two or more applicants... 

If a long time occurs between an actual reduction to practice (meaning the completion of the invention) and the filing of a patent application, then the concept of due diligence is not in play but rather the question becomes one of whether the inventor abandoned, suppressed, or concealed the invention. This possibility is covered separately by 102(c), which pertains to the abandonment of the invention and, more important, by 102(g) where, in a contest to prove who had invented the subject matter first (patent interference), a party found to have abandoned, suppressed, or concealed the invention can lose to a later-inventing party who did not commit one of those sins. More on these two sections later in this chapter. 

Not to be deterred, Chemist A s legal counsel convinces his client that he should not concede yet. Chemist A s counsel informs his client that he has carefully reread the text of the 102(g) statute and he has cleverly discovered in the fine print that it gives priority to the earlier inventor, but only in cases in which that inventor has not abandoned, suppressed or concealed the invention. Chemist A s side needs only to establish that Chemist B committed one or more of these three sins. Since 102(g) is concerned with priority contests between parties, the guilty party will be put behind the other party and lose the priority contest together with any patent to the contested invention. This begs the question of what it takes for an invention to be abandoned suppressed, or concealed, and, not surprisingly, this is a question of the particular... 

The only other 102 section that might apply to the prior inventive acts of the German chemist is 102(g), but it will not. Unlike in part (4), we do not have an interference situation. In the previous hypothetical, the German inventor was pursuing a patent in the United States and found himself in a contest to prove who invented the subject matter first. We learned that the German inventor abandoned his patent application in the United States and thus could not be involved in an interference. As a result of this analysis, the date of the act of the invention itself will not be relevant because none of the 102 sections apply to our fact scenario. 

A count is a constructive claim used during the interference to define the contested subject matter between the two parties. A phantom count refers to a constructive claim that does not necessarily correspond to a single claim from either subject application but is assembled to capture the subject matter from two substantially similar claims from the two applications. For purposes of the present discussion, we can think of the count as an ordinary patent claim. 

A careful and objective analysis of recent decisions both in the review tribunals of the Patent Office and in the courts, and particularly in the Court of Customs and Patent Appeals, indicates that there is an ever-increasing awareness of the complex problems uniquely peculiar to the chemical and related arts. The judiciary before whom the majority of contested cases are brought on appeal have unusual sophistication and expertise in the highly complex technical areas embracing the broad spectrum of chemistry and the chemical sciences. There is encouraging evidence of growing recognition that the interim results of research may properly lay claim to patent protection. A realistic treatment of the utility question in chemical cases appears to be more the rule. 

Lack of novelty may be indicated by all kinds of earlier publications or other disclosures of the invention to the public. As already mentioned, prior publication by the inventor or applicant also interferes with novelty and can be used as an argument against their own patent application. This does not fully apply to US inventions, the content of which can be published by the inventor within 12 months before filing a patent. Novelty of an invention may also be contested by the proof that the invention was already in use, for example, as a manufacturing process which was kept secret. 

A search is completed when the goal is attained. For example, when several excellent references, proving the invalidity of a patent, have been found in a validity search, the search is complete. Patent attorneys are reluctant to base a contest of patent validity on a single reference, as the Patent OflBce may disagree with them. However, beyond a certain point the piling up of evidence adds mere quantity, without altering the result. 

U.S. patent application may not control the outcome of the priority contest between parties who each actually reduced the invention to practice. As just noted, however, the party who files first has certain practical advantages in the interference proceedings. 

With the first-to-invent system in the United States, it is sometimes necessary to determine which of two or more inventors (or groups of inventors) first invented the subject matter that is claimed in common by the parties. Interferences are the proceedings within the PTO for making such determinations. These proceedings, which are overseen by senior examiners within the PTO, are ultimately decided by the Board of Patent Appeals and Interferences in the PTO. The party who first conceives an invention and first reduces it to practice will normally be awarded priority and will be awarded the U.S. patent (142). This is not the case, however, if another party, who reduced the invention to practice at a later date, can prove that he or she was the first to conceive the invention and proceeded diligently to reduce it to practice from a time before the other party s date of conception. The diligence of the first to reduce the invention to practice is normally immaterial in the priority contest. 

Interferences are long, costly, and complex procedures that are laden with procedural pit-falls for both the senior party and, especially, the junior party. The senior party is heavily favored to be awarded the right to a patent on the contested invention (149). Based on the advantage of the senior party in such interference proceedings, patent applications should be filed in the United States as quickly as possible to increase the probability of achieving senior status in any interference that may be declared. 

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