Patents interference practice

By the turn of the century the U.S. PTO may be operating under a system that includes (/) pubHcation of patent appHcations (2) opposition of allowed appHcations for purposes of testing vaHdity (J) the dawn of first-to-file priority examination and (4) the end of the antiquated test of inventorship called "interference practice." Legislation implementing many of these changes is pending before the U.S. Congress. 

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. 

Interference practice is derived from certain U.S. statutes (18) enacted pursuant to Article 1, Section 8 of the Constitution. Its underlying principle is that there can be only one valid patent for an invention. 

Interference practice is defended by many as the only way to assure that the true (read first ) inventor is granted a patent in accord with the Constitutional intent. It is also attacked by many as a costly and time-consuming proceeding that serves no real purpose, as inventor can just as easily be defined as the one who files first, independently of when the... 

Free to neither patent nor practice. Inventions of this type are those that are fuUy disclosed in the specification of a prior patent and fall within the scope of the claims of that patent. The discovery of two patents, two patent applications, or a patent and an application claiming the same invention can lead to an interference, a procedure that determines which of the two competing parties has priority over the other, usually in terms of the date of invention, and awards the patent to the prevailing party. 

Procedurally, an interference occurs when one or more claims in a patent application is substantially the same as one or more claims in another patent application with certain time bar limitations when the action can occur. These time bars are a consequence of 102(b), which sets a time limit on the first-to-invent aspect of U.S. patent law. A later filed patent application that claims or could be drawn to claim the same subject matter as an earlier filed patent application or patent must be filed within 1 year of the time the earlier patent application was published or patented. If the later applicant files after the 1-year period, then the earlier art becomes 102(b) prior art that cannot be removed by proof of prior invention. As a practical matter, 102(g) prior art can be especially problematic because it can take the longest time to discover, and moreover, an interference can take significant time (and money) to resolve. 

A second exception in the USA which influences the effective priority date of an invention (but not the official priority of the patent ) is the so-called swearing-back according to the Code of Federal Regulations, Title 37 (37 CFR, 1.131). If there is an interference with other patents or patent applications, the US patent authority will ask the applicant of USA-derived inventions to provide detailed information on the actual time of conception of the invention, reduction to practice and on all further steps which finally led to the current application. Proof of those activities can be provided by laboratory notebooks and other relevant documents, e.g. those which prove the involvement of a patent attorney during the process of drafting and filing the application in question. This information will be considered in order to assess the effective time when the invention was made and when it was reduced to practice in order to fulfil the requirements for patentability. 

The first inventor is determined by a special administrative proceeding in the patent office called an interference. Evidence is presented by each applicant as to their earliest dates of conception and reduction to practice. Before January 1, 1996, only activities carried out in the United States could be used in these proofs. Now activities carried out in any country that is a member of the World Trade Organization can be used to prove when the invention was made. 

Unlike the rest of the world, US patent practice is a first-to-invent rather than first-to-file system, the argument being that the Constitutional basis for the patent system was to secure rights for inventors not for hasty filers. This occasionally leads to a quasi-judicial proceeding known as an interference. 

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. 

Aparty who cannot prove an earlier filingdate may prefer that no one obtain a patent so he or she can practice the invention without restriction. See, e.g., Perkin v. Kwon, 886 F.2d 325 (Fed. Cir. 1989). Such a party (i.e., one who knows that priority cannot be proven) could also seek a favorable license (especially while the preliminary statements remain sealed) and thereby, at least to some degree, benefit from the protection offered by the other party s patent (ifgranted by the PTO). The other party may be willing to make concessions in the terms of such an agreement because it would effectively terminate the interference and eliminate the risk of losing the priority contest. 

Crude tall oil is a mixture of fatty acids, resin acids, and neutrals (i.e., no carboxylic acid functionality). The background section relates that neutrals interfere with the separation of the fatty acids from the resin acids and in industrial practice the neutrals are removed by molecul distillation. However, it is difficult to separate the neutrals from the other components because of vapor pressure similarity considerations. Tall oil soap, the precursor to crude tall oil, is a pasty emulsion of the neutrals and the sodium salts of the fatty and resin acids. The patent states that it is possible to extract neutrals from the soap with a liquid hydrocarbon solvent, but the prior art discussion relates that subsequent liquid hydrocarbon solvent recovery steps are relatively difficult. The neutrals can be separated from the soaps by a hydrocarbon solvent, incidentally, because the neutrals are lipophiles whereas the soaps are ionic and do not dissolve in the hydrocarbon. Similarly the neutrals will dissolve in a supercritical fluid like ethylene, or propane, or the chlorofluorocarbons, and the use of these gases in the supercritical state is the invention. Like the case of liquid hydrocarbon solvents, the ionic soap compounds will not dissolve in the supercritical gases. CO2 is specifically not listed among the gases, and we shall discuss the case of CO2 extraction of the emulsion later which is the subject of the next patent. 

Procedures, precautions, pitfalls and avoiding them what is patentable recording mechanics of interference ownership and use of patents infringement. Standard, practical guide, with many concrete situations from actual cases, sample forms, copy of law, etc. by former Director, Patent Department, R.C.A. 45 illus. 193pp. 5% x 8i/ . T1169 Paperbound 1.50... 

Actual reduction to practice is not required for fihng a patent application. They only need to teach one skilled in the art how to make and use the invention. The bottom line is that so long as the paper examples are scientifically reasonable (that is, they do not offend the chemist s chemical sense), the PTO will consider them to have been performed. One caveat is that should an interference proceeding arise, it might be necessary to show that paper example compounds can really be produced as described, but again, the odds of an interference occurring are very low and good product yields wouldn t be required even then. 

Hercules was eliminated from the interference in 1964 by the US Patent Office because of their late discovery and patent application date. Finally (it seemed), on 29 November 1971, the board finally awarded priority of invention to the senior party, Natta et al., and US Patent No. 3,715,344 was issued to Montedison on 6 February 1973. The defeated parties then appealed the decision with a Civil Action (US District Court of the District of Delaware, Civil Action 4319). In these 1980 hearings, it was concluded that Phillips was entitled to an invention date of no later than 27 January 1953. The district court also determined that Phillips had proved that Montedison had fraudulently withheld information from Patent Office examiners, and that this fraud was detrimental to Phillips case for priority of invention in the Patent Office . However, because of the conclusion that Phillips is entitied to priority on the basis of its constructive reduction to practice, the issue of Montedison s fraud would have no effect on Phiffips entitlement to priority. Therefore, the court found ffiat the crystalline polypropylene of the interference count was useful, novel, and non-obvious and therefore patentable to Phillips and... 

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