Interference No. 102,668
See Shurie v. Richmond, 699 F.2d 1156, 1158, 216 USPQ 1042,
1044 (Fed. Cir. 1983)("An actual reduction to practice in
Canada is irrelevant in an interference proceeding concerning
priority of invention") (quoting Wilson v. Sherts, 81 F.2d
755, 760, 28 USPQ 381, 383-84 (CCPA 1936)) ; Colbert v.24
Lofdahl, 21 USPQ2d 1068,
1071 (Bd. Pat. App. & Int. 1991):
If the invention is reduced to practice in a foreign
country and knowledge of the invention was brought
into this country and disclosed to others, the
inventor can derive no benefit from the work done
abroad and such knowledge is merely evidence of
conception of the invention. DeKando v. Armstrong,
169 O.G. 1185, 1911 CD 413 (App. D.C. 1911); see
also 35 U.S.C. 104. [Footnote omitted.] However,
the nature of the work abroad might be important in
determining the identity of the invention or whether
the inventor had any concept of it or not, but it is
incumbent upon the inventor to prove that the
invention was introduced into the United States.
Breuer v. DeMarinis, 558 F.2d 22, 194 USPQ 308 (CCPA
McMahon also cites Shurie v. Richmond, 699 F.2d at 1158,24
216 USPQ at 1044, for the proposition that "importation of a
product into the United States does constitute reduction to
practice of the process of making that product in the United
States" (Br. at 22). Actually, Shurie held just the opposite:
"[T]he count concerns only a process-which was never performed by
Shurie in the United States. We agree with the Board that a
product produced by a particular process is not equivalent, for
patent entitlement purposes, to the performance of the process in
the United States." 699 F.2d at 1159, 216 USPQ at 1045.
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