Thus, an unreasonable or unexplained delay in preparing a patent application by the assignee’s patent
department may be a basis to infer suppression or concealment. Accord, Paulik, 760 F.2d at
1271-72, 226 USPQ at 224-25 (Evidence of resumed activity after suppression or concealment due
to a four year delay by patent department in preparing application but before opponent’s effective
date must be considered as evidence of priority.)
A party who has been held to have suppressed or concealed a invention may still prevail on
priority if the evidence establishes (1) renewed activity on the invention before the opponent’s entry
into the field and (2) that the party proceeded diligently to file the application beginning from a time
before the opponent’s entry into the field. Lutzker, 843 F.2d at, 1367, 6 USPQ2d at 1372; Paulik,
760 F.2d at 1272, 226 USPQ at 225.
C.
Geerts asserts at least eleven actual reductions to practice between November, 1988, and
September, 1990. Paper 62, pp. 6-7, 20-31 and 121-123. The Geerts application was filed July 14,
1993. Sugano asserts that the Geerts should be held to have suppressed or concealed the invention
because Geerts effectively shelved the invention corresponding to the count
for nearly 34 months between the time Geerts completed a series of lab
activities reducing the subject matter of the count to practice by September
1990 and the time an application for the subject matter of the county was
filed in July 1993.
Paper 63, p. 2.
We hold that the 34 month delay after completion of at least eleven actual reductions to
practice provides a sufficient basis to consider whether Geerts should be held to have suppressed or
concealed the invention. Thus, it is appropriate for us to look at Geerts’ total conduct during this
period. Fujikawa, 93 F.3d at 1567, 39 USPQ2d at 1902.
1.
The record appears to show that Geerts was actively working on the invention from at least
as early as December, 1988, until September, 1990. In addition to numerous reductions to practice,
Geerts prepared Patent Idea records 13910, 14114, 14115, and 14973 during this period. The patent
idea records were submitted by Geerts to the Phillips patent department. In October of 1989 it was
determined that PI numbers 13910, 14114, and 14115 had “sufficient merit to be presented to the
16
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007