Patent Interference No. 103,892 Page 18
As we pointed out supra, Davie has limited its case for priority to its evidence that
it actually reduced the invention to practice prior to June 26, 1986. Since Davie has not
made its case, Grundmann must prevail on the issue of priority.
We make the following additional comments.
Simultaneous Conception and Reduction to Practice
Davie’s case for priority includes an argument that Davie simultaneously
conceived and reduced to practice the invention of the count prior to June 26, 1986. For
example, at page 9, Davie argues that
The dates of receipt of the manuscripts of the articles by the journal are the
dates upon which Davie relies for both conception and corroboration of reduction
to practice. Thus, simultaneous conception and reduction to practice of the b
subunit of factor XIII by Davie was at least as early as February 28, 1986, and
simultaneous conception and reduction to practice of the a subunit of factor XIII by
Davie was at least as early as June 23, 1986.
There are special fact situations where an invention cannot be conceived until it has
been reduced to practice. The legal doctrine of “simultaneous conception and reduction
to practice” may apply in such situations. As early as Smith v. Bousquet, 111 F.2d 157,
45 USPQ 347 (CCPA 1940), the court recognized that parties may not be able to
establish conception until experimental tests have been conducted to determine the
effectiveness of the invention involved.16 The doctrine has been applied recently to fact
16 “The evidence of record relative to conception and reduction to practice should be, and accordingly has
been, considered in conformity with the character of the invention here involved, and we are in agreement
with the views expressed by the Examiner of Interferences that the record in the case does not warrant a
holding that either of the parties established conception of the invention prior to, or independent of, a
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