Patent Interference No. 103,892 Page 19
situations involving biotechnology.17 In both Amgen, Inc. v. Chugai Pharmaceutical Co.
Ltd., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991), and Burroughs Wellcome Co.
v. Barr Labs., Inc., 40 F.3d 1223, 32 USPQ2d 1915 (Fed. Cir. 1994), the court
acknowledged fact situations involving biotechnology where an inventor could not
establish a conception until the invention involved had been reduced to practice. The
court in Amgen went so far as to
hold that when an inventor is unable to envision any detailed constitution of a gene
so as to distinguish it from other materials, as well as a method of obtaining it,
conception has not been achieved until reduction to practice has occurred, i.e.,
until after the gene has been isolated.
Amgen, 927 F.2d at 1206, 18 USPQ2d at 1021. The doctrine of “simultaneous
conception and reduction to practice” is implicated in those factual situations where, but
for the reduction to practice, conception cannot be established. “In some instances, an
inventor is unable to establish a conception until he has reduced the invention to
reduction to practice. Furthermore, although both parties suggest that phenthiazine might be used as an
insecticide prior to their experimental tests, it is apparent from the record that neither had in mind at the
time the suggestions were originally made, nor at any time thereafter, until successful tests, if any, were
made, what insects, if any, it might be effective against, or how it might be applied to produce the desired
results. Accordingly, neither party had a definite idea of the ‘complete and operative invention’ here
involved prior to a successful reduction - actual or constructive – of it to practice. See Harry P. Townsend
v. Henry L. Smith, 17 C.C.P.A. (Patents) 647, 651, 36 F.2d 292 [4 USPQ 269].” Smith v. Bousquet, 111
F.2d 157, 45 USPQ 352 (CCPA 1940).
17 “The doctrine of simultaneous conception and reduction to practice is somewhat rare but certainly not
unknown, especially in the unpredictable arts such as chemistry and biology. See Burroughs Wellcome
Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228-29, 32 USPQ2d 1915, 1920 (Fed. Cir. 1994); Amgen, Inc.,
927 F.2d at 1206, 18 USPQ2d at 1021; Smith v. Bousquet, 111 F.2d at 159, 45 USPQ at 348. Although
Burroughs Wellcome specifically notes that the doctrine does not state that an inventor can never
conceive of an invention in the unpredictable arts until a reduction to practice has occurred, the doctrine
still may apply to cases in such arts.” Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1330,
58 USPQ2d 1030, 1041 (Fed. Cir. 2001).
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