Interference 104,002
IV. Priority
It is well established that priority of invention is awarded to the first party to
reduce an invention to practice, either actually or constructively, unless the opposing
party can demonstrate that it was the first to conceive and that it exercised reasonable
diligence in later reducing the invention to practice. Cooper v. Goldfarb, 154 F.3d 1321,
1327, 47 USPQ2d 1896, 1901 (Fed. Cir. 1998); Price v. Symsek, 988 F.2d 1187, 1190,
26 USPQ2d 1031, 1033 (Fed. Cir. 1993).
In some circumstances, the court has held that conception and reduction to
practice occur simultaneously. Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d at
1206, 18 USPQ2d at 1021. Under this doctrine the court has found that with respect to
a complex chemical compound, such as a gene, “[c]onception does not occur unless
one has a mental picture of the structure of the chemical, or is able to define it by its
method of preparation, its physical or chemical properties, or whatever characteristics
sufficiently distinguish it. ... [W]hen an inventor is unable to envision the detailed
constitution of a gene so as to distinguish it from other materials, as well as a method
for obtaining it, conception has not been achieved until reduction to practice has
occurred, i.e., until after the gene has been isolated.” Amgen, Inc. v. Chugai
Pharmaceutical Co., 927 F.2d at 1206,18 USPQ2d at 1021.
To prove actual reduction to practice, the court recently held in Estee Lauder
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007