Examples - Completed by Another

General. The following hypothetical examples teach this concept:

Hypothetical Example No. 1. Johannes files a U.S. patent application on his invention. He is informed by the USPTO that another inventor, George, filed a U.S. application after Johannes did that claimed the same invention and that an "interference" has been declared between the two applications. Johannes and George enter a priority contest to determine which inventor can show that he was the "first to invent." George is able to show that he began diligently reducing the invention to practice in the U.S. before Johannes did and that he sustained that activity until his patent application was filed and wins the interference. A U.S. patent is granted to George who was the "first to invent" and not to Johannes who was the "first to file."

Hypothetical Example No. 2. Kate reduces her invention to practice in Brazil and then files a patent application in the U.S. Earlier, James had reduced his invention to practice in the U.S. He files a U.S. patent application after Kate does. An interference is declared which James wins. A U.S. patent is granted to James even though Kate completed the invention first in a country other than the U.S.

Hypothetical Example No. 3. Charles is granted a U.S. patent on a novel process for making widgets. During his commercialization of the process, Charles becomes aware that James is selling widgets to the public and suspects, but cannot infer with certainty from inspection of James's widgets, that James is using his patented process. Charles sues James for patent infringement and, during the trial, it becomes apparent that James had been using the patented process for years before Charles invented it. Charles's patent is invalidated by the court under 35 U.S.C. 102(g).

Hypothetical Example No. 4. Henri files a French patent application on his invention and 11 months later files a U.S. patent application claiming priority in his French application. Walter independently invents the invention and completes it in the U.S. one month before Henri files his U.S. patent application. Walter files a U.S. patent application on the invention and an interference is declared. Henri perfects his priority claim under 35 U.S.C. 119 and wins the interference because his French filing is deemed constructive reduction to practice of the invention.

Case Law. The following examples from U.S. case law teach this concept:

Continential Copper & Steel Indus. v. New York Wire Co., 196 USPQ 30 (M.D. Pa. 1976)
Gosteli, In re, 872 F.2d 1008, 10 USPQ2d 1614 (Fed.Cir. 1989)
International Glass Co. v. United States, 408 F.2d 395, 159 USPQ 434 (Ct. Cl. 1968)
Kawai v. Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973)
Mulder, In re, 716 F.2d 1542, 219 USPQ 189 (Fed. Cir. 1983)

Return to Home

© 1998-2003 Robert M. Hunter PLLC