Get Your Patent Application On File Early

In all countries other than the Unites States, priority of invention is determined on a first to file basis, i.e. whoever gets to the patent office first gets the patent. In the United States the system is completely different, and is instead based upon first to invent. There is a move afoot in Congress to change that law, and conform U.S. priority practice to that of the rest of the planet. But there are strong forces, especially among independent inventors, to retain the current first to invent system.

In analyzing priority, it is important to understand that "first to invent" applies only to the same or substantially the same invention, and where different people independently make the invention. If Joe invents a new mechanism for stabilizing the plasma in a plasma blowtorch, and Peter invents a new power supply that is useful for Joe's blowtorch, first to invent doesn't apply because there are two distinct inventions. Joe has an invention and Peter has an invention, and each is entitled to his own patent. Even if Peter develops a different mechanism from Joe for stabilizing the plasma, there are still two inventions, even though they are in the same field. Now it may be that Joe needs Peter's invention to produce a commercially viable product, or visa versa, and that in the absence of any cross licensing neither of them will be able to produce a successful product. But that result is correct, and obtains precisely because a patent right is merely a right to exclude others, not a right of the inventor to practice his claimed invention.

Where two inventors are arguing over priority to the same or substantially similar invention, the earlier filing inventor prevails unless the later filing inventor can demonstrate that he conceived of the invention first, and was reasonably diligent in pursuing patent protection following conception of the invention . Where neither party relies on a date of conception, priority is properly awarded to the party that was the first to reduce its invention to practice, either actually or constructively . Sounds simple, but it is not. There is an extensive body of law as to what constitutes conception, what constitutes reasonable diligence, what constitutes reduction to practice, and what standards of proof apply for each.

Conception of an invention occurs when an inventor knows how to enable one of ordinary skill in the art to practice the claimed invention . Enablement need not be especially good, or efficient, but must merely be sufficient to practice the invention at all. Multiple claims, of course, are multiple inventions, so that there might be several different conception dates corresponding to different claims in an application. Note that filing of a patent application is not the same thing as conception, because the former is a document and conception is a mental process. Proof of conception requires objective evidence, such as a witnessed notebook, or independent testimony of others. Such evidence is evaluated under a rule of reason .

Diligence means that the inventor has not unduly delayed in reducing the invention to practice, and in either filing a patent application or engaging a patent practitioner to file the application. But how much delay is excessive, and therefore constitutes abandoning, suppressing, or concealing the invention, is not well defined. We do know that intentional suppression requires more than the passage of time; it requires that the inventor intentionally delayed filing in order to prolong the period during which the invention is maintained in secret, and that a seven-month delay does not create a presumption of abandonment, suppression, or concealment . We also know that even a long period of inactivity need not be a fatal forfeiture, if the first inventor resumes work on the invention before the second inventor enters the field .

Interestingly, diligence in reducing the invention to practice is considered easier to prove than conception. In a 2006 case the Federal Circuit found sufficient evidence in cryptic notebook entries to establish diligence in reducing the invention to practice, even though the entries were cryptic, and even though the entries established that the researcher had only recorded work on ten of the thirty-one days in a critical period. The patent practitioner (attorney or agent) must also be diligent in taking up the case, which usually means that unrelated cases are taken up chronologically . Interestingly, it is questionable whether the practice of taking six months or more to prepare a patent application, common in many larger patent firms, would be considered diligent. In our office we usually try to get applications on file within a few weeks after disclosure.

Reduction to practice means that the inventor, or persons acting under his direction, made or practiced the invention. This is an issue of fact, and is established by proving three things: "(1) construction of an embodiment or performance of a process that met all the limitations of the interference count; (2) ... determination that the invention would work for its intended purpose, and (3) the existence of sufficient evidence to corroborate inventor testimony regarding these events" . Sufficiency of corroboration is determined by using a "rule of reason" analysis, under which all pertinent evidence is examined. Independent knowledge of the corroborator is key to that inquiry, and for example, an un-witnessed notebook is insufficient on its own to support a claim of reduction to practice . Where an inventor is unable to establish conception until he has reduced the invention to practice through a successful experiment, the date of conception is deemed to be the date of reduction to practice .

Conception, diligence, and reduction to practice are all issues of fact, which can be argued in either an Interference Proceeding within the Patent Office, or in a separate federal court case. Interferences are far less expensive than federal court cases, and tend to proceed quickly. But note that the standards of proof are different. In an interference proceeding, the standard of proof is preponderance of the evidence because neither party has a presumption. In Federal Court the standard would usually be clear and convincing evidence.

From a practical standpoint, a patent practitioner should generally make a reasonable inquiry to ferret out potential priority issues. Does the inventor have any notebooks, drawings, or other evidence of conception and reduction to practice? Did a relative, co-worker or anyone else see a functioning embodiment of the invention? If so, the inventor should collect and retain such evidence, and contact information for witnesses in case that information is useful in the future. If not, the inventor should start using a notebook, and have it witnessed periodically for future inventions. Above all, an inventor (and his attorney or agent) should get a patent application on file as soon after conception as is practicable, even if that application is only a one page provisional. Presumption of inventorship goes to the earliest filer, and an adverse presumption of inventorship is difficult and expensive to overcome.