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ARE THE U.S. PATENT PRIORITY RULES REALLY NECESSARY? Mark A. Lemley Colleen V. Chien Hastings Law Journal

ARE THE U.S. PATENT PRIORITY RULES REALLY NECESSARY? Mark A. Lemley Colleen V. Chien Hastings Law Journal July, 2003 54 Hastings L.J. 1299.

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ARE THE U.S. PATENT PRIORITY RULES REALLY NECESSARY? Mark A. Lemley Colleen V. Chien Hastings Law Journal

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  1. ARE THE U.S. PATENT PRIORITY RULES REALLY NECESSARY? Mark A. Lemley Colleen V. Chien Hastings Law Journal July, 2003 54 Hastings L.J. 1299

  2. Of the 100 cases in our population that have final outcomes, junior parties won 33 (or 33%). More significantly, in the 76 cases that are actually resolved on priority grounds, junior parties won 33 times (or 43%). Thus, it seems that when priority is actually adjudicated, the first to invent is quite frequently not the first to file.

  3. Doctrinal Wrinkles • “Third party” versus “second party” issues • Corroboration • “Appreciation” issues

  4. Thomson S.A. v. Quixote Corp., 166 F.3d 1172, 49 U.S.P.Q.2d (BNA) 1530 (Fed. Cir. 1999), cert. denied, 119 S. Ct. 2395 (1999): uncorroborated oral testimony by non- interested individuals may be sufficient to satisfy the clear and convincing standard of proof for invalidity based on anticipation under § 102(g).

  5. Dr. Benedict asserts, however, that there was nobody involved in GM's development of its system who qualifies as "another inventor," because, Dr. Benedict says, no one person followed the project through from conception to embodiment in an actual vehicle . . .[A] corporation may act through multiple individuals to make an invention; there is simply no basis for the assertion that although GM conceived and installed its system in a working vehicle before Dr. Benedict invented his system, GM lost its priority because it acted through multiple individuals assigned different roles in the process. Benedict v. General Motors Corp., 84 F.Supp.2d 1197, 1200 (S.D.Fla. 2002)

  6. Rosco, Inc. v. Mirror Lite Co.,304 F.3d 1373(Fed Cir 2002) The question is whether Rosco actually recognized and appreciated a mirror with varying radius of curvature along the major axis of the lens. [W]e may assume for present purposes that the earlier Rosco product did in fact have a varying radius of curvature along the major axis of the lens. But there is no evidence that this feature of the invention was recognized and appreciated. (So no 102(g) problem.)

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