Priority Rules and Section 102g

1. Priority Rules and Section 102(g) Pumps, Pills, and Socket Wrenches -- You could have been rich by now!

2. 2 Source of Law for Priority of Invention Section 102(g) elements another inventor (senior inventor); before such person�s invention (junior inventor), thus two or more independent inventors are involved in a priority contest Senior inventor establishes invention before junior inventor (First to conceive) without showing that senior inventor abandoned, suppressed, or concealed the invention (no loss of right or not subject to statutory bar)

3. 3 Source of Law continued Senior inventor wins contest if he established first to conceive and first to reduce to practice; OR Senior inventor wins contest if he establishes first to conceive even if he is last to reduce to practice. This outcome is produced as a result of the exception for senior inventor diligence the exception allows for backdating

4. 4 EXCEPTION for Backdating first conception PLUS reasonable diligence beginning just before the junior inventor�s conception IN SPITE OF later reduction to practice EQUALS FIRST PRIORITY TO PATENT INVENTION!!! The Senior inventor carries the burden to demonstrate reasonable diligence. See Griffth v. Kanamaru, 816 F. 2d 624 (Fed. Cir. 1987)(affirming decision by the Board of Patent Appeals and Interferences to give priority to the junior inventor who conceived later, but reduced to practice before the senior inventor, where the senior inventor was unable to establish grounds to excuse his inactivity before the junior inventor reduced to practice the invention). The reasonable diligence exception balances the interest in rewarding the and encouraging invention with the public�s interest in the earliest possible disclosure of the innovation. Reasonable is defined as the everyday problems and limitations encountered by an inventor. The reasonable diligence exception was developed to account for hardships, not commercial development. Section 104 of the Patent Act discriminates against foreign inventors by not allowing for consideration of their conception and reduction to practice dates (i.e., there inventive activity in the foreign country), unless the potential patentee is a national of a NAFTA country or WTO member country or a country that treats U.S. patents as having the same rights as foreign country patents. The foreign patent applicant can always rely on his inventive activity if performed in the United States.The Senior inventor carries the burden to demonstrate reasonable diligence. See Griffth v. Kanamaru, 816 F. 2d 624 (Fed. Cir. 1987)(affirming decision by the Board of Patent Appeals and Interferences to give priority to the junior inventor who conceived later, but reduced to practice before the senior inventor, where the senior inventor was unable to establish grounds to excuse his inactivity before the junior inventor reduced to practice the invention). The reasonable diligence exception balances the interest in rewarding the and encouraging invention with the public�s interest in the earliest possible disclosure of the innovation. Reasonable is defined as the everyday problems and limitations encountered by an inventor. The reasonable diligence exception was developed to account for hardships, not commercial development. Section 104 of the Patent Act discriminates against foreign inventors by not allowing for consideration of their conception and reduction to practice dates (i.e., there inventive activity in the foreign country), unless the potential patentee is a national of a NAFTA country or WTO member country or a country that treats U.S. patents as having the same rights as foreign country patents. The foreign patent applicant can always rely on his inventive activity if performed in the United States.

5. 5 Interferences Patent Priority contests between rival inventors are termed patent interferences Section 102(g) mentions interferences and Section 135 governs interference cases The PTO Board of Patent Appeals and Interferences determined all priority questions Appeals are heard by CAFC (with the same parties in controversy) or by D.D.C (appeal against the PTO Director). An election must be made.

6. 6 Summary of Priority General Rule Priority depends on three factors: conception, diligence, and reduction to practice General Rule of Law for Priority A senior inventor will have priority over a junior inventor, unless the junior inventor reduces to practice first; and the senior inventor did not use reasonable diligence from the time just prior to the junior inventor�s time of conception

7. 7 Puzzling Priority Paradox: The court will scrap priority rules under 102(g) and instead rely on policy Priority Rules do not work when the Paradox presents itself C -------------------------|------------------|--------------- Conception Reduction to Practice B---|------------|_________________________|------- Conception Diligence Reduction to Practice A-------|--------------|_________________|------------ Conception Diligence Reduction to PRacticePriority Rules do not work when the Paradox presents itself C -------------------------|------------------|--------------- Conception Reduction to Practice B---|------------|_________________________|------- Conception Diligence Reduction to Practice A-------|--------------|_________________|------------ Conception Diligence Reduction to PRactice