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August 8, 2007

On Behalf

The appeals court settles a three-way squall for inventorship, inadvertently highlighting the senseless Byzantine complexity of the first-to-invent scheme that only the United States clings to, the entire rest of the world long ago having seen the folly of, and gone to the simple first-to-file system. In this episode, we learn that you can swear your invention date back to something you didn't invent, but not if it wasn't done for you.

Boston Scientific Scimed v. Medtronic Vascular & Eric Martin (CAFC 2006-1434)

Eric Martin filed for 5,575,817 on August 19, 1994. On June 5, 1995, Andrew Cragg et al filed 08/461,402, later assigning it to Boston Scientific Technology, which later merged with Scimed, the current owner of '402. On the same day, Thomas Fogarty et al filed 08/463,836 for the same invention. Fogarty assigned his rights to Medtronic, still the owner.

On April 23, 1998, the Patent Board of Appeals and Interferences (PBAI) declared an interference between the three to determine priority of inventorship: who was first to invent.

Cragg got the original nod as senior party, going back to two European applications, the earliest filed on February 9, 1994. The CAFC:

At the time these European applications were filed, no legal relationship existed between MinTec and Cragg, nor was MinTec acting on behalf of Cragg. Fogerty was granted the benefit of the filing date of U.S. patent application 08/255,681, which was June 8, 1994. Martin was accorded benefit of the application that led to the ’817 patent, which was filed on August 19, 1994. Accordingly, the PTO initially designated Cragg as the senior party in the interference.

Fogarty protested, and the BPAI figured out its mistake, awarding Fogarty priority. Cragg and his backers then fruitlessly protested to the board, the district court, and, finally, the CAFC, which held you don't get priority date benefit from a foreign application if, at the time of filing, it wasn't on your behalf.

35 U.S.C. § 119(a)[, the first-to-invent clause,] reads in relevant part:

An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed . . . .

At issue here is whether 35 U.S.C. § 119(a) permits an applicant for a United States patent to benefit from the priority of a foreign application previously filed by an entity that was not acting on behalf of the U.S. applicant at the time of filing. We hold that it does not.

A similar issue was addressed by the Court of Customs and Patent Appeals in Vogel v. Jones, 486 F.2d 1068 (CCPA 1973), which, to the extent relevant here, is binding upon us, South Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc). According to Vogel, “§ 119 gives rise to a right of priority that is personal to the United States applicant.” 486 F.2d at 1072. Due to the personal nature of this right, an applicant for a U.S. patent may only benefit from the priority of a foreign application if it was filed by the U.S. applicant or “on his behalf.” Id.

[W]hile the foreign application must obviously be for the same invention and may be filed by someone other than the inventor, section 119(a) also requires that a nexus exist between the inventor and the foreign applicant at the time the foreign application was filed. Indeed, as a matter of pure logic, an entity could not have filed a foreign application “on behalf of” an inventor without the inventor’s knowledge or consent...

Posted by Patent Hawk at August 8, 2007 12:24 PM | Prosecution


Isn't the point here not so much that USA has First to Invent but that, in USA, patent applications must be filed by parties (inventors) who might have no rights in the subject matter of the application, and that the Paris Convention, and every other country in the world, is out of step, and out of touch with the "real" world, in permitting applications for patents to be filed by the OWNERS of the respective inventions. Paris contemplates a first application by the owner, then an assignment to another party, then foreign patent applications, by the new owner who can count on a right of priority. Paris says that, with a "duly filed" priority application, Applicant (or his successor in title) SHALL enjoy a right of priority. MinTec was duly Applicant at the EPO. Boston was truly its successor in title. Must Paris Owner Applicants now, because of this Decision, secure executed written instruments that assign away ownership of their own property to the inventors BEFORE the Owners file priority applications to protect their own property? Remember, in a First to File jurisdiction, there's no time to lose. Any delay in getting to the Patent Office could be fatal to securing valid patent protection (everywhere except USA that is).

Posted by: MaxDrei at August 15, 2007 7:47 AM