Dr. Ian Frazer and Dr. Jian Zhou appealed a BPAI decision in an interferences hearing that awarded Dr. Richard Schlegel and Dr. A. Bennett Jenson priority for a claimed vaccine.

Ian Frazer and Dr. Jian Zhou v. Richard Schlegel and A. Bennett Jenson (CAFC 2006-1154)

The BPAI applied catch-22 logic to deny Frazer.

The Board held that Frazer is not entitled to the benefit of the Australian application's filing date, holding that the application's disclosure was inadequate. The Board also held that even if Frazer were found to have established conception in the United States based on the submission to the Virology journal or the presentation at the Seattle Papillomavirus Workshop, Frazer could not establish diligence to reduction to practice because all of Frazer's experimental work was done in Australia. The Board observed that since "all of Frazer's actual reductions to practice occurred outside of the United States, Frazer must rely either on the filing dates of its Australian and PCT applications for inter alia conception and constructive reductions to practice, or on disclosures within the United States of such activities," citing 35 U.S.C. '104(a). Board op. at 35. Thus the Board declared Schlegel the first inventor based on Schlegel's United States filing date.

Although the Board analyzed the Australian application in terms of "conception," when reliance is on a patent document already filed, the question is whether the document discloses the invention of the count by meeting the written description and enablement requirements of 35 U.S.C. §112 ¶1, for a filed application serves as a constructive reduction to practice of its content.

In accordance with United States law, when the priority claim is based on subject matter disclosed in a foreign patent application whose filing date is properly claimed, 35 U.S.C. §119(a), the foreign application has the same effect as if filed in the United States. §119(a), (e)(1). The invention must be "disclosed in the manner provided by the first paragraph of section 112." §119(e)(1); see Schur v. Muller, 372 F.2d 546, 551 (CCPA 1967) (it is a "general principle" in interference proceedings that a party may claim the benefit of a foreign-filed priority document provided that it discloses all of the limitations of the count).

Constructive reduction to practice does not invoke different standards whether the priority document is foreign or domestic. When interference priority is at issue, constructive reduction to practice of a count may be established by disclosure of an embodiment within the count. See Fontijn v. Okamoto, 518 F.2d 610, 617 (CCPA 1975) (foreign application disclosing one embodiment of the invention that meets the count as broadly construed, and that meets the requirements of 35 U.S.C. §112, is sufficient to establish constructive reduction to practice); Yasuko Kawai v. Metlesics, 480 F.2d 880 (CCPA 1973) ("the written specification in the application is the evidence proving the invention of that which is reduced to practice"); see generally In re Zletz, 893 F.2d 319, 323 (Fed. Cir. 1989) (in an interference, "[p]riority as to a genus may be indeed shown by prior invention of a single species . . . but the genus will not be patentable to an applicant unless he has generic support therefor"); Oka v. Youssefyeh, 849 F.2d 581, 584 (Fed. Cir. 1988) (in an interference, it is a correct principle that the "conception of a species within a genus may constitute conception of the genus").

Based on the constructive reduction to practice of an invention whose disclosure is in compliance with the requirements of '112, Frazer is entitled to the priority benefit of the Australian filing date. That date predates Schlegel's earliest date. The award of priority to Schlegel is reversed, and priority is awarded to Frazer.

Remanded to the PTO for further proceedings.