Antedating in patent law

Petitioner argued: (1) because a third party (rather than the inventors) built the prototypes, there was no reduction to practice; (2) Patent Owner did not show that the third party building the prototypes inures to Patent Owner’s benefit; and (3) the photographs of the prototype produced by the third party were insufficiently clear to establish conception of the design by the inventors prior to involvement of the third party.

Olympus Am, prior art, PTAB, § 102 Posted In: Courts, Federal Circuit, Federal Circuit Review, Guest Contributors, IP News, IPWatchdog Articles, Articles, Patent Trial and Appeal Board, Patents, USPTO Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship.

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In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases.

In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions.

As of that publication date, the inventor, a surgeon named Dr.

The first requirement of inurement is that the inventor must have conceived of the invention prior to involving the third party.The Board began by rejecting Patent Owner’s assumption that conception had taken place, and stated that Patent Owner had not, in fact, shown that conception of the claim design happened before the prior art date. It was not proper to “scour the patent owner’s corroborating evidence in search of intervals of time where the patent owner has failed to substantiate some sort of activity.” Rather, the purpose “is to assure that, in light of the evidence as a whole, ‘the invention was not abandoned or unreasonably delayed.’” The Board improperly focused on three purportedly unexplained periods; failing to apply a rule of reason for evidence presented during the critical period as a whole.For example, the Board criticized the inventor for not indentifying “any specific activities undertaken or the dates of those activities.” Instead, the Court ruled the Board should have considered preparation of comments on draft applications that must have been prepared during the unexplained periods, as well as work completed by the drafting attorney (as the inventor’s agent).PST also challenged the Board’s claim construction of “perforated.” The Board construed the term to include “passages.” The Court found error because the patent specification stated that the device “may be perforated or otherwise provided with passages.” The use of the disjunctive, therefore, excluded passages from the construction of perforated.Further, the Board weighed the fact there was no evidence of record which showed correspondence between Patent Owner and third party prior to production of the design prototype.