Patent Law Practice Center

Federal Circuit: Foreign Application Not Priority in Interference When it Only “Envisions” Invention

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass.  The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application.  The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count.  If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.

Goeddel was a consolidated appeal from two decisions of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office in two related patent interference priority contests between the party Haruo Sugano, Masami Muramatsu, and Tadatsugu Taniguchi (together “Sugano”) and the party David V. Goeddel and Roberto Crea (together “Goeddel”).  The Board held that Sugano is entitled to the benefit of the filing date of its initial Japanese application, and awarded Sugano priority as to the counts of both interferences. (more…)