1

Elements of Invention

Invention = (1) Conception + (2) Reduction to Practice

Conception: is “..the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.." 

Townsend v. Smith, 36 F.2d 292, 295

2

Elements of Invention

Reduction To Practice : (a) Actual Reduction to Practice: Actually build the device / actually perform the process

OR

(b) Constructive Reduction to Practice • Describe in sufficient details that a person skilled in the art could

read and practice the invention.

• Drafting & filing a patent application is considered as constructive reduction to practice.

3

Standard of RTPPhysical Sciences v. Life Sciences

• Standard of RTP is higher for life science related inventions, as compared to physical science inventions.

“[I]n some unpredictable areas of chemistry and biology, there is no conception until the invention has been reduced to practice.”

MacMillan v. Moffett, 432 F.2d 1237

Bottom line: RTP standard depends on complexity and predictability of particular art.

4

Standard for RTP

What it means?• Predictable variations or extensions of invention need not be build, as long as described in sufficient details.

• Demonstrations / Actual experiments required when the art is unpredictable e.g. molecular cloning.

5

Patent filing v. Publication

File a US Patent Appl.

Publication12 Months

Loss of Foreign Patent Rights

Publication

Next Day

Must file a patent appl. “prior to publication” to preserve foreign patent rights.

6

What happens if….

Filed US Provisional

2 monthsPublication

US & Foreign Rights still preserved.

US & Foreign Rights still preserved.

Filed US Prov. 2Filed US Prov. 112 months

No publication of any kind

7

What Happens If….

PCT International Application Filed

Filed US Prov. 1

12 months

Publication

Filed US Prov. 2Filed US Prov. 1

12 months

Publication

US & Foreign Rights still preserved.

Foreign Rights are lost. US rights may be salvaged.

8

What Happens If….

Inventor ‘A’conceives the invention & reduces it to practice

Inventor ‘A’File patent appl.

Inventor ‘B’File patent appl.

Inventor ‘B’publishes a paper disclosing the invention

< 12 months

Who gets the patent?

9

RememberIn United States:

• First to invent gets the patent.• Invention = Conception + Reduction to practice• Inventor A

• Conceived & Reduced to practice before publication by inventor B• ‘A’ shall get a patent if ‘A’ can prove that ‘A’ invented before B

• Inventor B • Filed patent application prior to ‘A’ • ‘B’ shall get a patent if ‘B’ can prove that ‘B’ invented before A

10

Remember..In Foreign Jurisdiction e.g. Europe:

• First to file gets the patent regardless of who invented first.• No grace period of 12 months to file patent application after publication. • Inventor A

• Even though invented before ‘B’, have lost the race to patent office because ‘B’ filed before ‘A’.

• Inventor B • Filed patent application prior to ‘A’.• Could have obtained a patent if there was no publication.

• In this hypothetical, neither ‘A’ nor ‘B’ can obtain a patent in foreign jurisdictions due to the publication prior to filing.