Priority Rules and Section 102g

1
Priority Rules and Section 102(g)

• Pumps, Pills, and Socket Wrenches -- You could
  have been rich by now!

2
Source of Law for Priority of Invention

• Section 102(g) elements
• another inventor (senior inventor) before such
  persons invention (junior inventor), thus two or
  more independent inventors are involved in a
  priority contest
• Senior inventor establishes invention before
  junior inventor (First to conceive)
• without showing that senior inventor abandoned,
  suppressed, or concealed the invention (no loss
  of right or not subject to statutory bar)

3
Source of Law continued

• Senior inventor wins contest if he established
  first to conceive and first to reduce to
  practice OR
• Senior inventor wins contest if he establishes
  first to conceive even if he is last to reduce to
  practice.
• This outcome is produced as a result of the
  exception for senior inventor diligence
• the exception allows for backdating

4
EXCEPTION for Backdating

• first conception PLUS
• reasonable diligence beginning just before the
  junior inventors conception IN SPITE
  OF
• later reduction to practice EQUALS
• FIRST PRIORITY TO PATENT INVENTION!!!

5
Interferences

• Patent Priority contests between rival inventors
  are termed patent interferences
• Section 102(g) mentions interferences and Section
  135 governs interference cases
• The PTO Board of Patent Appeals and Interferences
  determined all priority questions
• Appeals are heard by CAFC (with the same parties
  in controversy) or by D.D.C (appeal against the
  PTO Director). An election must be made.

6
Summary of Priority General Rule

• Priority depends on three factors conception,
  diligence, and reduction to practice
• General Rule of Law for Priority
• A senior inventor will have priority over a
  junior inventor,
• unless the junior inventor reduces to practice
  first and
• the senior inventor did not use reasonable
  diligence from the time just prior to the junior
  inventors time of conception

7
Puzzling Priority Paradox The court will scrap
priority rules under 102(g) and instead rely on
policy