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 RTP Physical 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. Publication 12 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 months Publication US & Foreign Rights still preserved. Filed US Prov. 2 Filed US Prov months No publication of any kind

7 What Happens If…. PCT International Application Filed Filed US Prov months Publication Filed US Prov. 2 Filed US Prov 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 Remember In 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.