The Complexities of Modern Priority -- A Question of 102, 112 or Both?
Priority and novelty are inseparable; any system of awarding patent rights to inventors will naturally ask “were you first to invent?” As basic as the question of novelty might seem, US priority, however, has always been a complex question. Not only does US priority ask the inquiries of 35 USC §102 but it also tests some of the standards of §112, at least those in the first paragraph (or subsection (a) in the AIA). Moreover, priority has become more intricate in modern practice because we are “practicing” in a hybrid jurisdiction – one where pre-AIA cases and AIA cases coexist in a somewhat dysfunctional and imperfect harmony. It is not enough to have known pre-AIA priority laws or to merely now learn the AIA because both types of cases will potentially be in commerce at least until March of 2033, not considering patent term extension.
The incorporation of §112 in modern US priority has been made more evident by two recent Federal Circuit opinions on the subject. Remember interferences? They are those quirky, obscure bullying proceedings that exist under pre-AIA law and allow for alleged inventors to contest the patents/applications of others that have beaten them to the Patent Office. Well, apparently interference practice is not yet a dead duck, though even all good things must come to an end. These two cases from the Federal Circuit pertain to recent interferences heard (now) by the Patent Trial and Appeal Board. Surprisingly, §102 is not at the center of these priority contests but §112 steals the limelight.
Priority & Enablement
Storer v. Clark is a precedential opinion in which a Court of Appeals panel affirmed the Patent Trial and Appeal Board’s decision not to grant priority to patentee Storer in an interference proceeding. Case No.: 2015-1802 (Fed. Cir. June 21, 2017). Storer sought to rely on a provisional application to overcome the alleged date of invention of the junior application. The failed priority claim was the result of a finding that Storer’s provisional application did not enable the continuing claims under §112, 1¶. (“Enablement is relevant for validity and to the issue of whether the provisional application is a constructive reduction to practice” as Judge Newman wrote for the panel citing Hyatt v. Boone).
In relevant part, the First Paragraph requires that the specification “contain… the manner and process of making and using [the invention], in such full, clear, concise, and exact terms as to enable any person skilled in the art… to make and use the same…” The enablement standard is typically met when an ordinary artisan can devise how to replicate the invention without “undue experimentation.” The subject claims in Storer were to a chemical compound used for medical treatment. To determine whether experimentation is undue, several considerations (or In re Wands factors) are employed: (1) quantity of experimentation, (2) the amount of guidance present, (3) the absence or presence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of an ordinary artisan, (7) the predictability or unpredictability of the art, and (8) claim breadth.
Of relevance to the Storer provisional, under factor 7, sub-reactions of the invention were found to perform highly unpredictably causing a need for experimentation to the order of “at least two years… including multiple consultations with experts at the top of their fields…” The panel honored the Board’s holding, finding substantial evidence supporting the Board’s conclusion in expert testimony and the inventor’s own failed attempts:
The Board received evidence of side reactions and the skepticism of experts. The Board received evidence that Storer and his team had difficulty and failures in synthesizing the target compound, as well as evidence that Clark and his team were more readily successful using apparently the same method. The Board’s finding that the chemistry was unpredictable is in accord with the evidence.
at 18-19. Priority is not just a question of novelty.
Priority & Written Description
US priority also requires an assessment as to whether other aspects of §112 are met. Purdue Pharma v. Recro Technology is a non-precedential opinion affirming the PTAB’s refusal of claims in an interference (ironically on both sides) for lack of written description under §112. Case No.: 2016-2260 (Fed. Cir. June 13, 2017). In relevant part, the First Paragraph requires that the specification “contain a written description of the invention…” The test for written description is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” at 5. The claimed invention in Purdue Pharma also relates to a chemical compound used for medical treatment. Substantial evidence was found for the Board’s refusal because the claimed formulation simply was not sufficiently disclosed in the specification, even though alternative configurations were disclosed.
So, again in Purdue Pharma we see that priority requires more than mere novelty. Accordingly, there is no shame in asking more than one question when it comes to US priority, flying an ever-intricate flag of standards of olympic proportions for contemporary patent professionals.
