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16 July, 2007
Henkel Corp v. Procter & Gamble Company - (Interference No. 105,174) 11 May 2007
In an earlier decision the Board of Patent Appeals and Interferences awarded priority to senior party Procter & Gamble, because it felt that Henkel had failed to appreciate exactly what their invention was in view of the requirement for conception and reduction to practice. The ‘senior’ party is the party which files the patent application first.
On appeal to the Federal circuit the court noted that in order to succeed in an interference proceeding a party that does not have the earliest effective filing date, which is Henkel Corp, needs only to demonstrate by way of evidence that it was the first party to invent if the two patents or applications at issue are co-pending before the Patent Office.
The Federal Circuit explained that one requirement for showing actual reduction to practice is that the inventor had appreciated an embodiment that met all the limitations of the claimed invention. In addition, the Court does not require that the junior party in an interference proceeding demonstrate that it recognized the exact language of the ultimate claim, and that all that is required is the junior party must have recognized the subject matter of the invention. The decision of the Federal Circuit was that, based on the record, the Henkel inventors had recognized the subject matter of the invention first and therefore Henkel were awarded priority of invention.
This reasoning follows the ratio espoused in an earlier decision of the Federal Circuit in Falkner v Inglis (Interference no. 105,187) 26/5/2006
In this case, the Federal Circuit was reviewing the decision of the Board of Patent Appeals and Interferences (BPIA) regarding which party was the earliest inventor of a vaccine. Both parties sought the benefit of earlier filed applications to establish dates of constructive reduction of their inventions to actual practice for the purposes of determining priority in the claims at issue.
Falkner brought an interference action based on his patent, and Inglis’ application. Falkner bought closely related motions before the BPAI:
1. Inglis’ claims were unpatentable because they failed to meet necessary written
description requirements.
2. Inglis’ earlier application didn’t sufficiently describe or enable the claim in question.
3. The claims in Inglis’ application were anticipated and thus unpatentable.
The BPAI denied Falkner’s motions and ordered the judgement in favour of Inglis. The Federal Circuit were required to evaluate whether the Inglis benefit applications adequately described and enabled a poxvirus based vaccine from the perspective of one of ordinary skill in the art as of the relevant filing date. The court reiterated that an applicant must convey to those skilled in the art that as of the filing date, he or she was in possession of the invention. The written description’s adequacy depends on the content in relation to the invention, not its length. Several passages of Inglis’ application were directed to poxvirus which the court evidently considered sufficient in conjunction with the existing knowledge of the art. The court relied on unrefuted expert testimony that articles describing essential genes for pox virus were well known in the art, and that a skilled person would have been able to choose an essential gene based on publicly available references.
The court then had to determine whether a written description had to include examples. The court held that the lack of examples involving poxviruses didn’t render Inglis’ written description inadequate. A specification is targeted to a person of skill in the art who comes to the patent with knowledge of what has come before. An applicant need not spell out every detail, but only enough to convince the person that the inventor possessed the invention and to enable the person to make and use the invention without undue experimentation. The next question was whether the written description must include a description of an actual reduction to practice. The court held that actual reduction to practice is not required. The BPAI was correct not to view the fact that Inglis hadn’t actually produced a poxvirus vaccine as fatal. Constructive reduction to practice is an acceptable method of disclosure of the technological knowledge on which the patent is based. The court found this consistent with US Supreme Court precedent that makes clear that, while reduction to practice generally provides the strongest evidence an invention is complete, it doesn’t follow that proof of reduction to practice is necessary in every case. An invention can be complete even in the absence of an actual reduction. The Inglis specification didn’t describe the essential regions of any poxvirus or incorporate by reference any literature that described the DNA sequence of the pox virus genome and locations of essential regions. They held that where, as in this case, accessible literature clearly provided as of the relevant date genes and their nucleotide sequence (of the essential genes), a written description doesn’t need a recitation or incorporation by reference of such genes and sequences.
Therefore, in summary, the amount of information required to fulfil the written description requirement depends on the nature and scope of the invention as well as the existing scientific and technological knowledge in the field. This decision may have also reduced the burden on applicants of biotechnology inventions.
Bruce Dowsing
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