Watermark

Under current US patent law, a patent is granted to the first person to ‘invent’ a patentable invention in the United States, rather than the first person to file a patent application for an invention. One is considered to have invented an invention when one has not only conceived the invention, but also ‘diligently reduced it to practice’.

In this case, there was no question that Frazer’s initial Australian provisional patent application of 19 July 1991 represented conception of the invention well in advance of that of C. Richard Schlegal, whose own US patent application was filed on 25 June 1992. Nonetheless, Schlegal argued that as all of Frazer’s work had been done in Australia, this did not represent diligent reduction to practice in the United States. The provisional patent application itself did not represent a reduction to practice, as at the time “Frazer believed that both the L1 and L2 genes had to be expressed together from the same plasmid … [but] his later work shows that only the L1 protein was necessary”. The BPAI accepted this argument, and awarded patent rights to Schlegal.
Frazer appealed to the Court of Appeals for the Federal Circuit, who upheld his appeal.

The appeal court found that there was sufficient detail in the original provisional patent application to support a finding that the invention had been enabled at that time. Although the science (recombinant DNA technology) was new and imperfectly understood, and some of the suggestions made in the provisional application turned out after further research to be incorrect, the method described in the provisional patent application  led to formation of the virus-like particles at the centre of the invention. It was more than an unproved hypothesis – it was an enabling disclosure. As such, Frazer was entitled to the benefit of his invention.
Barry Newman