In re Steed (Fed. Cir. 2015)
This decision offers an example of failures of the first-to-invent regime. Basically, Steed (acting pro-se in a pre-AIA application) attempted to swear behind a 102(e) prior art reference. However, prior conception, diligence, and reduction-to-practice all must be proven with documentary evidence. Here, the applicant submitted a Section 131 declaration attempting to show prior conception, diligence, and reduction to practice, but the evidence submitted was ultimately found lacking.
Through a series of cases, the courts have defined invention more as a process than a point in time. This process is triggered and begins with an inventor’s (or inventors’) conception of the invention that includes a “definite and permanent idea of the complete and operative invention,” including all of the elements of the eventually claimed invention. Although conception seemingly occurs in the mind of inventors, the evidentiary requirements demand written proof of conception. Although invention is triggered by conception the process is not deemed complete until the idea has been actually reduced to practice (RTP). Today, few patent applicants actually reduce their idea to practice prior to filing (certainly not covering all of the claimed arrangements), however, the the courts have deemed the filing of a patent application satisfying the patentability requirements to be a constructive reduction to practice. In essence, the courts have noted that the elements of invention were not actually completed, but we will close our eyes and simply assume the legal fiction.
Here, the patent applicants had a number of documents showing that they were working on a variety of ideas. However, nothing submitted was sufficient to show that the applicants had conceived of the whole idea (with the claim limitations being sought) prior to the critical prior-art date.
The point here is that it is hard to prove a prior invention date unless you have kept very good records enough to prove an early conception date of the invention that you are now claiming.
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An odd aspect of the case involved the PTO’s argument that the pro-se inventors had waived their arguments associated with proving an early date of actual reduction to practice. Basically, in briefing the applicants had stated that their evidence showed a prior constructive reduction to practice even though it was clear that the applicants were attempting to prove prior actual reduction to practice. Since the applicants had used the wrong word, the PTO solicitor argued that the applicant waived their right to argue actual reduction to practice. On appeal, the Federal Circuit rejected the waiver argument, but ultimately found that the applicants had not proven actual reduction to practice.
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One take-away from this case is the importance of relying upon highly qualified patent counsel. Although the AIA has largely eliminated the particular issues in this case, a large number of pitfalls remain to trap the unwary.