Reduction to practice
Encyclopedia
In United States patent law
, the reduction to practice is a concept meaning the embodiment of the concept of an invention
. The date of this embodiment is critical to the determination of priority between inventors in an interference proceeding
.
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 hereafter to be applied in practice." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376
(Fed. Cir.
1986) (quoting 1 Robinson On Patents 532 (1890))
The embodiment of an invention can either be:
, several additional kinds of evidence can be used to establish an earlier priority date.
s of the 18th and 19th century, a working model is no longer a requirement of the U.S. patent law. However, if the inventor builds a working model for testing and for displaying to potential buyers, it can also be used to prove an earlier than filing priority date.
. The USPTO says:
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, the reduction to practice is a concept meaning the embodiment of the concept of an invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
. The date of this embodiment is critical to the determination of priority between inventors in an interference proceeding
Interference proceeding
An interference proceeding, also known as priority contest, is an inter partes proceeding to determine the priority issues of multiple patent applications. It is a unique procedure in the patent law of the United States. Unlike in most other countries which have adopted the first-to-file system,...
.
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 hereafter to be applied in practice." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376
Case citation
Case citation is the system used in many countries to identify the decisions in past court cases, either in special series of books called reporters or law reports, or in a 'neutral' form which will identify a decision wherever it was reported...
(Fed. Cir.
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
1986) (quoting 1 Robinson On Patents 532 (1890))
The embodiment of an invention can either be:
- Actual reduction to practice: "[R]equires that the claimed invention work for its intended purpose." Brunswick Corp. v. U.S., 34 Fed. Cl. 532, 584Case citationCase citation is the system used in many countries to identify the decisions in past court cases, either in special series of books called reporters or law reports, or in a 'neutral' form which will identify a decision wherever it was reported...
(1995). - Constructive reduction to practice: "[O]ccurs upon the filing of a patent application on the claimed invention." Brunswick Corp. v. U.S., 34 Fed. Cl. 532, 584Case citationCase citation is the system used in many countries to identify the decisions in past court cases, either in special series of books called reporters or law reports, or in a 'neutral' form which will identify a decision wherever it was reported...
(1995). - "Simultaneous conception and reduction to practice": "In some instances, such as the discovery of genes or chemicals, an inventor is unable to establish a conception until he has reduced the invention to practice through a successful experiment." The Regents of the University of California v. Synbiotics Co., 849 F.Supp. 740, 742Case citationCase citation is the system used in many countries to identify the decisions in past court cases, either in special series of books called reporters or law reports, or in a 'neutral' form which will identify a decision wherever it was reported...
(S.D.Cal., 1994) (citing Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1206Case citationCase citation is the system used in many countries to identify the decisions in past court cases, either in special series of books called reporters or law reports, or in a 'neutral' form which will identify a decision wherever it was reported...
(Fed. Cir. 1991)). The court will apply this doctrine in so-called "unpredictable arts" such as biologyBiologyBiology is a natural science concerned with the study of life and living organisms, including their structure, function, growth, origin, evolution, distribution, and taxonomy. Biology is a vast subject containing many subdivisions, topics, and disciplines...
and chemistryChemistryChemistry is the science of matter, especially its chemical reactions, but also its composition, structure and properties. Chemistry is concerned with atoms and their interactions with other atoms, and particularly with the properties of chemical bonds....
where the invention is a "biologically active composition of matter," also called a "bio-chemical substance."
Some types of evidence
In addition to inventor's notebookInventor's notebook
An inventor's notebook is used by inventors, scientists and engineers to record their ideas, invention process, experimental tests and results and observations. It is not a legal document but is valuable, if properly organized and maintained, since it can help establish dates of conception and...
, several additional kinds of evidence can be used to establish an earlier priority date.
Working model
A "working model" is usually a strong evidence to demonstrate actual reduction to practice. Unlike patent modelPatent model
A patent model was a scratch-built miniature model no larger than 12" by 12" by 12" that showed how an invention works...
s of the 18th and 19th century, a working model is no longer a requirement of the U.S. patent law. However, if the inventor builds a working model for testing and for displaying to potential buyers, it can also be used to prove an earlier than filing priority date.
Disclosure Document Program
The Disclosure Document Program (DDP) was a USPTO program that allowed an inventor to file a preliminary description of his/her invention. The program was discontinued by the USPTO as of February 1, 2007, in favor of filing a provisional applicationProvisional application
Under United States patent law, a provisional application for patent is a legal document filed in the United States Patent and Trademark Office , that establishes an early filing date, but which does not mature into an issued patent unless the applicant files a regular patent application within one...
. The USPTO says:
A provisional application for patent provides more benefits and protections to inventors than a disclosure document and can be used for the same purposes as a disclosure document if necessary. . . .A non-provisional application must be filed within twelve months of the filing date of a provisional patent in order for the inventor to claim the benefit of the provisional application....