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Tag Archives: Prior Invention

Federal Circuit Smells A Rose In Crestor Conception

Posted by Courtenay Brinckerhoff on Posted in 102; Federal Circuit Decisions

In Teva Pharmaceutical Industries, Ltd. v. AstraZeneca Pharmaceuticals LP, the Federal Circuit took what could be one of its last looks at the requirements for establishing prior invention under 35 USC § 102(g)(2). The court determined that although conception requires some appreciation of the claimed subject matter, it does not require an understanding of all of the properties that may be claimed. Continue reading this entry

Federal Circuit Won’t Let Creative Compounds Muscle Its Way Into Priority Of Invention

Posted by Courtenay Brinckerhoff on Posted in 102; Federal Circuit Decisions

In Creative Compounds, LLC v. Starmark Laboratories, the Federal Circuit clarified that the “clear and convincing” burden of proof applies to an allegation of prior invention unless an action is brought under 35 USC § 291 or the parties identify and agree on common claimed subject matter and seek an adjudication of priority.  While Patent Reform may do away with the specific provisions at issue in this case, at least some of the principles may carry over to the proposed “derivation” proceedings.

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Prior Invention In The U.S. Requires A Prior U.S. Inventor

Posted by Courtenay Brinckerhoff on Posted in Federal Circuit Decisions

In Solvay S.A. v. Honeywell International, Inc., the Federal Circuit discussed the contours of 35 USC § 102(g)(2). The court found that Honeywell’s prior (secret) use of the process claimed in Solvay’s patent did not qualify as an invalidating prior invention because Honeywell was not an original inventor of the subject matter at issue. This case underscores some of the quirks of the United States "first to invent system," and highlights the dangers of relying on (secret) work developed outside the United States when developing your own technology. 

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