IPR in Biotechnology (BTX-402)

B.Tech Biotechnology (4th year)

Course coordinator:
Harmanpreet Meehnian
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Topic: Competitive research

 Competitive Research
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 It is common for two or more separate groups to work independently and
very competitively toward the same goal. Even two separate groups in
different fields that are not deliberately working towards the same goal can
independently make the same invention. In such a case, priority of
invention (who is entitled to the patent) must be determined.

 United States uses a first-to-invent system to determine priority of

inventorship. Under this system, even if someone has filed a patent
application, someone else can file a patent application later and try to prove
that he or she was the first to invent.
 Priority Of Invention Under The
First-to-invent System
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 The rules for determining who was the first to invent are based on
Section 102(g) of the patent statute and are relatively simple.

 The first to reduce an invention to practice is the first to invent,

unless a second inventor can prove that he or she (or they) was the first
to conceive of the invention and was continuously diligent from a time
just before the other inventor's reduction to practice through to his or
her own reduction to practice later on.

I. Conception of Invention
II. Reduction to Practice
III. Diligence
IV. Corroboration of Inventive Acts
V. Abandonment, Suppression, and Concealment
 Conception of Invention
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 Precisely what a "conception" is and when it is complete can be difficult to
determine in practice.

 The Federal Circuit explained that 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

I. Conception and Recognition

II. Conception and Enablement
III. Conception of a Cloned Gene
IV. Conception and the Utility Requirement
V. Conception of Genus and Species.
VI. Conception and Inventorship
 Reduction to Practice
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 A reduction to practice may be either actual or constructive. The former
involves actually making and practicing the invention; the latter involves
simply filing a patent application.

 It is important to note that the standard for achieving an actual reduction

to practice can be so high in a competitive field that it is essential to secure a
constructive reduction to practice by filing a patent application.

I. Constructive Reduction to Practice

II. Actual Reduction to Practice

 Diligence
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 A showing of conception must be coupled to a showing of reduction to
practice (actual or constructive) by a showing of diligence.

 Diligence need only be reasonable, and there are many court decisions
that seem to place the diligence requirement in a favorable light.

 In Hybritech Inc. v. Abbott Laboratories, for example, Abbott

challenged Hybritech's diligence in reducing its monoclonal sandwich assay
invention to practice by arguing that there were many days in Hybritech's
records that did not show work being done on the invention.
 Corroboration of Inventive Acts
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 One of the most troublesome aspects of proving prior inventorship is
that the inventive acts (conception, reduction to practice, and diligence)
must be corroborated by someone who is not an inventor.

 Corroboration is typically in the form of detailed record-keeping but also

may be in other forms, such as sworn testimony.

Without corroboration these acts are legally irrelevant and of no help in

establishing priority
 Abandonment, Suppression, and Concealment
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 Generally, the party who establishes that he is the first to conceive and
the first to reduce an invention to practice is entitled to a patent thereon.

 However, the second party to conceive and reduce the same invention to
practice will be awarded priority of invention if he can show that the first
party to reduce to practice abandoned, suppressed or concealed the
invention.
Thanks

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