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Priority claim to foreign filing awarded in interference; disclosure in compliance with section 112
August 21, 2007

The Federal Circuit yesterday addressed the requirements for the use of a foreign filing date as a priority date in a U.S. interference proceeding. The court awarded the interference party the priority benefit of the foreign filing date based on the "constructive reduction to practice of an invention whose disclosure is in compliance with the requirements of § 112." As a result, the court reversed the Board of Patent Appeals and Interferences' finding of priority and awarded priority to the applicant relying on the foreign filing date.

More on Frazer v. Schlegel after the jump.

The case involved patent applications from two groups covering the production of a vaccine for a human papillomavirus (HPV), which has been shown to cause cervical cancer. On June 25, 1992, Schlegel filed a U.S. application. Frazer filed an Australian patent application on July 19, 1991, subsequently filed a PCT application on July 20, 1992 which claimed priority from the Australian application, and on January 19, 1994 filed a U.S. application which claimed priority to both the PCT and Australian application. Frazer's U.S. application claiming priority to the Australian application was placed in interference with the U.S. Schlegel application.

The key issue on appeal was whether or not Frazer could claim the priority date of the Australian application. The Board held that Frazer was not able to claim the earlier date because the Australian applications disclosure was inadequate and that the Australian application did not demonstrate "conception" of the invention in the PCT application.

The Federal Circuit disagreed. Specifically, the court stated:

Although the Board analyzed the Australian application in terms of "conception," when reliance is on a patent document already filed, the question is whether the document discloses the invention of the count by meeting the written description and enablement requirements of 35 U.S.C. § 112 ¶ 1, for a filed application serves as a constructive reduction to practice of its content.

The court noted that "[i]t is not disputed that Frazer's Australian application described virus-like particles and their production from recombinant vaccine virus" and that "acknowledgment of the complexities of the science does not negate the disclosure of the production of these virus-like particles." Further, the court stated that "the description of the procedures used, and the successful production of the virus-like particles there achieved and reported, disclose and enable a species within the count." Because there was a constructive reduction to practice and the disclosure was in compliance with the § 112 requirements, the court ruled that Frazer was entitled to the priority benefit of the Australian filing date, and therefore priority in the interference.

To read the full decision in Frazer v. Schlegel, click here.

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