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Federal Circuit clarifies conception, appreciationNovember 21, 2005

In Invitrogen Corp. v. Clontech Laboratories, Inc., the Federal Circuit recently addressed what is required for an inventor to ‘conceive’ of his or her invention. The technology at issue relates to a modified version of reverse transcriptase produced by retroviruses. Unmodified reverse transcriptase facilitates reverse transcription, the production of DNA from RNA templates, and also facilitates degradation of the RNA template once the DNA is produced. The patented reverse transcriptase retains the ability to produce DNA from RNA, but does not have the ability to degrade the RNA template, allowing the RNA templates to be reused to produce more DNA. Invitrogen successfully produced this mutant reverse transcriptase in January, 1987.Other researchers also were working on modifying reverse transcriptase, including two at Columbia University. The Columbia scientists had successfully produced the genetically modified reverse transcriptase in 1984, more than two years before Invitrogen’s success. However, at that time, the Columbia researchers were not aware that they had produced reverse transcriptase that had these characteristics.In order to have conceived the invention, the inventor must ‘appreciate that which he has invented.’ Therefore, the question was not when the modified reverse transcriptase was produced by the Columbia researchers, but rather when they appreciated the fact that the enzyme they had produced retained its ability to produce DNA but lack the ability to degrade the RNA templates. This particular activity was not confirmed by the Columbia researchers until March 1987, after the date Invitrogen had reduced the invention to practice. As a result, the Columbia research could not anticipate the Invitrogen patents, as their conception date was pushed back to the point they appreciated the nature of what they had produced.This situation most often comes up in the context of chemical or biotechnology patents, because new compounds, proteins, or mutations are often produced before those who produced them know their exact structure or properties. This case illustrates that it is important to understand the beneficial nature of a new compound, genetic variation, or the like as soon as possible, or later work by another party could result in the later party gaining the patent rights in the invention.To read the full text, log on to

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