In re Gosteli
872 F.2d 1008 (Fed. Cir. 1989)

  • Gosteli invented an antibiotic. He filed for a patent in the US, but it was rejected because it had been anticipated by a patent filed a guy named Menard seven months before.
    • Anticipation is covered in 35 U.S.C. 102(e).
  • Gosteli tried to get around Menard by claiming that he had filed a patent on the antibiotic in Luxembourg before Menard filed his patent.
    • Under the Paris Convention (and 35 U.S.C. 119) an inventor has twelve months to file a US patent after they've filed a foreign patent on the same invention. If they do that, then the US considers the patent filing date to be the date they filed the foreign patent.
      • That's known as a foreign priority date.
    • Note that Gosteli was probably the first to invent, but that didn't matter in Luxemborg which had a first to file system, so he couldn't beat Menard by filing a 35 U.S.C. 131 affidavit.
  • The USPTO denied the foreign priority date. Gosteli appealed.
    • The USPTO found that the disclosure in Gosteli's Luxembourg patent was not as complete as the disclosure in his US patent.
      • In other words, the description of the antibiotic in Gosteli's Luxembourg patent was not the same as the description in his US patent, and the description in the Luxembourg patent couldn't support the claims Gosteli was making in the US patent.
      • Therefore, under 35 U.S.C. 112, the Luxembourg patent and the US patent were not technically the same invention and so 119 was inapplicable (so he'd get the US filing date and Menard would anticipate him).
  • The Board of Patent Appeals affirmed. Gosteli appealed.
  • The Appellate Court affirmed.
    • The Appellate Court found that Gosteli didn't have to describe in the foreign patent exactly what was claimed in the US patent, but the description in the foreign patent must clearly allow persons of ordinary skill in the art to recognize that Gosteli invented what was claimed in the US patent.
  • The reason why the US patent differed from the Luxembourg patent was that after filing the Luxembourg patent, Gosteli kept working on his antibiotics and had made advances, which he understandably wanted to add to his US claims. Unfortunately, this case says that only those claims that would be supported by the original foreign patent will be given the foreign priority date in the US.