Gould invented a laser.
Around the same time, Schawlow and Townes also invented a similar laser.
They both applied for patents.
Schawlow and Townes applied
for their patent first, but Gould had evidence that he had some up with
the idea (aka conception) first.
Neither party claimed that they had actually made a prototype (aka reduced
to practice) prior to their patent
Since both parties
independently attempted to patent the laser, the USPTO had to determine
who had invented it first.
Based on the principle of interference (codified in 35 U.S.C. §102(g))
the first filer, Schawlow, is the 'senior party', and Gould is the
The patent goes to the
senior party unless the junior party establishes that they had both come
up with the idea (aka conception)
and that the invention had been reduced to practice prior to the senior party filing.
One exception, if the
junior party can show that they were the first to conceive, but the second to reduce to
practice, but they were diligent in reducing the invention to practice, then
they still win!
The USPTO found for Schawlow
and Townes. Gould appealed.
The USPTO found that while
Gould may have been the first to conception, he was not diligent
in reducing the invention to practice between the time that Schawlow and Townes
filed and the time that he filed.
The Appellate Court affirmed.
The Appellate Court looked
at the facts and found that they were insufficient to show that Gould had
been diligent for the entire
period during which diligence
For example, Gould
testified that he took a few weeks off from his job to work on the
invention, but didn't have any physical evidence (e.g. lab notes) about
what he did during that time.
The Court noted that if this
high evidentiary burden seemed unfair, it was Gould's own fault for not
Filing a patent is
constructive evidence of a reduction to practice. So instead of tinkering around with all the
little details and working out the kinks, what Gould should have done
was to file a patent as early as possible in the process.