Gould v. Schawlow
363 F.2d 908 (CCPA 1966)

  • 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 filing dates.
  • 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 'junior party'.
      • 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 is required.
      • 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 earlier.
      • 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.