Oka v. Youssefyeh
849 F.2d 581 (Fed. Cir. 1988)

  • Youssefeyeh and Suh came up with the chemical structure of an enzyme (aka conception). They thought that it would be pretty easy to synthesize the enzyme, but it took months and month to figure out the chemistry to actually synthesize it (aka reduce to practice). Once they figured it out they applied for a patent.
  • While they were working on the synthesis, and independent scientist, Oka, came up with the same enzyme and figured out how to synthesize. He applied for a patent before Youssefeyeh.
    • Btw, Oka filed for his patent in Japan, but under international treaty, if he filed for a US patent within one year of the filing of the foreign patent, the USPTO considers the date of the foreign filing to be the date of the US filing.
  • Since both parties independently attempted to patent the same enzyme, 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, Oka, is the 'senior party', and Youssefeyeh 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 Youssefeyeh. Oka appealed.
    • The USPTO found that Youssefeyeh had conceived the enzyme and reduced it to practice prior to Oka.
  • The Appellate Court reversed.
    • The Appellate Court looked at the specific facts of the case and found that Youssefeyeh had a general idea of what the enzyme should look like, but didn't really nail down the specifics (aka had conception) until the exact same day that Oka filed for his patent.
    • The Court found that in the event of a tie, the senior party wins. So, since Youssefeyeh's conception was the same date as Oka's filing, the principle of interference says that the senior party, Oka, gets the patent.
  • FYI, as a foreign filer, Oka was barred from showing evidence that he reduced to practice prior to his filing date because foreign inventors are prohibited from doing that under 104(a)(1).
    • 104(a)(1) was added because most other countries don't have the same discovery laws that the US has, and it can be very difficult to get evidence of the actual date a foreign inventor reduced to practice.