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
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
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
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