IP News

Court Clarifies Interference Priority Rule

In Boston Scientific Scimed, Inc. v. Medtronic Vascular, Inc., 06-1434 (Fed. Cir. Aug. 8, 2007), the Federal Circuit held that a foreign patent application may only form the basis for priority under 35 U.S.C. '119(a) if that application was filed by either the U.S. applicant himself or by someone acting on his behalf at the time the foreign application was filed.

On April 23, 1998, the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences ('Board') declared an interference between three pending applications. Initially, the Board determined that Andrew Cragg and Michael Dake ('Cragg'), who had assigned rights in one of the U.S. applications at issue to Boston Scientific Scimed, Inc., were entitled to the benefit of the filing dates of two European patent applications filed by MinTec SARL ('MinTec'). However, at the time the European applications were filed, no legal relationship existed between MinTec and Cragg, nor was MinTec acting on behalf of Cragg.

Because no relationship existed between MinTec and Cragg at the time of the European filing, the Federal Circuit held that Cragg was not entitled to the benefit of that filing. The court determined that '119(a) only permits an applicant for a U.S. patent to rely for priority on the first filed application by an assignee on his behalf. This, the court opined, requires that a nexus exist between the inventor and the foreign applicant at the time the foreign application was filed. The court reasoned that an entity could not have filed a foreign application 'on behalf of' an inventor without the inventor's knowledge or consent.

Court Clarifies Interference Priority Rule

In Boston Scientific Scimed, Inc. v. Medtronic Vascular, Inc., 06-1434 (Fed. Cir. Aug. 8, 2007), the Federal Circuit held that a foreign patent application may only form the basis for priority under 35 U.S.C. '119(a) if that application was filed by either the U.S. applicant himself or by someone acting on his behalf at the time the foreign application was filed.

On April 23, 1998, the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences ('Board') declared an interference between three pending applications. Initially, the Board determined that Andrew Cragg and Michael Dake ('Cragg'), who had assigned rights in one of the U.S. applications at issue to Boston Scientific Scimed, Inc., were entitled to the benefit of the filing dates of two European patent applications filed by MinTec SARL ('MinTec'). However, at the time the European applications were filed, no legal relationship existed between MinTec and Cragg, nor was MinTec acting on behalf of Cragg.

Because no relationship existed between MinTec and Cragg at the time of the European filing, the Federal Circuit held that Cragg was not entitled to the benefit of that filing. The court determined that '119(a) only permits an applicant for a U.S. patent to rely for priority on the first filed application by an assignee on his behalf. This, the court opined, requires that a nexus exist between the inventor and the foreign applicant at the time the foreign application was filed. The court reasoned that an entity could not have filed a foreign application 'on behalf of' an inventor without the inventor's knowledge or consent.