Enabling Disclosure in Foreign Application Provides Priority Despite Later Developments in Understanding of the Process

Case: Frazer v. Schlegel, Case No. 06-1154 (Interference No. 104, 776) (Fed. Cir. 8/20/07)

The One Sentence Summary: Board erred in denying priority based on an Australian application that contained complete details of the method that was the subject of the interference count, and depicted the papillomavirus-like particle of the count with full disclosure of how to produce it, even though subsequently the inventor refined his understanding of the process.


What They Were Fighting About: When the Australian application was filed Frazer believed that both the L1 and L2 genes had to be expressed together from the same plasmid, but his later work showed that only L1 protein was necessary; the Board found that "[r]evising hypotheses in the face of evidence is a hallmark of well-conducted research," and ruled that Frazer was not entitled to any date of disclosure until he accurately and fully understood the mechanism. and awarded priority to Schwlegel.

Federal Circuit Holdings:

• Holding when reliance is on a patent document already filed, the question is whether the document discloses the invention of the count by meeting the written description and enablement requirements of 35 U.S.C. § 112, for a filed application serves as a constructive reduction to practice of its content.
• The Board erred in denying Frazer's entitlement to the date of the Australian patent application, because that application had complete details of the method that was the subject of the interference count, and depicted the particle at issue with full disclosure of how to produce it. Thus, the patent application was a constructive reduction to practice of the invention disclosed therein -- it was not merely proposing an unproved hypothesis or guess.