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Fiers v. Revel, 984 F.2d 1164, 25 U.S.P.Q.2d 1601

Facts

This case involves a three-way interference proceeding concerning the priority of invention for DNA coding for human fibroblast beta-interferon. The Patent and Trademark Office Board awarded priority to Haruo Sugano, who relied on a Japanese filing date. Walter C. Fiers and others, who filed later, contested this decision, arguing that they had conceived the DNA coding prior to Sugano's filing. The Board concluded that Fiers did not establish conception of the DNA prior to his filing date, leading to the appeal.

Issue

Did the Board err in awarding priority of invention to Sugano based on his earlier Japanese filing date, and did Fiers establish prior conception of the DNA coding for beta-interferon?

Did the Board err in awarding priority of invention to Sugano based on his earlier Japanese filing date, and did Fiers establish prior conception of the DNA coding for beta-interferon?

Rule

For priority purposes, conception of a DNA sequence requires a definition of that sequence beyond its functional utility. A mere conception of a method for obtaining a DNA does not suffice to establish priority unless the DNA itself is defined structurally. The written description requirement mandates that the application must convey to those skilled in the art that the inventor had possession of the claimed subject matter.

For priority purposes, conception of a DNA sequence requires a definition of that sequence beyond its functional utility. A mere conception of a method for obtaining a DNA does not suffice to establish priority unless the DNA itself is defined structurally. The written description requirement mandates that the application must convey to those skilled in the art that the inventor had possession of the claimed subject matter.

Analysis

The court analyzed whether Fiers had sufficiently defined the DNA coding for beta-interferon to establish priority. It determined that Fiers' reliance on a method for isolating the DNA did not equate to a conception of the DNA itself. The Board's findings indicated that Fiers' application lacked a complete nucleotide sequence, which is necessary for establishing possession of the invention. Sugano's application, however, provided a complete sequence and method, fulfilling the written description requirement.

The court analyzed whether Fiers had sufficiently defined the DNA coding for beta-interferon to establish priority. It determined that Fiers' reliance on a method for isolating the DNA did not equate to a conception of the DNA itself. The Board's findings indicated that Fiers' application lacked a complete nucleotide sequence, which is necessary for establishing possession of the invention. Sugano's application, however, provided a complete sequence and method, fulfilling the written description requirement.

Conclusion

The court affirmed the Board's decision, awarding priority of invention to Sugano based on his earlier Japanese filing date, as Fiers did not prove prior conception of the DNA.

The court affirmed the Board's decision, awarding priority of invention to Sugano based on his earlier Japanese filing date, as Fiers did not prove prior conception of the DNA.

Who won?

Haruo Sugano prevailed in this case because he was able to demonstrate that his earlier Japanese patent application contained a complete and correct nucleotide sequence for the DNA coding for beta-interferon, along with a detailed method for obtaining it. The Board found that Fiers failed to establish that he had conceived the DNA prior to his filing date, which was critical in determining priority of invention.

Haruo Sugano prevailed in this case because he was able to demonstrate that his earlier Japanese patent application contained a complete and correct nucleotide sequence for the DNA coding for beta-interferon, along with a detailed method for obtaining it. The Board found that Fiers failed to establish that he had conceived the DNA prior to his filing date, which was critical in determining priority of invention.

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