“Conception”

[Editor Note: This MPEP section

has limited applicability

to

applications subject to examination under the first inventor to file (FITF)

provisions of the AIA as set forth in

35 U.S.C. 100 (note)

. Patents and

applications that contain (or contained at any time) at least one claim with a

pre-AIA effective filing date (before March 16, 2013) and at least one claim with a

post-AIA effective filing date (on or after March 16, 2013) are subject to the

patentability requirements in

AIA 35 U.S.C.

102

-

103

and subject to

pre-AIA 35

U.S.C. 102(g)

.See

MPEP §

2159

et seq.]

Conception has been defined as “the complete performance of the mental

part of the inventive act” and it is “the formation in the mind of the inventor of a

definite and permanent idea of the complete and operative invention as it is thereafter

to be applied in practice….”

Townsend v. Smith,

36 F.2d 292, 295, 4

USPQ 269, 271 (CCPA 1929). “[C]onception is established when the invention is made

sufficiently clear to enable one skilled in the art to reduce it to practice without the

exercise of extensive experimentation or the exercise of inventive skill.”

Hiatt v. Ziegler,

179 USPQ 757, 763 (Bd. Pat. Inter. 1973).

Conception has also been defined as a disclosure of an invention which enables one

skilled in the art to reduce the invention to a practical form without “exercise of the

inventive faculty.”

Gunter v. Stream,

573 F.2d 77, 197 USPQ 482 (CCPA

1978). See also

Coleman v. Dines,

754 F.2d 353, 224 USPQ 857 (Fed.

Cir. 1985) (It is settled that in establishing conception a party must show possession

of every feature recited in the count, and that every limitation of the count must have

been known to the inventor at the time of the alleged conception. Conception must be

proved by corroborating evidence.);

Hybritech Inc. v. Monoclonal Antibodies

Inc.,

802 F. 2d 1367, 1376, 231 USPQ 81, 87 (Fed. Cir

857 (Fed.

Cir. 1985) (It is settled that in establishing conception a party must show possession

of every feature recited in the count, and that every limitation of the count must have

been known to the inventor at the time of the alleged conception. Conception must be

proved by corroborating evidence.);

Hybritech Inc. v. Monoclonal Antibodies

Inc.,

802 F. 2d 1367, 1376, 231 USPQ 81, 87 (Fed. Cir. 1986) (Conception is

the “formation in the mind of the inventor, of a definite and permanent idea of the

complete and operative invention, as it is hereafter to be applied in practice.”);

Hitzeman v. Rutter,

243 F.3d 1345, 58 USPQ2d 1161 (Fed. Cir. 2001)

(Inventor’s “hope” that a genetically altered yeast would produce antigen particles

having the particle size and sedimentation rates recited in the claims did not establish

conception, since the inventor did not show that he had a “definite and permanent

understanding” as to whether or how, or a reasonable expectation that, the yeast would

produce the recited antigen particles.);

Staehelin v. Secher,

24

USPQ2d 1513, 1522 (Bd. Pat. App. & Inter. 1992) (“evidence of conception naming only

one of the actual inventive entity inures to the benefit of and serves as evidence of

conception by the complete inventive entity”).

I.

CONCEPTION MUST BE DONE IN THE MIND OF THE INVENTOR

The

inventor

must form a definite and

permanent idea of the complete and operable invention to establish conception.

Bosies v. Benedict,

27 F.3d 539, 543, 30 USPQ2d 1862, 1865

(Fed. Cir. 1994) (Testimony by a noninventor as to the meaning of a variable of a

generic compound described in an inventor’s notebook was insufficient as a matter of

law to establish the meaning of the variable because the testimony was not probative

of what the inventor conceived.). A person who shares in the conception of a claimed

invention is a joint inventor of that invention.

In re VerHoef,

888 F.3d 1362, 1366-67, 126 F.2d 1561, 1564-65 (Fed. Cir. 2018).

II

variable of a

generic compound described in an inventor’s notebook was insufficient as a matter of

law to establish the meaning of the variable because the testimony was not probative

of what the inventor conceived.). A person who shares in the conception of a claimed

invention is a joint inventor of that invention.

In re VerHoef,

888 F.3d 1362, 1366-67, 126 F.2d 1561, 1564-65 (Fed. Cir. 2018).

II.

CONCEPTION REQUIRES CONTEMPORANEOUS RECOGNITION AND APPRECIATION OF THE

INVENTION

There must be a contemporaneous recognition and appreciation of the

invention for there to be conception.

Silvestri v. Grant,

496 F.2d

593, 596, 181 USPQ 706, 708 (CCPA 1974) (“an accidental and unappreciated duplication

of an invention does not defeat the patent right of one who, though later in time was

the first to recognize that which constitutes the inventive subject matter”);

Invitrogen,

Corp. v. Clontech Laboratories, Inc.,

429 F.3d 1052, 1064,

77 USPQ2d 1161, 1169 (Fed. Cir. 2005) (In situations where there is unrecognized

accidental duplication, establishing conception requires evidence that the inventor

actually made the invention and understood the invention to have the features that

comprise the inventive subject matter at issue).

Langer v. Kaufman,

465 F.2d 915, 918, 175 USPQ 172, 174 (CCPA 1972) (new form of catalyst was not

recognized when it was first produced; conception cannot be established

nunc

pro tunc

). However, an inventor does not need to know that the invention

will work for there to be complete conception.

Burroughs Wellcome Co. v.

Barr Labs., Inc.,

40 F.3d 1223, 1228, 32 USPQ2d 1915, 1919 (Fed. Cir.

1994) (Draft patent application disclosing treatment of AIDS with AZT reciting

dosages, forms, and routes of administration was sufficient to collaborate conception

whether or not the inventor believed the inventions would work based on initial

screening tests.) Furthermore, the inventor does not need to appreciate the

patentability of the invention.

Dow Chem. Co. v

32 USPQ2d 1915, 1919 (Fed. Cir.

1994) (Draft patent application disclosing treatment of AIDS with AZT reciting

dosages, forms, and routes of administration was sufficient to collaborate conception

whether or not the inventor believed the inventions would work based on initial

screening tests.) Furthermore, the inventor does not need to appreciate the

patentability of the invention.

Dow Chem. Co. v. Astro-Valcour,

Inc.,

267 F.3d 1334, 1341, 60 USPQ2d 1519, 1523 (Fed. Cir. 2001).

The first to conceive of a species is not necessarily the first to

conceive of the generic invention.

In re Jolley,

308 F.3d 1317,

1323 n.2, 64 USPQ2d 1901, 1905 n.2 (Fed. Cir. 2002). Further, while conception of a

species within a genus may constitute conception of the genus, conception of one

species and the genus may not constitute conception of another species in the genus.

Oka v. Youssefyeh,

849 F.2d 581, 7 USPQ2d 1169 (Fed. Cir. 1988)

(conception of a chemical requires both the idea of the structure of the chemical and

possession of an operative method of making it). See also

Amgen, Inc. v.

Chugai Pharmaceutical Co.,

927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021

(Fed. Cir. 1991) (in the isolation of a gene, defining a gene by its principal

biological property is not sufficient for conception absent an ability to envision

the detailed constitution as well as a method for obtaining it);

Fiers v.

Revel,

984 F.2d 1164, 1170, 25 USPQ2d 1601, 1605 (Fed. Cir. 1993)

(“[b]efore reduction to practice, conception only of a process for making a

substance, without conception of a structural or equivalent definition of that

substance, can at most constitute a conception of the substance claimed as a process”

but cannot constitute conception of the substance; as “conception is not enablement,”

conception of a purified DNA sequence coding for a specific protein by function and a

method for its isolation that could be carried out by one of ordinary skill in the

art is not conception of that material)

definition of that

substance, can at most constitute a conception of the substance claimed as a process”

but cannot constitute conception of the substance; as “conception is not enablement,”

conception of a purified DNA sequence coding for a specific protein by function and a

method for its isolation that could be carried out by one of ordinary skill in the

art is not conception of that material). See

MPEP §§

2106.04(b)

and

2106.04(c)

for information on the subject matter

eligibility of inventions involving isolated genes.

On rare occasions conception and reduction to practice occur

simultaneously in unpredictable technologies.

Alpert v. Slatin,

305 F.2d 891, 894, 134 USPQ 296, 299 (CCPA 1962). “[I]n some unpredictable areas of

chemistry and biology, there is no conception until the invention has been reduced to

practice.”

MacMillan v.

Moffett,

432 F.2d 1237, 1234-40, 167 USPQ 550, 552-553 (CCPA

1970). See also

Hitzeman v. Rutter,

243 F.3d 1345, 58 USPQ2d 1161

(Fed. Cir. 2001) (conception simultaneous with reduction to practice where appellant

lacked reasonable certainty that yeast’s performance of certain intracellular

processes would result in the claimed antigen particles);

Dunn v.

Ragin,

50 USPQ 472, 475 (Bd. Pat. Inter. 1941) (a new variety of

asexually reproduced plant is conceived and reduced to practice when it is grown and

recognized as a new variety). Under these circumstances, conception is not complete

if subsequent experimentation reveals factual uncertainty which “so undermines the

specificity of the inventor’s idea that it is not yet a definite and permanent

reflection of the complete invention as it will be used in practice.”

Burroughs Wellcome Co. v. Barr Labs., Inc.,

40 F.3d 1223, 1229,

32 USPQ2d 1915, 1920 (Fed. Cir. 1994).

III

riety). Under these circumstances, conception is not complete

if subsequent experimentation reveals factual uncertainty which “so undermines the

specificity of the inventor’s idea that it is not yet a definite and permanent

reflection of the complete invention as it will be used in practice.”

Burroughs Wellcome Co. v. Barr Labs., Inc.,

40 F.3d 1223, 1229,

32 USPQ2d 1915, 1920 (Fed. Cir. 1994).

III.

A PREVIOUSLY ABANDONED APPLICATION WHICH WAS NOT COPENDING WITH A SUBSEQUENT

APPLICATION IS EVIDENCE ONLY OF CONCEPTION

An abandoned application with which no subsequent application was

copending serves to abandon benefit of the application’s filing as a constructive

reduction to practice and the abandoned application is evidence only of conception.

In re Costello,

717 F.2d 1346, 1350, 219 USPQ 389, 392 (Fed.

Cir. 1983).