Federal Circuit Denies Foreign Priority Benefit Due to Difference in Applicant

In Boston Scientific Scimed, Inc. v. Medtronic Vascular, Inc. and Eric Martin, 83 USPQ2d 1669 (Fed. Cir. 2007),Boston Scientific Scimed (“Scimed”) appeals a district court grant of summary judgment denying Scimed the priority benefit of an earlier-filed European patent application.  In particular, Scimed points to the European application for the subject matter at issue in an interference proceeding between Scimed, Medtronic Vascular, Inc. (“Medtronic”), and Eric C. Martin.  The issue on appeal is whether an applicant for U.S. patent is permitted “to benefit from the priority of a foreign application previously filed by an entity that was not acting on behalf of the U.S. applicant at the time of filing” of the foreign application.  The Federal Circuit holds that the applicant is not permitted to benefit from the priority of the foreign application where there is a difference in applicants.

Scimed, Medtronic, and Martin are each assignees of differentU.S.patent applications covering the same invention (“An apparatus for reinforcing a bifurcated lumen…”).  The Scimed patent application was filed at the U.S. Patent and Trademark Office on June 5, 1995 by inventors Andrew Cragg and Michael Drake (collectively “Cragg”).  The Medtronic patent application was also filed at the U.S. Patent and Trademark Office on June 5, 1995 by inventors Thomas Fogarty, Timothy Ryan, and Kirsten Freislinger (collectively “Fogarty”).  Martin’s patent resulted from an application filed on August 19, 1994.  The Board of Patent Appeals and Interferences initially gave Cragg the benefit of the filing date (February 9, 1994) of a European patent application filed by MinTec SARL (“MinTec”), a French company.  At the time that the European application was filed, “no legal relationship existed between MinTec and Cragg, nor was MinTec acting on behalf of Cragg.”  Meanwhile, Fogerty was accorded the benefit of a patent application filed on June 8, 1994.

After a motion was filed attacking the priority benefit granted to Cragg, the Board recanted its initial finding and ruled that because neither Cragg nor Drake had assigned their rights to MinTec until after MinTec had filed its European application, Cragg was not entitled to priority benefit under 35 U.S.C. 119.  The district court upheld the Board’s ruling, and the Federal Circuit reviewed the district court’s grant of summary judgment.  35 U.S.C. 119 reads:

“An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the data on which the application for patent for the same invention was first filed in such foreign country…”

The Federal Circuit was bound by a previous decision, Vogel v. Jones, 486 F.2d 1068 (CCPA 1973), which held that “119 gives rise to a right to priority that is personal to theUnited States applicant.”  Thus, according to the Federal Circuit, the applicant for aU.S. patent may benefit from the priority of a foreign application only if the foreign application was filed by applicant or on the applicant’s behalf. 

Scimed argued that Vogel does not require the foreign applicant to have been acting on behalf of theU.S.applicant at the time of filing of the foreign application.  That is, Scimed asserts that whenever the two inventions are the same, irrespective of the identity of the applicant(s) of the foreign application, theU.S.applicant is permitted to benefit from the earlier foreign filing date.

The Federal Circuit disagreed, holding that even the presence of a common assignee is not sufficient to establish a right of priority.  That is, an application made by an assignee in a foreign country on behalf of a first inventor is irrelevant to a second inventor’s right of priority for an application made by the same assignee in theU.S.on behalf of the second inventor.  The Federal Circuit therefore construes 119(a) to require “that a nexus exist between the inventor and the foreign application at the time the foreign application was filed.”  Accordingly, the Federal Circuit explicitly holds that a foreign application may only form the basis for priority of aU.S.application if the foreign application was filed by either theU.S.applicant or by someone acting on behalf of theU.S.applicant at the time the foreign application was filed.

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