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   First-to-invent, but where
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   Author  Topic: First-to-invent, but where  (Read 522 times)
alconada
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First-to-invent, but where
« on: Oct 16th, 2007, 9:28am »
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I know that in the US the right to the patent belongs to the first-to-invent and that the first to invent is the person who has been the first in reducing the invention to practice.
 
I know also that the US patent law considers that an invention has been reduced into practice by filing a patent application for the invention, provided that the application shows posession of the invention.
 
The question is:
 
If you need to show that you are the first in having reduced the invention to practice by filing a patent aplication, does it need to be a US Patent application or is it also acceptable proof if you have filed an application in another WTO member State?
 
Thanks
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pentazole
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Re: First-to-invent, but where
« Reply #1 on: Oct 16th, 2007, 10:47am »
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The invention date is not necessarily the filing date.  37CFR 1.657 presumes that the inventions were made chronologically according to the effective filing dates.  If someone contends the invention date, then the burden of proof is on them.  If you have a foreign application, and a domestic application claiming priority to that foreign application, and if both applications are directed to the same subject matter (or at least the claims in question are supported by the disclosure of the foreign application), then your effective filing date would be that of the foreign application.
 
Filing dates are the most straightforward dates for establishing invention dates.
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Isaac
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Re: First-to-invent, but where
« Reply #2 on: Oct 16th, 2007, 3:01pm »
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on Oct 16th, 2007, 9:28am, alconada wrote:
I know that in the US the right to the patent belongs to the first-to-invent and that the first to invent is the person who has been the first in reducing the invention to practice.

 
Not quite correct.   The first to invent may be the first to conceive and the second to reduce to practice if the first to conceive is diligent over the relevant period.
 
Quote:

If you need to show that you are first in having reduced the invention to practice by filing a patent aplication, does it need to be a US Patent application or is it also acceptable proof if you have filed an application in another WTO member State?

 
Filing in a foreign country can be enough if the description in the foreign document is correct as long as you can claim the benefit of foreign priority for your claims.  The filing need not be in a WTO or NAFTA country.   Of course if you've properly claimed foreign priority, you'd just use the priority claim to overcome any 102(a) or 102(e) rejection.
 
I wouldn't call the foreign priority date an "effective filing date" as it cannot be used to overcome a 102(b) rejection.
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Isaac
alconada
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Re: First-to-invent, but where
« Reply #3 on: Oct 17th, 2007, 2:20am »
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Thanks a lot both "pentazole" and "Isaac" for your helpful answers.
 
"Isaac": What does it mean being dillgent over the relevant period and how is "conception date" and "diligency"  established or shown?
 
Thanks again
 
 
 
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Isaac
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Re: First-to-invent, but where
« Reply #4 on: Oct 17th, 2007, 7:58am »
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on Oct 17th, 2007, 2:20am, alconada wrote:
Thanks a lot both "pentazole" and "Isaac" for your helpful answers.
 
"Isaac": What does it mean being dillgent over the relevant period and how is "conception date" and "diligency"  established or shown?

 
A useful answer to your question would be quite long, so I'm going to refer you to the MPEP for the answer.  If you have any questions after reading, feel free to ask.
 
 
Conception
 
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2138_04.htm#sec t2138.04
 
 
Reduction to practice
 
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2138_05.htm
 
Diligence
 
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2138_06.htm
 
 
Evidence of conception and diligence...
http://www.uspto.gov/web/offices/pac/mpep/documents/0700_715_07.htm#sect 715.07
 
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Isaac
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