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Applegate v. Scherer

United States Court of Customs and Patent Appeals
332 F.2d 571 (1964)
ELI5:

Rule of Law:

The person who conceives of and communicates a complete invention to another is the inventor, and the subsequent reduction to practice by the other person inures to the benefit of the communicator. Conception of an invention is complete when the idea is disclosed in sufficient detail to enable a person of ordinary skill in the art to practice it, and does not require knowledge that the invention will work.


Facts:

  • For decades, the sea lamprey had been a destructive invasive species in the Great Lakes.
  • The Fish and Wildlife Service, under the direction of Applegate and Howell, was engaged in a large-scale screening program to find a chemical to control the lampreys.
  • The program had identified 3-bromo-4-nitrophenol as an effective chemical, but it was very expensive. This finding was published in 'Chemical Week' magazine.
  • On December 29, 1955, a representative for Scherer's German company, Farbwerke Hoechst, wrote a letter to Applegate after seeing the publication.
  • The letter suggested that a similar chemical, 3-trifluoromethyl-4-nitrophenol, might be even more effective and easier to produce.
  • The letter offered to provide free samples of this specific chemical for the express purpose of testing it against lampreys.
  • On January 19, 1956, Applegate replied, agreeing to test the suggested chemical despite budget limitations, and requested a small sample.
  • In February 1956, Scherer's company delivered the sample, Applegate's team tested it, and found it to be effective at killing lamprey larvae.

Procedural Posture:

  • Applegate and Howell filed a patent application for the lamprey control method on April 11, 1957.
  • Scherer, Frensch and Stahler filed their patent application for the same method on February 10, 1958.
  • The U.S. Patent Office declared an interference proceeding (No. 90,131) to determine which party was the first to invent the method.
  • The Patent Office Board of Patent Interferences, the administrative trial court, found in favor of Scherer, the junior party, on the grounds that Applegate had derived the invention from them.
  • Applegate and Howell, the senior party, appealed the Board's decision to the Court of Customs and Patent Appeals.

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Issue:

Did Applegate derive the invention of using 3-trifluoromethyl-4-nitrophenol to control sea lampreys from Scherer, making Scherer the true inventor?


Opinions:

Majority - Rich

Yes. Applegate derived the invention from Scherer because Scherer's letter communicated the complete conception of the invention. The court reasoned that this is a case of originality or derivation, not a priority contest between independent inventors. The letter from Scherer's representative disclosed the complete invention: the specific chemical (3-trifluoromethyl-4-nitrophenol) and its intended use (to control sea lampreys in water). Applegate merely acted on this suggestion and performed the tests. The court rejected Applegate's argument that conception requires knowledge that the invention will work (i.e., a reduction to practice), stating that such a rule would unfairly reward the person who merely exercises ordinary skill to test an idea at the expense of the true innovator. Therefore, the successful testing by Applegate inured to the benefit of Scherer, who had the original complete thought.



Analysis:

This case clarifies the critical distinction between inventorship in a derivation context versus a priority contest between independent inventors. It establishes that conception does not require simultaneous reduction to practice or knowledge of the invention's ultimate success. An inventor can fully conceive of an invention and communicate it to another for testing, and the tester's successful work will legally benefit the original conceiver. This precedent protects innovators who collaborate or seek assistance in testing their ideas, ensuring that the person who performs the ministerial act of testing cannot usurp inventorship from the person who had the creative and complete thought.

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