Paulik v. Rizkalla

United States Court of Appeals, Federal Circuit
760 F.2d 1270 (1985)

ELI5:

Rule of Law:

An inventor who is first to reduce an invention to practice but who delays filing a patent application for an unreasonably long time may overcome the inference of suppression or concealment under 35 U.S.C. § 102(g) by showing renewed patent-related activity that began before the effective filing date of a subsequent inventor.

Facts:

In November 1970, Frank E. Paulik and Robert G. Schultz (Paulik) reduced to practice a catalytic process for producing alkylidene diesters.
On November 20, 1970, Paulik submitted a 'Preliminary Disclosure of Invention' to their employer, Monsanto Company.
Monsanto's patent department assigned the disclosure a low priority and, due to the demands of other projects, did not begin preparing a patent application for over four years.
In January or February of 1975, a patent solicitor at Monsanto began actively working on Paulik's patent application.
Nabil Rizkalla and Charles N. Winnick (Rizkalla) had an effective filing date for a patent application on the same invention of March 10, 1975.
Paulik's patent application was filed on June 30, 1975.

Procedural Posture:

An interference proceeding was commenced in the U.S. Patent and Trademark Office (PTO) between the patent applications of Paulik and Rizkalla.
The PTO's Board of Patent Interferences was the court of first instance for this dispute.
The Board determined that Paulik was the de facto first inventor, having reduced the invention to practice in 1970 and 1971.
The Board held that Paulik's subsequent four-year delay in filing his application constituted suppression or concealment under 35 U.S.C. § 102(g).
The Board refused to consider evidence of Paulik's renewed work on the patent application in early 1975, ruling it was irrelevant.
Consequently, the Board awarded priority of invention to Rizkalla.
Paulik, as appellant, appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit, with Rizkalla as appellee.

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Issue:

Does a first inventor's unreasonable delay between reduction to practice and filing a patent application, which creates a prima facie case of suppression or concealment under 35 U.S.C. § 102(g), permanently bar that inventor from relying on renewed patent-related activity that began before a second inventor's entry into the field?

Opinions:

Majority - Judge Newman

No, a first inventor's unreasonable delay does not permanently bar them from relying on renewed activity that predates a second inventor's entry into the field. While an unreasonable delay may bar the first inventor from relying on their early reduction to practice date, it does not create an absolute forfeiture of their right to a patent. The principles of 35 U.S.C. § 102(g) are equitable, designed to award the patent to the most deserving inventor. If a first inventor resumes work on the invention before a second inventor enters the field, they are not prejudiced by their earlier period of inactivity. This approach furthers the patent system's goal of encouraging innovation by not punishing inventors who set aside and later resume work on valuable projects.

Dissenting - Judge Friedman

Yes, the unreasonable delay permanently bars the first inventor from establishing priority. The plain language of 35 U.S.C. § 102(g) states that an inventor who has suppressed or concealed their invention is not entitled to a patent. A four-year delay is prima facie suppression as a matter of law, consistent with precedent like Peeler v. Miller. Congress has already made the equitable judgment that in such cases, priority lies with the subsequent, non-suppressing inventor. The majority's creation of a 'resumed activity' exception is not supported by the statute and will unnecessarily complicate interference proceedings.

Concurring - Judge Rich

No, the delay does not create a permanent bar. As one of the drafters of 35 U.S.C. § 102(g), I can confirm it was intended to codify existing case law, which applied equitable principles on a case-by-case basis, not to create a rigid forfeiture rule. The term 'suppressed, or concealed' must be interpreted in light of these precedents, which focused on whether a second inventor entered the field during the first inventor's period of inactivity. Here, Paulik resumed activity before Rizkalla's earliest date, making him more deserving. The proper sanction for Paulik's delay is to deprive him of his 1970 reduction-to-practice date, not to bar him from relying on his later, resumed activity.

Analysis:

This decision significantly clarifies the doctrine of suppression and concealment under 35 U.S.C. § 102(g), establishing that it is not an absolute, irrebuttable bar. The court created a new equitable pathway for a de facto first inventor to maintain priority despite a long period of inactivity. By allowing the inventor to rely on the date of 'renewed activity,' the ruling prevents a complete forfeiture of rights and encourages work on shelved projects. However, it also introduces a new factual complexity into interference proceedings, requiring a determination of when legally sufficient 'renewed activity' began relative to the second inventor's priority date.

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