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Dawson v. Dawson

Summarized by: 

Date Filed: 03-25-2013
Case #: Nos: 2012 - 1214, 1215, 1216, 1217
Bryson, Reyna, Wallach
Full Text Opinion: http://www.finnegan.com/files/Publication/96860b90-20ab-4edd-9020-53f41acdb698/Presentation/PublicationAttachment/924001d8-16e7-4247-95f3-594814cb3c0a/12-1214%2003-25-13.pdf

Patents: PATENT; CONCEPTION: Inventor must have formed a definite and permanent idea of the complete and operative invention as it is to be applied in practice.

Opinion (Bryson): Drs. Dawson and Bowman were issued two patents under joint inventorship (the 113 and the 443 patent) for an ointment that topically treats infections of the eye. Dawson and Bowman then assigned their rights to InSite Vision Inc. (“InSite”). Sometime later, the USPTO’s Board of Patent Appeals and Interferences found two patent interferences between the University of California, San Francisco (“UCSF”) and InSite after UCSF filed their own patent application naming Dr. Dawson as the sole inventor of the same eye ointment. Both interferences named UCSF as the junior party and Insite as the senior, which meant that UCSF had the burden of proving that Dawson alone had conceived of the 113 and 443 patents. The board ruled against UCSF, noting they failed to overcome evidence in the record indicating Dawson had not fully appreciated how to implement his idea without the additional help from Bowman. UCSF appealed. Conception is defined as “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.” UCSF presented no testimony from Dawson, and relied only on contemporaneous medical reports that disclosed the idea for the ointment as proof of conception. However, the reports used words such as “potential use,” and “continued work,” in describing his idea and lacked the requisite definiteness and completeness. UCSF also argued that conception did not require Dawson to know his invention would work, but required only that it would be operative. The Court rebutted that argument with the fact that Dawson’s idea was not even operative. As such, the Court had no reason to overturn the Board’s holding that Dawson did not have sole conception. AFFIRMED.