In Schendel v. Curtis, Schendel and Curtis both filed patent applications directed to a fusion protein.  However, Curtis filed the patent application (3) months after Schendel.  According to the filing dates of the two patent applications, Schendel was the first to file and Curtis had the burden to show a date of invention prior to the filing date of the Schendel’s patent application.  Curtis attempted to challenge the filing date of Schendel’s patent application by showing that Curtis made a working model of the invention prior to the filing date of the earlier application.  To this end, Curtis provided various documents which ultimately failed to provide sufficient evidence to show that Curtis made a working model of the invention prior to the filing date of the earlier filed patent application.  Hence, Schendel was awarded the patent.  Schendel v. Curtis, 38 U.S.P.Q.2d 1743 (Fed. Cir. 1996).

The earlier filing date of Schendel’s patent application shifted the burden of proving the case to Curtis which is a significant advantage to Schendel.  Schendel relied solely on the filing date of his patent application.  Curtis may have been the first to invent but, without sufficient evidence, was unable to successfully overcome the burden of proving “first to invent.”  Accordingly, the earlier filing date provided Schendel the needed advantage to win his case.

The United States by following a first to invent rule is unusual compared to most other foreign countries that follows the first to file rule.  Nonetheless, there are significant benefits to filing first in the United States as illustrated above.  Also, the United States provides a one year grace period for inventors to commercialize, send out brochures to potential clients and offer their invention for sale to the public before a patent application must be filed.  Many foreign countries require that a patent application be filed first before triggering any of these events to preserve the right to seek patent protection.  Nonetheless, as illustrated above, the first inventor to file a patent application has significant advantages in determining which of two inventors should be entitled to a patent on the invention.

To the extent possible, it is often beneficial to file patent applications early and often to gain the advantage in being the first to file.  There may be budget constraints, different products may at different product development stages, etc. that would prevent or delay filing of the patent application.  Nonetheless, seek the advice of a competent patent attorney on how best to cost effectively protect your inventions.

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In the following case, Henkel Corp. (“Henkel”) invoked an interference with the Patent Office based on a patent issued to Proctor & Gamble Company (“PG”).  The interference is a proceeding before the Patent Office wherein Henkel asserts that they invented the invention before PG, and thus, Henkel should be awarded a patent, not PG.  Eventually, PG won the interference based on one of PG’s published reports which showed that the PG inventor invented the invention prior to Henkel.

The Court’s decision turned on written documents showing that the inventor appreciated the invention before Henkel.  In particular, the invention at issue related to dishwasher tablets that have regions that dissolve at different rates.  The written documentation submitted by PG showed that PG appreciated the importance of the “different dissolution rates” before Henkel.  Hence, the Court held that PG was the first-to-invent the invention and should be rewarded with the patent, not Henkel.  Henkel Corp. v. The Proctor & Gamble Comp., 2008-1447 (Fed. Cir. 2009).

The Inventor’s Notebook is typically where the inventor writes down the progress of the invention’s development.  The Notebook operates in a similar manner as PG’s published report for the purpose of establishing an earlier date of invention.  Based on the Court’s decision discussed above, the Inventor’s Notebook should include reasons that the invention is unique.  For example, in the chemical area, the Inventor’s Notebook should include the compounds that were used and the reasons that selected compounds are unique, or how they operate.  In the mechanical area, the Inventor’s Notebook should include a sketch of the invention and the reasons for the arrangement and orientation of the important parts.  The purpose is to show that the inventors appreciated the invention at the earliest date possible.

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