Antedating in patent law
However, that approach necessarily ignores ex parte prosecution.
Prior studies have considered the use of inter partes interference proceedings.
Finally, a set of opinions from the Board of Patent Appeals and Interferences (BPAI) evidences the difficulty of proving a prior invention date.
During prosecution, most patent applicants are faced with non-102(b) prior art that could be antedated.
Select Brands provided technical documents to corroborate the earlier reduction to practice, all of which were dated after the first prototype was built.
Sensio argued that the Chinese prototype cannot inure to the benefit of the inventors since the inventors did not conceive the claimed design.
In response, Select Brands argued that because it had demonstrated actual reduction to practice before the April 21, 2010 date, conception was irrelevant.
The Board disagreed, stating that Select Brands must show that it conceived the design and communicated the design to the Chinese company in order for the prototypes made by the Chinese company to inure to Select Brand's benefit.
The common general knowledge "is the common knowledge in the field to which the invention relates." The information "must be generally known and generally regarded as a good basis for further action by the bulk of those engaged in that art before it becomes part of their common stock of knowledge relating to the art, and so part of the common general knowledge." Regarding the inventive step assessment, "[if] information is part of the common general knowledge then it forms part of the stock of knowledge which will inform and guide the skilled person's approach to the problem from the outset.
Petitioner Sensio filed for IPR of Select Brand's design patent directed to the ornamental design for a multiple crock buffet server.
Select Brands did not dispute that the three prior art references disclosed the claimed design, but argued that the design of the challenged patent was reduced to practice prior to April 21, 2010, thereby antedating the prior art.
The level of reliance on inventorship rights is important because it informs the longstanding policy debate over whether the US should conform to a first-to-file system as well as for patent applicant strategy.
The abstract reads as follows: Abstract: The US first-to-invent patent regime is unique in that it allows a patent applicant to assert priority rights back to the invention date.
The Board also considered the technical documents Select Brands provided, but found they did not "address the claimed ornamental design, much less who conceived the design." The Board also found troublesome the lack of evidence of communication from Select Brands to the Chinese company prior to when the prototype was delivered, noting that, in Woodland Trust, "the Federal Circuit found significant 'the absence of any physical record to support the oral evidence,' despite the 'ubiquitous paper trail of virtually all commercial activity' that normally exists 'in modern times.'" The Board concluded that Select Brand's challenged patent is anticipated by, and would have been obvious in view of, each of the three prior art references relied on by Sensio.