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« Broad Files Opening Brief and Cross-Appeal in CRISPR Interference | Main | United Therapeutics Corp. v. Liquidia Technologies, Inc. (Fed. Cir. 2023) »

July 25, 2023


Beautiful arguments from the scientists.

Not having reviewed the issues, what I'm wondering if they are arguing reduction to practice is not relevant? Does it mean my time machine patent application is ready for filing even though I have yet to make it work?

If it is beyond the powers of the PTAB to keep clear in their heads the distinction between conception and reduction to practice, even now after centuries of trying, perhaps it is all for the best that the AIA has swept away the vagaries and uncertainties and imprecision of First to Invent and replaced them with the (relative) certainties of the First Inventor to file system that has been used everywhere else, also for centuries. Are there not a large number of CRISPR/Cas9 patent priority contests down the line, to be decided under the AIA? Are they going to be as brain-taxing for the PTAB, I wonder.

Tony: actually, the argument is that difficulties in achieving reduction to practice can indicate incomplete conception. The legal basis for this comes from one case, and its application here was interesting to say the least. The parties' briefs set out the competing application of these legal principles and some of the factual bases and how the facts can be interpreted to reach the PTAB's conclusions.

Thanks for the comment.

Max: the PTAB's approach isn't as idiosyncratic as it appears. It is clear that if you reduce an invention to practice you have conceived it. The question can arise when you have earlier conception and then reduce to practice, and someone else conceives later but reduces to practice earlier. A confounding variable in this case is that there is undisputed evidence that the guide RNA that was used by Broad to reduce the invention to practice was disclosed by the CVC inventors to the Broad inventors and the date of the disclosure coincided with Broad's date of conception. Curious indeed.

Thanks for the comment

I found the arguments of the scientists to be persuasive. They reinforce the need for us lawyers and judges to remember that the perspective of those skilled in the art is (or should be) more important than our own.

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