The U.S. Court of Appeals for the Federal Circuit held that for a U.S. patent application to be entitled to claim priority based on a previously filed foreign application, the entity filing the former application must have been acting on behalf of the U. S. inventor at the time of the foreign filing. Boston Scientific/Scimed v. Medtronic Vascular, Case No. 06-1434 (Fed. Cir., Aug. 8, 2007) (Mayer, J.). The appeal stemmed from a district court review filed by Scimed (under 35 U.S.C. § 146) of a decision rendered by the U.S. Patent and Trademark Office (USPTO) on a Board of Patent Appeals and Interferences (Board) in an interference proceeding, where the Board denied Scimed the benefit of its claim to foreign priority under 35 U.S. C. § 119.
The technology at issue related to bifurcated stent-grafts used for treating abdominal aortic aneurysms or AAAs. In the underlying interference, after Scimed changed the inventorship of the application in interference to eliminate all of the inventors named in its (French) priority application, the USPTO granted priority of invention to Medtronic (based on its U.S. filing date), denying Scimed the priority benefit under § 119 of its foreign-filed application. The district court, on cross-motions for summary judgment, affirmed the Board, ruling that § 119 requires the foreign application to have been filed by the inventor who files the later U.S. application or on that inventor's behalf. Scimed appealed.
The Federal Circuit affirmed, relying principally on Vogel v. Jones, a 1973 case by its predecessor court, the Court of Customs and Patent Appeals. The Federal Circuit stated that the right of priority is "personal" to the U.S. applicants and, as such, a U.S. applicant can only obtain the priority benefit of a foreign application that was filed by the U.S. applicant or "on his behalf." Scimed had argued that such a nexus does not have a temporal requirement and as long as at some point prior to the issuance of the U.S. patent the foreign filer establishes a relationship with the U.S. inventor, the nexus requirement of § 119 is met. The Court disagreed, holding that under § 119 a foreign application may only form the basis for priority "if the application was filed by either the U.S. applicant himself, or by someone acting on his behalf at the time the foreign application was filed." (Emphasis in original.)
Practice Note: Although the Board in the underlying decision had stated this temporal nexus requirement under § 119 has been a long-standing practice under the law, the Federal Circuit’s explicit pronouncement of the rule highlights the need for vigilant scrutiny when companies with research and development facilities in certain foreign countries file patent applications here and abroad, or when changing inventive entities.
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