Reversing a decision by the United States Patent and Trademark Office Board of Patent Appeals and Interferences (Board) in a patent interference, the U.S. Court of Appeals for the Federal Circuit held that an appellant was entitled to the benefit of a foreign priority document that was compliant with 35 U.S.C. §112 for the disclosure of a species of the count. Frazer v. Schlegel, Case Nos. 06-1154, -0023 (Fed. Cir., Aug. 20, 2007) (Newman, J.).
Ian Frazer was appealing a decision by the Board denying the benefit of priority from an Australian patent application, ruling that the priority document failed to show conception of an embodiment of the interference count. The subject matter of the interference proceeding related to methods of making papilloma-virus-like particles. The earlier-filed Australian patent application disclosed a method of producing a vaccine that included encoding both proteins L1 and L2. The later filed U.S. application disclosed a method of producing a vaccine that included encoding L1 or combination of L1 and L2 proteins. The interference count recited a method which required encoding a L1 protein.
The Board held that because Frazer disclosed in the Australian patent application that both the L1 and L2 genes had to be expressed together, while in the later U.S. application Frazer disclosed that the expression of only the L1 protein was necessary, that the Australian application was not enabling for the subject matter of the count. Frazer appealed this decision.
On appeal, the Federal Circuit agreed with Frazer that the Australian application contained complete details of the method that is the subject of the interference count, including a depiction of the papilloma-virus-like particle of the count with full disclosure of how to produce it. The Court stated that "when reliance is on a patent document already filed, the question is whether the document discloses the invention of the count by meeting the written description and enablement requirements of 35 U.S.C. 112, first paragraph, for a filed application serves as a constructive reduction to practice of its content." The Court concluded that Frazer’s later discovery that either the L1 protein or both the L1 and L2 proteins may be used, did not "negate or contradict his disclosure and constructive reduction to practice" of the method of the count.
Practice Note: In an interference count, applications from which the benefit of priority is sought and which comply with the written description and enablement requirements of 35 U.S.C. §112 ¶ 1, serve as constructive reduction of practice.
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