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Foreign Priority Requires Nexus Between Inventor and Foreign Applicant at the Time the Foreign Application Was Filed

August 08, 2007
Stach, Jason E.

Decision icon Decision

Last Month at the Federal Circuit - September 2007

Judges: Mayer (author), Bryson, Prost

[Appealed from: D.D.C., Judge Leon]

In Boston Scientific Scimed, Inc. v. Medtronic Vascular, Inc., No. 06-1434 (Fed. Cir. Aug. 8, 2007), the Federal Circuit affirmed a district court’s grant of SJ affirming a Board’s final decision relating to priority in an interference. In so doing, the Federal Circuit held that “a foreign application may only form the basis for priority under [35 U.S.C.] section 119(a) if that 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.” Slip op. at 6.

The issue arose in the context of an interference between three parties, Boston Scientific Scimed, Inc. (“Scimed”), Medtronic Vascular, Inc. (“Medtronic”), and an individual named Eric Martin. Both Scimed and Medtronic had earlier priority dates than Mr. Martin, but they disputed which party was actually the senior party to the interference. Medtronic’s application claimed priority to an earlier U.S. filing dated June 8, 1994. Scimed’s application claimed priority to two European patent applications that were filed by MinTec SARL (“MinTec”), an unrelated French company, with the earlier of the two applications bearing a date of February 9, 1994.

Medtronic attacked Scimed’s priority claim on the basis that Scimed’s inventors had not yet assigned their rights to MinTec when the European applications were filed, so they could not rely on those documents for priority. The Board agreed with Medtronic, refusing to award priority to Scimed, and declaring Medtronic the senior party. Scimed appealed the decision to the U.S. District Court for the District of Columbia, but the district court affirmed the Board’s decision. Scimed appealed to the Federal Circuit.

To support its case on appeal, Scimed relied primarily on Vogel v. Jones, 486 F.2d 1068 (C.C.P.A. 1973). According to Scimed, that case permitted priority claims to foreign applications that were not initially assigned to the U.S. patent applicant. Thus, Scimed argued, the identity of the applicant of the foreign application was irrelevant as long the invention described was the same one actually made by the U.S. applicant.

The Federal Circuit found Scimed’s reading of Vogel to be overly broad, citing the following two narrower passages of the case: (i) “an applicant for a United States patent can rely for priority on the ‘first filed’ application by an assignee on his behalf,” Vogel, 486 F.2d at 1072; and (ii) “the existence of an application made by [the inventor’s] assignee in a foreign country on behalf of one other than the United States inventor is irrelevant to his right of priority based on applications made on his behalf.” Id. (alteration in original).

Relying primarily on the “on his behalf” language of Vogel, the Federal Circuit clarified that “while the foreign application must obviously be for the same invention and may be filed by someone other than the inventor, section 119(a) also requires that a nexus exist between the inventor and the foreign applicant at the time the foreign application was filed.” Slip op. at 6.

The Federal Circuit also rejected Scimed’s contention that the district court erred by precluding it from presenting evidence relating to theories of constructive trust and equitable assignment. Scimed had attempted to introduce these legal theories to the district court in an attempt to prove that the European applications were assigned to MinTec. However, the district court precluded Scimed from presenting these theories, which had not been presented to the Board. The Federal Circuit affirmed, holding that although a “party may present new evidence to the trial court when appealing a board decision in an interference proceeding,” a party may not “advance new legal theories at the trial court level, even if the overarching legal issue was presented below.” Id.