Federal Circuit Clarifies Conception Standard for Inventorship, Vacates-in-part PTAB Judgment

In Regents of the Univ. of Cal. v. Broad Inst., Inc., No. 2022-1594 (Fed. Cir. May 12, 2025), the Federal Circuit vacated in part a determination by the Patent Trial and Appeal Board in a patent interference proceeding, ruling that the Board incorrectly applied the legal standard for conception.

Both The Regents of the University of California (“Regents”), and The Broad Institute (“Broad”) asserted priority of invention for patent claims relating to CRISPR-Cas9 Systems that contain a “single guide” RNA that edits or cleaves DNA in eukaryotic cells.

The Board awarded Broad priority based on an October 5, 2012, publication after rejecting Regents’ earliest asserted conception date of March 1, 2012, and reduction to practice date of August 9, 2012, based on Regents’ statements of uncertainty about whether its experiments would translate to human cells.

On appeal, the Federal Circuit vacated the Board’s decision regarding conception. It concluded that the Board conflated conception and reduction to practice by improperly focusing on Regents’ statements of uncertainty and requiring Regents’ scientists to know their invention would work to prove conception. As the Federal Circuit clarified, knowledge that an invention will work is relevant not to conception, but to reduction to practice. The Board also erred by focusing on Regents’ expressions of doubt regarding their experimental success. Instead, the conception analysis must turn on whether Regents’ scientists had formed the idea in a final form such that only the application of ordinary skill in the art was needed to reduce it to practice. The Court separately affirmed the Board’s analysis regarding written description support and denied Broad’s cross-appeal on claim construction as moot.