On July 7, 2010, the Federal Circuit addressed the “first to invent” doctrine in a case named In re Peter Joseph Giacomini, No. 2009-1400 (Fed. Cir. July 7, 2010), upholding the U.S. Patent and Trademark Office’s (USPTO’s) Board of Patent Appeals and Interferences’ (the PTO Board’s) rejection of the Giacomini application as anticipated by U.S. Patent No. 7,039,683 (the Tran patent) under section 102(e). In a case of statutory construction of section 102(e), the Federal Circuit confirmed the USPTO’s practice of using the provisional filing date as the effective filing date of a U.S. patent or patent publication claiming priority to that provisional application.

The U.S. patent system is based on the “first to invent” doctrine, which awards patents to the first party to “reduce to practice” an invention. Most other countries use the “first to file” system, which awards patents to the party who files the application first. In 1995, the USPTO established the provisional application option to give inventors a low-cost option to secure a filing date for certain types of inventions. Provisional applications must be followed by complete utility patent application within 12 months of filing the provisional application.

The Tran group filed its provisional application on September 25, 2000. The Giacomini team, consisting of Peter Joseph Giacomini and three other inventors, filed its utility application for a technique for storing select electronic data in a cache or memory system just over two months later, on November 29, 2000. The Tran group followed a month later with a December 29, 2000, utility patent application.

The Federal Circuit’s unanimous ruling in In re Giacomini upheld the April 2009 PTO Board ruling, where the PTO Board rejected certain claims of the Giacomini team. The PTO Board ruled that the Tran patent had a patent-defeating effect as of the filing date of the Tran provisional application.

In this case, the Federal Circuit held that “[t]he Tran provisional [application] evinces that Tran, and not Giacomini, was the first to invent the claimed subject matter,” wrote Chief Judge Randall Rader. Judge Rader wrote, “Allowing Giacomini’s application would create an anomalous result where someone who was not the first to invent in the United States receives a patent.”  

Judge Rader also noted that Giacomini waived his right to argue that that the Tran provisional application did not include the necessary written description of the claimed subject as required by the Section 112 of the U.S. Patent Law, because he never raised the argument to the PTO Board.

A copy of the opinion can be found at http://www.cafc.uscourts.gov/images/stories/opinions-orders/09- 1400.pdf.