2138.03 “By Another Who Has Not Abandoned, Suppressed, or Concealed It”
This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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The result of applying the suppression and concealment doctrine is that the inventor who did not conceal (but was the de facto last inventor) is treated legally as the first to invent, while the de facto first inventor who suppressed or concealed is treated as a later inventor.
- The de facto first inventor, by his suppression and concealment, lost the right to rely on his actual date of invention not only for priority purposes, but also for purposes of avoiding the invention of the counts as prior art.
“The courts have consistently held that an invention, though completed, is deemed abandoned, suppressed, or concealed if, within a reasonable time after completion, no steps are taken to make the invention publicly known. Thus failure to file a patent application; to describe the invention in a publicly disseminated document; or to use the invention publicly, have been held to constitute abandonment, suppression, or concealment.”
In Correge, an invention was actually reduced to practice, 7 months later there was a public disclosure of the invention, and 8 months thereafter a patent application was filed. The court held filing a patent application within 1 year of a public disclosure is not an unreasonable delay, therefore reasonable diligence must only be shown between the date of the actual reduction to practice and the public disclosure to avoid the inference of abandonment.
I. DURING AN INTERFERENCE PROCEEDING, AN INFERENCE OF SUPPRESSION OR CONCEALMENT MAY ARISE FROM DELAY IN FILING PATENT APPLICATION
Once an invention is actually reduced to practice an inventor need not rush to file a patent application.
- The length of time taken to file a patent application after an actual reduction to practice is generally of no consequence except in an interference proceeding.
Suppression or concealment may be deliberate or may arise due to an inference from a “too long” delay in filing a patent application.
- Mere delay, without more, is not sufficient to establish suppression or concealment.
- Where a junior party in an interference relies upon an actual reduction to practice to demonstrate first inventorship, and where the hiatus in time between the date for the junior party's asserted reduction to practice and the filing of its application is unreasonably long, the hiatus may give rise to an inference that the junior party in fact suppressed or concealed the invention and the junior party will not be allowed to rely upon the earlier actual reduction to practice.
II. SUPPRESSION OR CONCEALMENT NEED NOT BE ATTRIBUTED TO INVENTOR
Suppression or concealment need not be attributed to the inventor.
"Four year delay from the time an inventor … completes his work … and the time his assignee-employer files a patent application is, prima facie, unreasonably long in an interference with a party who filed first”
A patent attorney’s workload will not preclude a holding of an unreasonable delay—a total of 3 months was identified as possible of excuse in regard to the filing of an application.
III. INFERENCE OF SUPPRESSION OR CONCEALMENT IS REBUTTABLE
Even if there is an inference of suppression or concealment due to time(s) of inactivity, the senior party may still prevail if that party shows renewed activity on the invention just prior to the junior party’s entry into the field.
Notwithstanding a finding of suppression or concealment, a constructive reduction to practice such as renewed activity just prior to other party’s entry into field coupled with the diligent filing of an application would still cause the junior party to prevail.
The inference of suppression or concealment may be rebutted by showing activity directed to perfecting the invention, preparing the application, or preparing other compounds within the scope of the generic invention
IV. ABANDONMENT
A finding of suppression or concealment may not amount to a finding of abandonment wherein a right to a patent is lost.
