2138.04 “Conception”
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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Conception has been defined as “the complete performance of the mental part of the inventive act” and it is “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice….”
- “[C]onception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or the exercise of inventive skill.”
- Conception has also been defined as a disclosure of an invention which enables one skilled in the art to reduce the invention to a practical form without “exercise of the inventive faculty.”
I. CONCEPTION MUST BE DONE IN THE MIND OF THE INVENTOR
The inventor must form a definite and permanent idea of the complete and operable invention to establish conception.
Testimony by a noninventor as to the meaning of a variable of a generic compound described in an inventor’s notebook was insufficient as a matter of law to establish the meaning of the variable because the testimony was not probative of what the inventors conceived.
II. CONCEPTION REQUIRES CONTEMPORANEOUS RECOGNITION AND APPRECIATION OF THE INVENTION
There must be a contemporaneous recognition and appreciation of the invention for there to be conception.
- Furthermore, the inventor does not need to appreciate the patentability of the invention.
The first to conceive of a species is not necessarily the first to conceive of the generic invention.
- Further, while conception of a species within a genus may constitute conception of the genus, conception of one species and the genus may not constitute conception of another species in the genus.
On rare occasions conception and reduction to practice occur simultaneously.
- Under these circumstances, conception is not complete if subsequent experimentation reveals factual uncertainty which “so undermines the specificity of the inventor’s idea that it is not yet a definite and permanent reflection of the complete invention as it will be used in practice.”
III. A PREVIOUSLY ABANDONED APPLICATION WHICH WAS NOT COPENDING WITH A SUBSEQUENT APPLICATION IS EVIDENCE ONLY OF CONCEPTION
An abandoned application with which no subsequent application was copending serves to abandon benefit of the application’s filing as a constructive reduction to practice and the abandoned application is evidence only of conception.
