Gosteli invented an
antibiotic. He filed for a patent in the US, but it was rejected because
it had been anticipated by a patent
filed a guy named Menard seven months before.
Anticipation is covered in 35 U.S.C. §102(e).
Gosteli tried to get around
Menard by claiming that he had filed a patent on the antibiotic in
Luxembourg before Menard filed his patent.
Under the Paris
Convention (and 35 U.S.C.
§119) an inventor has twelve months
to file a US patent after they've filed a foreign patent on the same
invention. If they do that, then the US considers the patent filing date
to be the date they filed the foreign patent.
That's known as a foreign
priority date.
Note that Gosteli was
probably the first to invent, but that didn't matter in Luxemborg which
had a first to file system, so he couldn't beat Menard by filing a 35
U.S.C. §131 affidavit.
The USPTO denied the foreign
priority date. Gosteli appealed.
The USPTO found that the
disclosure in Gosteli's Luxembourg patent was not as complete as the
disclosure in his US patent.
In other words, the
description of the antibiotic in Gosteli's Luxembourg patent was not the
same as the description in his US patent, and the description in the
Luxembourg patent couldn't support the claims Gosteli was making in the
US patent.
Therefore, under 35
U.S.C. §112, the Luxembourg patent
and the US patent were not technically the same invention
and so §119 was inapplicable (so
he'd get the US filing date and Menard would anticipate him).
The Board of Patent Appeals
affirmed. Gosteli appealed.
The Appellate Court affirmed.
The Appellate Court found
that Gosteli didn't have to describe in the foreign patent exactly what
was claimed in the US patent, but the description in the foreign patent
must clearly allow persons of ordinary skill in the art to recognize that
Gosteli invented what was claimed in the US patent.
The reason why the US patent
differed from the Luxembourg patent was that after filing the Luxembourg
patent, Gosteli kept working on his antibiotics and had made advances,
which he understandably wanted to add to his US claims. Unfortunately,
this case says that only those claims that would be supported by the
original foreign patent will be given the foreign priority date in the US.
