We learn at an early age that it’s wrong to copy another’s work. But, when a patent is involved, the line between conception and copying can be blurred by various arrangements between the parties involved. For example, the defendant in Solvay S.A. v. Honeywell Int’l, Inc., a patent infringement lawsuit heard by the U.S. Court of Appeals for the Federal Circuit, argued that its copying made it a “prior inventor” and, thus, invalidated the patent claims at issue.

Moment of Conception

Under a contract with Honeywell, a Russian agency developed a process for producing a non–ozone-depleting refrigerant gas. In early 1995, Honeywell used information from the agency to reproduce the process. Later that year, Solvay filed a patent application on the same process. Solvay eventually sued Honeywell for patent infringement. The district court held that Honeywell qualified as a “prior inventor” of the patented invention, thereby invalidating Solvay’s related patent claims. On appeal, Solvay argued that Honeywell wasn’t an “inventor” at all because it hadn’t “conceived” the invention itself.

Formulation in the Mind

Under Section 102(g) of the Patent Act, an applicant generally isn’t entitled to a patent on an invention that was previously made in the United States by another inventor. In determining the priority of invention, courts consider, among other things, the respective dates of the different parties’ conception of the idea. Conception has been defined as “the formulation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.”

The Federal Circuit found that Honeywell hadn’t had or formulated a definite and permanent idea of its own that could actually be applied in practice. Honeywell had merely reproduced an invention already conceived and developed by the Russian agency.

The court explained that originality is inherent to the notion of conception — the definition of conception necessitates that the conception of an invention be an original idea of the inventor. It was undisputed that Honeywell hadn’t originated the invention but only reproduced it in the United States by following the Russian agency’s instructions. Thus, Honeywell hadn’t conceived the invention and couldn’t be a prior inventor under Sec. 102(g).

Difficult to Conceive

The Federal Circuit acknowledged that its holding might ignore the realities of a globalized world, where companies often outsource research. But it reasoned that the question before the court was only whether Honeywell qualified as “another inventor.” Because the company had simply derived the process from others, it didn’t qualify.

About the patent law firm:

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. 

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