Wednesday, October 13, 2010

Conception of an Invention


  • The test for conception is whether the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention.
  • [Reproduction of an] invention previously conceived and reduced to practice by [someone else] cannot be conception because, if it were, the result would be that one who simply followed another inventor’s instructions to reproduce that person’s prior conceived invention would, by so doing, also become an “inventor.” Although the district court declined to read the “originality” requirement of 35 U.S.C. § 102(f) into § 102(g), originality is, nevertheless, inherent to the notion of conception.
  • The definition and test of conception employed in Burroughs Wellcome [Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994)], which speaks to the formation of an idea in the mind of the inventor, necessitates that the conception of an invention be an original idea of the inventor.