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Evidence of Utility of Invention Needed to Establish Priority for Patent
Description L'Oreal filed a patent application before Estee Lauder for the same substance. Lauder's attempt to overcome L'Oreal's earlier filing fails because it could not show that it had tested the invention to establish its utility before the L'Oreal filing.
Topic Intellectual Property
Key Words Patents, Priority
C A S E   S U M M A R Y
Facts L'Oreal applied for a patent on a sun protection factor product (SPF) in Luxembourg on 4/13/87. It applied in the U.S. on 4/12/88. Estee Lauder applied for a patent in the U.S. on the same SPF on 12/21/87. The Luxembourg application gave L'Oreal seniority, which Lauder could overcome only if it could prove priority by preponderant evidence. The Patent Office granted the patent to L'Oreal; the district court awarded it to Lauder; L'Oreal appealed.
Decision L'Oreal gets the patent. "The only issue before the [Patent] board was priority of reduction to practice." To prove reduction to practice, an inventor must establish that he "actually prepared the composition and knew it would work." When testing is required to establish utility, there must "be some recognition of successful testing prior to the critical date for an invention to be reduced to practice." Since Lauder could not prove that its tests were completed before the date of the Luxembourg application by L'Oreal, it cannot overcome the priority L'Oreal established by its filing.
Citation Estee Lauder Inc. v. L'Oreal, S.A., ---F.3d--- (1997 WL 693028, Fed. Cir.)
129 F.3d 588 (Fed. Cir., 1997)

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