## Facts

- Competing patent applications triggered Patent Office Interference No. 90,131 over a single-count invention.
- The count claimed a method for controlling sea lampreys by adding 3-trifluoromethyl-4-nitrophenol (TFM) to a body of water inhabited by lampreys.
- Applegate and Howell’s application was assigned to the U.S. Government (Department of the Interior, Fish and Wildlife Service) and was senior by filing date.
- Scherer, Frensch, and Stähler’s application was assigned to a German chemical company (through a U.S. representative) and was junior by filing date.
- The Fish and Wildlife Service conducted a chemical screening program to find lamprey-control agents that would not unduly harm desirable fish.
- Before the events central to the interference, the government program identified 3-bromo-4-nitrophenol as an effective lamprey larvicide, which was publicly reported.
- Shortly after that publication, the assignee’s U.S. representative wrote to Applegate referencing the report and the search for lamprey-control chemicals.
- In the interference, only Scherer took testimony; Applegate did not offer his own testimony but was called as a witness by Scherer.
- Applegate testified that, before receiving the representative’s letter, he did not know of the chemical in the interference count (TFM).
- The Board found Applegate’s work with TFM began only after that contact, supporting a finding that Applegate’s asserted earlier inventive activity was not independent.

## Issues

1. Whether Applegate proved an independent conception of the claimed method before Scherer’s effective date.
2. Whether Applegate’s claimed earlier date of invention was barred because the idea to use TFM was derived from Scherer’s side (including its assignee/representative).
3. Whether the Board properly relied on testimony and documents, including Applegate’s admissions while testifying as Scherer’s witness, to award priority to the junior party.

## Decision

- The Court of Customs and Patent Appeals affirmed the Board of Patent Interferences.
- The court upheld the award of priority to Scherer, the junior party.
- The court agreed that Applegate could not rely on a conception or reduction to practice earlier than Scherer’s filing date because Applegate’s work on TFM was derived rather than independently conceived.
- The court accepted the Board’s reliance on Applegate’s testimony and treated the Board’s fact findings as supported by substantial evidence.

## Legal Principles

- In an interference, conception requires a definite and permanent idea of the complete and operative invention.
- Priority based on an earlier date requires independent conception; if the idea is obtained from another, the result is derivation rather than invention.
- Derivation prevents a party—even a senior filer—from antedating the opposing party’s effective date using subsequent work tied to the derived idea.
- Admissions in testimony regarding prior knowledge of the claimed subject matter can be decisive evidence supporting a finding of derivation and a priority award.

## Conclusion

The court affirmed that Applegate, though first to file, could not establish priority because the record supported the Board’s finding that Applegate first learned of TFM through the opposing side’s representative, making Applegate’s asserted earlier inventive acts derived and legally ineffective to antedate Scherer.


Applegate v. Scherer, 332 F.2d 571 (C.C.P.A. 1964)