## Facts

- Two groups filed U.S. patent applications on June 5, 1995, claiming the same vascular stent invention: Cragg/Dake (assigned to Boston Scientific Scimed, Inc.) and Fogarty/Ryan/Freislinger (assigned to Medtronic Vascular, Inc.).
- A third party, Eric Martin, owned an earlier U.S. patent based on an August 19, 1994 filing that covered related subject matter.
- A French company, MinTec SARL, filed a European patent application on February 9, 1994, disclosing the same subject matter later claimed in the Cragg U.S. application.
- When MinTec filed the European application, Cragg had no assignment to MinTec and no legal relationship with MinTec; Cragg assigned rights to MinTec only after the European filing.
- The Board of Patent Appeals and Interferences declared an interference in April 1998 among the Cragg application, the Fogarty application, and the Martin patent.
- The Board initially treated Cragg as entitled to MinTec’s February 9, 1994 European filing date, but on reconsideration issued a final decision denying that benefit because MinTec was not Cragg’s successor in title at the time of the European filing.
- Scimed brought a civil action under 35 U.S.C. § 146; the district court granted summary judgment for Medtronic, upholding the Board, and Scimed appealed.

## Issues

1. Whether an applicant may claim foreign priority under 35 U.S.C. § 119 based on a foreign application filed by a third party that was not, at the time of filing, the inventor’s assignee, legal representative, successor in title, or otherwise authorized to file on the inventor’s behalf.
2. Whether a post-filing assignment to the foreign filer can retroactively satisfy § 119’s requirement for entitlement to the foreign filing date.

## Decision

- The Federal Circuit affirmed the district court’s summary judgment for Medtronic and the Board’s final interference decision.
- The court held Scimed (through Cragg) was not entitled to MinTec’s February 9, 1994 European filing date because MinTec was not Cragg’s successor in title and was not acting on Cragg’s behalf at the time of that filing.
- The court rejected any relation-back theory based on the later assignment from Cragg to MinTec.

## Legal Principles

- Under 35 U.S.C. § 119, foreign priority is available only when the foreign application is filed by the inventor (or the same applicant) or by the inventor’s legal representative, assignee, or other successor in title as of the foreign filing date.
- A later assignment does not retroactively convert a third party’s earlier foreign filing into an application filed by, or for, the inventor for § 119 purposes.
- A third party cannot be treated as filing “on behalf of” an inventor absent a legal relationship authorizing that filing at the time the foreign application is filed.

## Conclusion

The Federal Circuit held that foreign priority under § 119 depends on the filer’s legal status at the time of the foreign filing; because MinTec lacked any qualifying relationship with Cragg on the European filing date, Scimed could not claim that date to establish priority in the interference.


Bos. Sci. Scimed, Inc. v. Medtronic Vascular, Inc., 497 F.3d 1293 (Fed. Cir. 2007)