Fed. Cir. confirms that conception of a DNA sequence occurs when one isolates it and appreciates that it has the desired properties

Fed Cir affirms award of priority in an interference to the junior party where it proved an earlier conception date. The interference count was directed to an isolated DNA sequence.

Sanofi-Aventis v. Pfizer, Inc., __ F.3d __ (Fed. Cir. Nov. 5, 2013) (NEWMAN, Lourie, Davis (sitting by designation)) (BPAI) (2 of 5 stars)

The PTO found that Pfizer had established the earlier conception date because it was the first to isolate the claimed sequence and appreciate why it was important. On appeal, Sanofi argued that this was legal error because conception could not occur until Pfizer knew the exact order of nucleotides in the sequence. This issue would have been dispositive because when Pfizer originally determined the sequence, it had erroneously identified 8 of the 1,143 nucleotides and did not correct the error until after Sanofi's priority date. The Fed Cir rejected Sanofi's argument, finding that "the Board correctly based conception and reduction to practice on the possession of isolated the DNA segment that was shown to have the desired properties. When the subject matter is a DNA segment, conception requires possession and appreciation of the DNA segment that is claimed." Slip op. at 9. Prior decisions in Amgen, Fiers, and Burroughs Welcome did not require the Court to adopt a per se rule that knowledge of the exact sequence was a prerequisite to conception. Id. at 6-8.