dissenting.
I think that in awarding priority to Rizkalla, the Board properly applied section 102(g) and the pertinent precedents of this court. I therefore would affirm.
1. In section 102(g), Congress provided that a person is entitled to a patent unless “before the applicant’s invention ... the invention was made in this country by another who had not abandoned, suppressed, or concealed it.” Two decisions of the Court of Customs and Patent Appeals, Peeler v. Miller, 535 F.2d 647, 190 USPQ 117 (CCPA 1976), and Shindelar v. Holdeman, 628 F.2d 1337, 207 USPQ 112 (CCPA 1980), cert. denied, 451 U.S. 984, 101 S.Ct. 2317, 68 L.Ed.2d 841 (1981), held that an unreasonable delay between the reduction to practice and the filing of the patent application constituted “suppression” of the invention under section 102(g) that barred the earlier but suppressing inventor from obtaining priority in an interference proceeding over the later inventor.
The facts in Peeler are virtually identical to those here. There, as here, approximately four years elapsed between the reduction to practice and the filing of the patent application, and “much, if not all, of the delay occurred while the disclosure lay dormant in Monsanto’s patent department.” 535 F.2d at 653-54, 190 USPQ at 122. In reversing the decision of the Board of Patent Interferences that the delay did not constitute suppression under section 102(g) because “there was no evidence that Miller intended to suppress the invention or in fact did so,” 535 F.2d at 650, 190 USPQ at 119, the Court of Customs and Patent Appeals held that “proof of specific intent to suppress is not necessary where the time between actual reduction to practice and filing is unreasonable. This unreasonable delay may raise an inference of intent to suppress.” 535 F.2d at 653, 190 USPQ at 122 (emphasis in original). It also stated:
In our opinion, a four-year delay from the time an inventor is satisfied with his invention and completes his work on it and the time his assignee-employer files a patent application is, prima facie, unreasonably long in an interference with a party who filed first____ The record, however, contains nothing to show that the delay was other than fully within Monsanto’s control at all times.
535 F.2d at 654, 190 USPQ at 122-23.
The court further pointed out that “the unreasonable length of a delay may be ample circumstance in itself to find suppression.” 535 F.2d at 655, 190 USPQ at 123.
In Shindelar, the Court of Customs and Patent Appeals upheld a decision of the Board of Patent Interferences that a delay of two years and five months between the patent attorney’s receipt from the inventor of the information necessary to prepare the patent application and the filing of the application constituted suppression of the invention under 35 U.S.C. § 102(g). In holding that that delay was “unreasonably long,” the court concluded that “there is no reasonable basis on which to differentiate this case from Peeler v. Miller, and the same result is therefore compelled, i.e., a holding of suppression as a matter of law.” 628 F.2d at 1342, 207 USPQ at 117.
The court does not deny that Paulik’s four-year delay constituted prima facie suppression. Indeed, it could do so only by overruling Peeler and Shindelar. The court also states that “the legal inference of suppression or concealment based on ‘too long’ a delay in filing the patent application ... [is] encompassed in 35 U.S.C. § 102(g).”
The court holds, however, that Paulik’s “resumed activity” following his four-year suppression “must be considered as evidence of priority of invention.” It reviews the cases dealing with “the issue of suppression or concealment due to prolonged delay in filing” and concludes that the results were “based on equitable principles and public policy as applied to the facts of each case.” Noting the statement in the House Report that section 102(g) “retains the present rules of law governing the de*1285termination of priority of invention,” the court holds that section 102(g) incorporated the prior case law, which it interprets as making the equities of the particular case the touchstone for determining priority of invention. It concludes that Paulik is entitled to priority “if [he] resum[ed] work on the invention before the second inventor enter[ed] the field.”
I do not think that the language in section 102(g) leaves any room for considering the respective equities of (i) an earlier inventor who admittedly has suppressed or concealed his invention for an unreasonably long period and (ii) a later inventor who acted promptly in seeking the patent and was, in fact, first to file. Section 102(g) speaks in clear, simple, prohibitory terms. An inventor who has “abandoned, suppressed, or concealed” his invention is not entitled to priority as against a subsequent inventor who has not engaged in that conduct. Congress itself has made the judgment that in that situation the equities lie with the second inventor, not with the first. Under the statute, there is no room for the Board or the court to second-guess that congressional determination on the basis of the tribunal’s own perception of where the equities lie in a particular case.
There is nothing in the language or purpose of section 102(g) that justifies the court’s newly minted gloss upon the text of making priority depend upon the date of the suppressing inventor’s “resumed work” looking to the filing of a patent application. The statute gives priority to the applicant by whom “the invention was made” first and who has not suppressed or concealed it. The court does not disturb the Board’s determination that Paulik “made,” i.e., reduced to practice, the invention long before he asserts he “resumed work” on it, and that his lengthy delay itself constitutes prima facie suppression. The court does not, and cannot, point to any language in the statute that supports its result. Instead, it relies only upon general policy arguments that allegedly reflect the equities between the two parties to the interference. As stated, I do not think the statute contemplates or permits such an inquiry.
2. If the equities of this case are to be considered, however, I do not think they favor Paulik (or the real party in interest, Monsanto) over Rizkalla. The reason Paulik’s invention was intentionally suppressed for four years after it had been reduced to practice was because the Monsanto patent department, where the information regarding the invention was resting, gave higher priority to other matters. Paulik did not file until five or six months after the renewed activities, which was three-and-a-half months after Rizkalla filed. Paulik’s behavior was “indifferen[t]” and “supine[].” Mason v. Hepburn, 13 App. D.C. 86, 96, 1898 C.D. 510, 517 (1898). Here, as in Peeler, there was nothing to show that “the delay was other than fully within Monsanto’s control at all times.” 535 F.2d at 653, 190 USPQ at 122.
The court states that “[i]n January or February of 1975 the assignee’s patent solicitor started to work toward the filing of the patent application.” The cause of the renewed activity, however, was not a determination by the solicitor that under Monsanto’s schedule of priorities it was time to begin processing the Paulik application. According to the Board, a Mrs. Sporar, a patent agent of Monsanto, at that time “had informed Mr. Passley [a Monsanto patent attorney] that her docket was very low and she needs some work.” Mr. Passley then assigned the Paulik invention to her. The renewed activity thus resulted from happenstance. There is no indication that if Mrs. Sporar had not sought additional work, the Paulik invention would not have lain fallow for a further additional period.
Under these circumstances, I fail to see how Paulik has a “better right” to priority solely because of a some six-week head-start in the application writing process.
The precise rationale of the court’s decision is unclear to me. Perhaps the court is holding that evidence of Paulik’s renewed activity following the period of suppression rebuts the prima facie case of suppression that the unreasonable delay established. I *1286think, however, that the only way a prima facie case of such suppression may be rebutted is by showing justification for the suppression itself; it cannot be rebutted by evidence of action taken after the suppression has ended. Moreover, if Paulik’s renewed activity somehow “cured” the suppression, the consequence should be that he may rely on the date of his reduction to practice, a result the court specifically rejects.
On the facts of this case, the court’s concern that the Board’s ruling places a “severe ... sanction on failure to file premature patent applications on immature inventions of unknown value” is misplaced. It ignores the fact that Paulik’s invention was reduced to practice more than four years before he filed his patent application. There is no suggestion that with due diligence Monsanto could not have protected Paulik’s priority of invention by filing an application covering a fully perfected invention long before Rizkalla filed. Had it done so, others in the field might have been able to avoid needlessly duplicative work.
3. The court remands the case to the Board “for new interference proceedings in accordance with the principle” that “Paulik, although not entitled to rely on his early work, is entitled to rely on his renewed activity” to establish priority. I assume that in the new interference proceedings Rizkalla may rely on a date earlier than his filing date, although the court does not explicitly so state.
Since the Board assigned Paulik,.the junior party, a period for rebuttal testimony, Rizkalla apparently did not “expressly elect[] to rely solely on his effective filing date” in his preliminary statement. 37 C.F.R. § 1.251(b) (1984). Accordingly, when Rizkalla relied on his filing date, he may have done so because of his view that Paulik’s four-year delay in filing itself would defeat Paulik’s attempt to backdate the priority of his later filing date. In view of the court’s holding that Paulik’s delay does not necessarily bar him from obtaining priority, simple fairness and equity require that Rizkalla be permitted to show, if he can, that he began diligently working on the invention (or perhaps that he reduced it to practice) before Paulik resumed work in January or February of 1975.
4. Although one might think that determining which of two or more inventors was the first inventor would be a relatively simple task, this is not necessarily the case. Interference proceedings may be extremely lengthy and complicated. The inquiry that the court now opens up in cases of suppression due to delay is likely to inject still further protracted issues into interference proceedings. For example, precisely what activity by the suppressing inventor will suffice to show that he has “resumed activity?” What showing by the earlier-filing non-suppressing inventor will overcome such showing by the suppressor? How much must each party show to carry its burden? Although these are questions for the Board to determine in the first instance, I fear that the court’s decision inevitably will further complicate many already over-complicated proceedings.
5. Whatever one may think of the court’s decision as a matter of policy, I think that Congress itself has spoken to this issue and has resolved it against the court’s view. If section 102(g) is to be changed to accomplish the result the court here achieves, I think that the Congress and not the court is the body to take that action.