IBSA Institut Biochimique, S. A., et al. v. Teva Pharmaceuticals USA, Inc.

Patents are unique: the rights they confer are strictly territorial in nature, yet there exists an agreed-upon framework among the vast majority of countries for efficiently securing patent rights. This mutual arrangement permits both U.S. and foreign inventors to seek patent protection first in their home country and then, if they choose, to seek similar rights abroad. In both cases, the inventor can claim “priority” to their domestic application, a critical step for warding off the potentially preclusive effects of “prior art” that can bar patenting. This efficient system would suffer, if not disappear, without international agreements like the Agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”), which establishes a baseline for intellectual property protections among its 140 signatory countries. Amongst other protections, the TRIPS Agreement demands that foreign inventors, and foreign priority applications, be treated like their domestic counterparts. This “national treatment” is a critical protection for U.S. inventors abroad, and for the many foreign inventors who seek to pursue their patent rights in the United States. But the courts below rejected these treaty obligations by choosing to give no weight to a foreign patent application, resulting in a finding of indefiniteness. The question presented is: Whether, pursuant to the United States’ obligations under the TRIPS Agreement, codified at 19 U.S.C. § 3511, a court construing the claims of a U.S. patent may give no weight to a foreign priority