2138.06 “Reasonable Diligence”
This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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The diligence of pre-AIA 35 U.S.C. 102(g) relates to reasonable “attorney-diligence” and “engineering-diligence” which does not require that “an inventor or his attorney … drop all other work and concentrate on the particular invention involved….”
I. CRITICAL PERIOD FOR ESTABLISHING DILIGENCE BETWEEN ONE WHO WAS FIRST TO CONCEIVE BUT LATER TO REDUCE TO PRACTICE
The critical period for diligence for a first conceiver but second reducer begins not at the time of conception of the first conceiver but just prior to the entry in the field of the party who was first to reduce to practice and continues until the first conceiver reduces to practice.
- What serves as the entry date into the field of a first reducer is dependent upon what is being relied on by the first reducer, e.g., conception plus reasonable diligence to reduction to practice.
An actual reduction to practice or a constructive reduction to practice by the filing of either a U.S. application or reliance upon priority under 35 U.S.C. 119 of a foreign application.
II. THE ENTIRE PERIOD DURING WHICH DILIGENCE IS REQUIRED MUST BE ACCOUNTED FOR BY EITHER AFFIRMATIVE ACTS OR ACCEPTABLE EXCUSES
“A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence.”
An applicant must account for the entire period during which diligence is required.
- Merely stating that there were no weeks or months that the invention was not worked on is not enough.;
The period during which diligence is required must be accounted for by either affirmative acts or acceptable excuses.
- Being last to reduce to practice, party cannot prevail unless he has shown that he was first to conceive and that he exercised reasonable diligence during the critical period from just prior to opponent’s entry into the field;
- voluntarily laying aside inventive concept in pursuit of other projects is generally not an acceptable excuse although there may be circumstances creating exceptions.
Examiners should weigh the body of evidence to make the determination of whether there was reasonably continuous diligence for the entire critical period.
- This determination should be made with the purpose of the diligence requirement, which “is to assure that, in light of the evidence as a whole, ‘the invention as not abandoned or unreasonably delayed.’”
In Perfect Surgical, the Federal Circuit stated:
Under this standard, an inventor is not required to work on reducing his invention to practice every day during the critical period. … And periods of inactivity within the critical period do not automatically vanquish a patent owner's claim of reasonable diligence…. In determining whether an invention antedates another, the point of the diligence analysis is not to scour the patent owner's corroborating evidence in search of intervals of time where the patent owner has failed to substantiate some sort of activity. It is to assure that, in light of the evidence as a whole, “the invention was not abandoned or unreasonably delayed.” ... That an inventor overseeing a study did not record its progress on a daily, weekly, or even monthly basis does not mean the inventor necessarily abandoned his invention or unreasonably delayed it. The same logic applies to the preparation of a patent application: the absence of evidence that an inventor and his attorney revised or discussed the application on a daily basis is alone insufficient to determine that the invention was abandoned or unreasonably delayed. One must weigh the collection of evidence over the entire critical period to make such a determination.
Our decision in In re Mulder, 716 F.2d 1542, 1542-46 [219 USPQ 189] (Fed. Cir. 1983), does not instruct otherwise. The Board cites In re Mulder for the proposition that “[e]ven a short period of unexplained inactivity may be sufficient to defeat a claim of diligence.” …. In In re Mulder, a competing reference was published just days before the patent at issue was constructively reduced to practice. …. The patent owner was tasked with showing reasonable diligence during a critical period lasting only two days. ... But the patent owner did not produce any evidence of diligence during the critical period. ... Nor could it point to any activity during the months between the drafting of the application and the start of the critical period. ... Although the critical period spanned just two days, we declined to excuse the patent owner's complete lack of evidence. ... In re Mulder does not hold that an inventor's inactivity during a portion of the critical period can, without more, destroy a patent owner's claim of diligence.
III. WORK RELIED UPON TO SHOW REASONABLE DILIGENCE MUST BE DIRECTLY RELATED TO THE REDUCTION TO PRACTICE
The work relied upon to show reasonable diligence must be directly related to the reduction to practice of the invention in issue.
IV. DILIGENCE REQUIRED IN PREPARING AND FILING PATENT APPLICATION
The diligence of attorney in preparing and filing patent application inures to the benefit of the inventor. Conception was established at least as early as the date a draft of a patent application was finished by a patent attorney on behalf of the inventor.
- Conception is less a matter of signature than it is one of disclosure.
- Attorney does not prepare a patent application on behalf of particular named persons, but on behalf of the true inventive entity. Six days to execute and file application is acceptable.
V. END OF DILIGENCE PERIOD IS MARKED BY EITHER ACTUAL OR CONSTRUCTIVE REDUCTION TO PRACTICE
“[I]t is of no moment that the end of that period [for diligence] is fixed by a constructive, rather than an actual, reduction to practice.”
