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 INVENTION
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
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;
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.”
