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[IPLoya]

37 CFR 1.131 requires the inventors of the rejected subject matter to make an affidavit/declaration swearing behind a reference, unless the inventors are dead, insane, or unavailable (37 CFR 1.42, 1.43, 1.47).  However, the A/D requires a showing of actual reduction to practice or conception plus diligence in actual or constructive reduction to practice.  Constructive RTP means filing the app.

The issue I'm looking at: In the case of constructive RTP, how can an affidavit by the inventor show diligence in RTP when that is largely an issue of the attorneys' handling of the matter up until filing?

I'm seeing caselaw/articles on what is required for showing conception (e.g. a mapping between disclosure and claim limitations) and due diligence (e.g. accounting for every day in the critical period from just before the reference date up until filing), but haven't yet seen where this point is directly addressed.

Thanks

[khazzah]

However, the affidavit/declaration requires a showing of conception plus diligence in actual or constructive reduction to practice. 

Clarification. 1.131 requires either actual reduction to practice OR conception plus constructive reduction. IOW, you don't need diligence if you show actual reduction.

how can an affidavit by the inventor show diligence in RTP when that is largely an issue of the attorneys' handling of the matter up until filing?

I've read a lot of BPAI cases involving 1.131, and even posted on my blog about due diligence (http://allthingspros.blogspot.com/2010/04/due-diligence-in-swear-behind.html).

That said, I don't know the exact answer to your question. The cases discussed in that post all involve diligence, so the declarations and supporting papers filed in those cases might shed some light.

Here are my thoughts, based on what I do know about swear behind practice. First, the attorney preparing the application should submit a separate declaration attesting to the facts surrounding drafting and filing of the app. The Inventor's dec would then refer to the attorney's dec in making a statement  about diligence -- just as the inventor's dec refers to other supporting evidence (design documents, invention disclosure, etc.) to support the attested-to statements about constructive reduction to practice.

If you do find something on point, please update us on this forum.

[IPLoya]

Clarification. 1.131 requires either actual reduction to practice OR conception plus constructive reduction. IOW, you don't need diligence if you show actual reduction.

(Thanks, that's what I meant to write.  Edited to correct this point.)

[JimIvey]

I don't have authority on this, but this was what was taught to me in my original firm, one that did as much patent litigation as it did prosecution.  So someone there claimed to have authority on this.

And, one large caveat, that was almost 20 years ago, so the law may have changed....

First, it's my understanding that due diligence can date "invention" back to conception for actual reduction to practice as well as construction reduction to practice.

Second, it's also my understanding that diligence in preparing the patent application, i.e., the construction reduction to practice, also counts.  In other words, due diligence by the practitioner in drafting the application can be used in the due diligence chain required to date "invention" back to conception.

I've never relied on the latter point, but my mentor -- considered the best combination patent attorney and litigator by some at the time -- insisted that such was the case.

Regards.

[khazzah]

First, it's my understanding that due diligence can date "invention" back to conception for actual reduction to practice as well as construction reduction to practice.

Good point. I overlooked that possibility. So we have three options under 1.131:

• Reduction to practice before critical date
• Conception before critical date plus diligence up to time of filing
• Conception before critical date plus with diligence up to the time of actual reduction to practice

Second, it's also my understanding that diligence in preparing the patent application, i.e., the construction reduction to practice, also counts.  In other words, due diligence by the practitioner in drafting the application can be used in the due diligence chain required to date "invention" back to conception.

Clarification. Not only *can* it be used -- if you pick option #2, you *must* have diligence from conception to filing. 

[last_man_standing]

When considering due diligence I assume that any 'lapses of diligent behavior' during the 'diligence period' are what is critical when considering  absence or lack of diligence.

A lapse of time such as an extended vacation could imply lack of diligence, although it would seem the fall-back of 'I was thinking about it the entire time I was in Aruba' could be satisfactory.

Maybe not...

[IPLoya]

Thanks all.  To clarify, I am trying to reconcile the requirement that the affidavit be from the inventor (not the attorney) and the requirement of the affidavit to show due diligence in the constructive RTP.  Stated more succintly, how can an affidavit by the inventor show diligence by the attorney, assuming my assumptions are correct?

Perhaps I am overcomplicating the issue.  Maybe the answer is that the body of the affidavit by the inventor must only show the conception prong, and the showing of facts accompanying the affidavit must show the diligence leading to filing?

§ 1.131 Affidavit or declaration of prior invention.

(a) When any claim of an application or a patent under reexamination is rejected, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination [NA - this isn't a re-exam], or the party qualified under §§ 1.42 [dead], 1.43 [insane], or 1.47 [unavailable], may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. The effective date of a U.S. patent, U.S. patent application publication, or international application publication under PCT Article 21(2) is the earlier of its publication date or date that it is effective as a reference under 35 U.S.C. 102(e). Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. Prior invention may not be established under this section if either:

(1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application to another or others which claims the same patentable invention as defined in § 41.203(a) of this title, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this title; or

(2) The rejection is based upon a statutory bar.

(b) The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained.

[SNielson]

Good point. I overlooked that possibility. So we have three options under 1.131:

• Reduction to practice before critical date
• Conception before critical date plus diligence up to time of filing
• Conception before critical date plus with diligence up to the time of actual reduction to practice

I agree, although I would add that diligence must only be shown from before the critical date to the time of filing or actual reduction to practice.

To the OP, I recall reading or hearing of a case from the Federal Circuit in the last five or six years that addressed the question of whether the attorney was diligent. 

[JimIvey]

Clarification. Not only *can* it be used -- if you pick option #2, you *must* have diligence from conception to filing. 

As usual, I'm happy to defer to those who have researched this issue more recently than I.  But, it was my understanding that due diligence from conception to constructive reduction to practice could be either diligence in actual reduction to practice or diligence in constructive reduction to practice (drafting the patent application).  In other words, a break in due diligence would have to be a break in both constructive and actual reduction to practice simultaneously.

Like I said, I haven't relied on this.  But I'd love to hear what others have found in this area.

Regards.

[khazzah]

Maybe the answer is that the body of the affidavit by the inventor must only show the conception prong, and the showing of facts accompanying the affidavit must show the diligence leading to filing?

I answered this to the best of my ability in my first reply. But I'll restate to address your comment.

I believe the body of the aff/dec -- the facts the inventor is attesting to -- must include a statement of diligence as well as a statement of conception.  The inventor's statement of diligence refers to, and relies on, a separate aff/dec from the practitioner who prepared the app. This aff/dec from practitioner attests to various facts about diligence. 

[Robert K S]

you *must* have diligence from conception to filing.

Sorry to resurrect an old thread, but this isn't right.  The so-called critical period runs from just prior to the effective date of the reference to the date of constructive reduction to practice (i.e., filing, usually).  It need not run from conception, which might have been many years before, with a large gap in diligence, which might be resumed only just the day before the effective date of the reference.