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© 2002, Gallagher & Dawsey Co., LPA
June 2002
A consequence of the United States "first to invent' patent law is
that an inventor can claim a date of invention back to the time of
conception, that is, the time of developing a complete means of
solving a problem, even if the invention has not been physically built
or an application filed. Such a concept clearly favors the inventor,
who is able to take the time to refine a possibly patentable idea
before filing. However, this benefit is matched by a duty to show
diligence in reducing the invention to practice. In short, an inventor
must work diligently on his or her invention, before filing, to get
the earliest possible priority date.
Diligence has been defined by the courts as the continued work on the
task of reducing the invention to practice by both the inventor and
his representatives. While constant activity on the invention is not
required, the inventor must be able to account for the entire time
period between conception and reduction to practice by either showing
actual work done on the invention or a legally adequate excuse for
inactivity.
The law does not require constant or extraordinary levels of work to
constitute diligence. Courts will consider the reasonable problems and
everyday distractions that face every inventor in evaluating
diligence. Reasonable vacations are permitted, as are waits for the
results of testing. An inventor who holds a full time job is not
precluded from being diligent, if there was a continued application of
effort during off-work time. Complexity of the invention may affect
the diligence examination; the more complex an invention, the more
leeway will be given to breaks in diligence. However, breaks due to
discouragement or lack of funding, while perhaps understandable, can
break the chain of diligence.
A break in diligence results in a loss of the priority for the time
occurring before the break. However, a new period of diligence can
begin when the invention is actively taken up again. In such a case,
priority can date back to the beginning of the new period of
diligence.
An inventor must not only consider his or her own diligence. An
inventor is also responsible for a patent practitioner's diligence, or
lack of it, in preparing an application for filing. Reasonable delays
due to a practitioner's work load are often considered within the
realm of diligent activity, but unreasonable delays are not. An
inventor should always monitor the work of their practitioner, and
seek a clear explanation of any projected delays. As always, the best
course is to form and maintain a solid working relationship with the
practitioner, such that the inventor knows the progress on, and status
of, his invention at all times. |
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