Due diligence in swear-behind declarations (Part III)

My previous posts (Part I and Part II) on § 1.131 (swear-behind) practice explained that the BPAI expects a swear-behind declaration to contain facts and supporting exhibits, not conclusory statements, to properly shows reduction to practice. The cases discussed in this post show that the same is true for a showing of due diligence.

Ex parte Kirkwood:

The declaration relies on events which were documented in an Invention Disclosure. See Oct. 20, 1995 Declaration, paragraphs 4 & 5. However, the Invention Disclosure itself is not provided as an exhibit. The declarants state that one of the inventors discussed the “invention” with scientists on or about February 10, 1987. Declarants further allege that the inventors worked “as time and budget allowed throughout February and early March” until completion of the experiments described in Exhibit 1 of their previous declaration. Id. at paragraph 6. These statements alone do not establish due diligence from a time prior to March 2, 1987 until the alleged actual reduction to practice on March 6, 1987. Appellants must state with particularity and provide evidence of the sequence of events which occurred from a specified time prior to March 2 until the actual reduction to practice on March 6. See generally, In re Nelson, 420 F.2d 1079, 164 USPQ 458 (CCPA 1970).

So Kirkwood's declaration failed because it characterized the inventor's activities ("inventors worked 'as time an budget allowed'") rather than stating specifically what activities occurred and when. And, of course, supporting evidence should have been attached to the declaration.

The BPAI made similar remarks in Ex parte Igelmund:

The Folise and Igelmund declarations provide absolutely no explanation of the appellant's activities with regard to the invention set forth in claims 1, 2 and 15 to support the appellant's assertion of diligence. In particular, the statement in paragraph 4 of the Igelmund declaration that the declarant “worked diligently with Mr. Folise's office in preparing a patent application on the invention” is merely conclusory in nature and fails to indicate (1) the actions that were taken by the declarant toward either reducing the invention to practice in the form of a prototype or preparing a patent application and (2) the dates on which those actions were taken.

These cases show that stating the legal conclusion of "diligence" is not enough. Nor is it sufficient to state in the declaration that the time period was "reasonable."

While we agree with counsel's statement that, in many circumstances, “[i]t is not unreasonable to expect the preparation of a patent application to take the interval from December 2, 1994 until March 6, 1995” (Br18), since the delay is over three months, a declaration of counsel would normally be expected setting forth dates establishing progress towards filing. 
(Ex parte Peppel.)

Here, Appellants' declarations and Brief fail to explain diligence in any way, merely asserting that the time periods in question are “reasonable” (supra). Without some explanation as to what the declaration does or does not show, Appellants do not persuade us that the declaration demonstrates diligence over the period from December 20, 2001 through June 25, 2002.
(Ex parte Flynn.)

Periods of inactivity in the critical time period are not fatal. The Applicant may instead provide a "valid excuse" for the gap. As explained by the Board in Ex parte Peppel, "the record has to show the required diligence or valid excuses for a lapse. (See Griffith v. Kanamaru, 816 F.2d 624, 625-26, 2 USPQ2d 1361, 1362 (Fed. Cir. 1987) which explores diligence in reduction to practice in the context of certain allowable excuses, such as vacations.)"

While gaps are not fatal, they do weigh against diligence:

While Appellants need only show reasonable diligence, and do not have to show work toward a constructive reduction to practice 24 hours a day, 7 days a week, time not accounted for during the period for diligence weighs against a successful showing of diligence.
(Ex parte Flynn.)

Finally, there is no per se rule for how big of a gap in activity is permissible. A few BPAI cases do say "a 2-day period lacking diligent activity has been held to be fatal," citing as authority In re Mulder, 716 F.2d 1542 (Fed. Cir. 1983). But I find that characterization of Mulder to be misleading.

In Mulder, the date of conception was only two days before the effective date of the reference. The Applicant argued that since the time period was so short, the diligence threshold should be reduced. The Federal Circuit disagreed, holding that “[L]iberality cannot be extended to the point of eliminating all proof of diligence, no matter how short the period to be covered.” In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983). I think this quote is a better summary of the holding of Mulder, rather than "a 2-day period lacking diligent activity has been held to be fatal."