Thursday, September 23, 2010

BPAI finds swear-behind insufficient for lacking details of diligence

Takeaway: In Ex parte Brown, the BPAI discussed evidence of due diligence in a § 1.131 (swear-behind) declaration. Despite the Applicant's submission of 32 exhibits of evidence, the Board found that the declaration was deficient in showing either actual reduction to practice or conception plus due diligence. "We have no evidence that the specific details of any of the claims were conceived prior to the applied art, no specific details of development activities of the claimed subject matter or of the drafting activities of the patent application, and no evidence that the attorney was diligent in constructive reduction."

Appeal 2009002452, Appl. No. 09/237,194, Tech. Center 3600
Decided April 20, 2010

With regard to evidence of actual reduction to practice, the Board had this to say:

Many of the activities detailed in the declaration and exhibits bear little direct relation to actually reducing the invention to practice. Many of the activities are directed to establishing intellectual  property protection measures, obtaining speaking engagements, and planning for staffing needs. Others, such as proposing development timetables, are tangentially related, but show no actual reduction itself.
Next, with regard to diligence:
The period from  September 3 to 30 is unaccounted for. Further, no activity is shown between October 7 and October 27. To establish diligence for constructive reduction to practice, the attorney’s diligence must be shown.
The Board quoted the law for excusable lapses in diligence:
[I]t may not be possible for a patent attorney to begin working on an application at the moment the inventor makes the disclosure, because the attorney may already have a backlog of other cases demanding his attention. Thus, the courts have recognized that reasonable diligence is all that is required of the attorney. [] Generally, the patent attorney must show that unrelated cases are taken up in chronological order, thus, the attorney has the burden of keeping good records of the dates when cases are docketed as well as the dates when specific work is done on the applications.
Bey v. Kollonitsch, 806 F.2d 1024, 1028 (Fed. Cir. 1986).
The Board then applied the law of diligence to the facts: 
But there is no evidence of such a backlog or that if there was a backlog that it was taken up in chronological order. There is also no evidence showing that the period subsequent to the last documented attorney activity on October 29 up to the date of filing was excused activity. We are left with a large number of days in which no documented attorney activity occurred and no evidence that those days were excusable.

My two cents: This is a good teaching case of what not to do in a swear-behind.

Interestingly, the Board had no reason to even consider the swear-behind. The reference was filed in 1992. The application on appeal was a continuation-in-part filed in 1999, with the parent filed in 1992. Yet the Board found that the Applicant did not present any evidence whatsoever that the application was entitled to the parent's filing date. Without a valid claim to priority, the swear-behind is useless.

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