Tuesday, September 27, 2011

Can a draft application serve as evidence of conception in a swear-behind declaration?

In prosecution, a reference that is dated a few days or weeks before your application's filing date may provide an opportunity to swear behind the reference. But if you follow the conventional approach of using an invention disclosure document as evidence of conception, that may involve showing diligence for a long period up to filing of the application. What if you could use a draft of your patent application as evidence of conception? Now the diligence period would probably be much shorter. [If you need a refresher on swear-behind declarations, conception, and diligence, see my posts here, here, and here.]

I think using a draft application as evidence of conception is a viable strategy, given the right facts. I ran across a file history and corresponding BPAI opinion where the Applicant tried something like this, but blew it by not submitting the right documents as evidence of conception until it was too late. In a future post, I'll explain what went wrong in that case, and some lessons to be learned. This post will explain when and how to use a draft patent application as evidence of conception. I can't promise you this strategy will work -- I haven't run across any another file histories where this came up. So read through my explanation and decide for yourself.

A draft application is great evidence of conception in that – unlike an invention disclosure or technical paper – it's specifically written to describe and enable the claims. However, unlike an invention disclosure or technical paper, it's not written by the inventor. So on its face, an unfiled application may not appear to show conception by the inventor. This is the first obstacle to be addressed in using a draft application as evidence of conception.

I think inventor approval can provide this missing link. If the inventor approved the application for filing before the effective reference date, then I think we have conception by the inventor before the critical date. Along the same lines, an executed declaration of inventorship can provide the missing link. An inventorship declaration that is executed by at least one inventor before the effective reference date shows conception by the inventor.

If you don't have inventor approval/execution before the effective reference date, is the game over? Maybe not. If you can show that the application actually filed has no significant differences as compared to a draft application in existence before the critical date, doesn't that also provide the missing link? Doesn't that also show that the draft application reflects the inventor's conception? After all, the inventor later signed an inventorship declaration attesting that a very similar document described his invention.

So I think that under any of these fact scenarios, you have evidence of conception before the critical date. Of course, you still need evidence of diligence in filing, even if it's only for a few days or weeks. But that's going to be easier to deal with than the typical diligence period, because that starts much earlier when an invention disclosure is filed with the employer. 

As with any swear-behind declaration, a swear-behind relying on a draft patent application as evidence of conception should explain the correspondence between sections of the relied-upon document (in this situation, the draft patent application) and the elements of the pending claims. (See my previous posts mentioned above for more information.) The swear-behind declaration should also include an affirmative statement by the inventors that the draft application describes the claims. You should submit the draft application, as supporting evidence, along with the swear-behind declaration. You should also submit evidence that the draft was in existence as of the effective reference date.

Finally, you must comply with all the formalities of a swear-behind (e.g., signed by all inventors) and follow the rules to get the evidence entered (e.g., on non-final, with an RCE, or with a "good and sufficient" showing after final).

What do you think? Creative thinking? Or am I way off base?


  1. Interesting thoughts. How would a practitioner corroborate the date of the draft application? I'm thinking specifically of those in digital format, where timestamps can be easily manipulated..

  2. Just email it to yourself

  3. I have done this a couple of times successfully over the years. (Of course, teh first time I did it was back when we used paper formats!). As to the "digital format" issue, I think submitting this under penalty of perjury should be sufficient. Frankly, if you're going to manipulate time stamps you can just as easily white out hard copies, so I think between the ethical duty, the penalty of perjury, and the fact the PTO is supposed to take you at your word, you'll be fine. The last time I did it if I remember correctly was using the archived email document and cover email.

  4. "You should also submit evidence that the draft was in existence as of the effective reference date."

    While it may not hurt to submit this evidence, I disagree in that it is required. As far as the office is concerned the MPEP states " he or she may merely allege that the acts referred to occurred prior to a specific date." MPEP 715.07 II.

    However, I would make sure solid evidence is producible, in case of an infringement battle.

  5. See Burroughs Wellcome v Barr, 40 F.3d 1223, 32 U.S.P.Q.2d 1915. Court found drafts relevant to conception

  6. Great job at creative prosecuting. That's what makes this job fun! Too bad this will only be applicable for a few more years.

  7. FWIW, as an examiner, I have accepted draft apps as evidence of conception. Just a reminder, make sure you remember to show diligence of the attorney in prepping and filing, as applicable. This is mentioned in MPEP 2138.06 (which also mentions conception via a draft app, so it may help to point there if an examiner gives you a hard time).

  8. One of the best thing to deal with this is to look at the already issued patents.