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."

Details: 
Ex parte STEPHEN JAMES BROWN
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.

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."