The GATT amendments to the U.S. Patent Code will permit evidence of overseas inventive activities after January 1, 1996.
But, proof of a prior actual date of invention frequently requires not only clear evidence of conception and of reduction to practice but also evidence of diligence. If a constructive reduction to practice is relied upon, diligence to the filing of the application may be critical. Furthermore, under Sec. 102(g), the applicant must also avoid any contention of concealment or abandonment arising from undue delay in filing the patent application. Thus, issues of diligence, concealment and abandonment can now involve the activities of the foreign patent agent. If the preparation of the application is dilatory or has been put aside for other cases, the apparent right of an earlier date of invention under the new law can be lost.
These issues have long been familiar to U.S. patent lawyers and an extensive body of U.S. jurisprudence exists which is too complex to analyze here. Generally, the court reiterate that each case must be decided on its own facts, but the key evidence where the agent's diligence has been sustained has most frequently been the agent's careful record keeping of the activities related to the preparation of the application. We will be pleased to provide a summary of U.S. case law on this topic or answer your specific questions. The central point is that the issue cannot be ignored except at your peril.
Selected Case Law re Abandonment/Concealment and Attorney Diligence
Abandonment may be inferred from negligent or unexplained delay in making application for patent ... mere delay in filing an application for patent is not abandonment. --Lipscomb's Walker on Patents, Sec. 7.7
Authorities cited --
Monsanto v. Rohm & Haas, 165 USPQ 556, 165 (EDPa 1970)
(12-year delay is an unreasonable delay--inventor had acquiesced in public use and marketing)
Wirebounds Patents v. Saranac Automatic Machine Corp., 18 USPQ 171 (6 Cir. 1933) (invalid for laches from 7-year delay in filing method claims after grant of divisional application):
"... if the inventor, intentionally or by reason of culpable neglect ... unduly postpones the time when the public would be entitled to the free use of the invention, and thus defeats the policy of the patent law, the right to a patent will be lost." Macbeth-Evans Glass v. Electric Co., 246 F.2d 695 (6 Cir. 1917) (invention was used as a trade secret for 10 years prior to filing application for patent)
"If the rights to secure protection of the patent laws can be effectively repudiated, it certainly has been here."
Delay in filing an application during the progress of experiments until the invention has been perfected does not form the basis of any conclusion of abandonment; no burden of diligence rests on the inventor to file an application after he has reduced it to practice.--Lipscomb's Walker on Patents, Sec. 7.7
Authority cited --
Brown v. Childs, 49 USPQ 713 (CCPA 1941) (19-month delay between reduction to practice and date of filing not evidence of suppression or concealment)
Salisbury v. Peduforme Shoe Co., 44 USPQ 252 (DNY 1940) (12-year delay constituted abandonment where delay was only poorly explained)
Beedle v. Bennett, 122 U.S. 71 (1887) (4-year delay in filing application after successful experiments held not abandonment under the circumstances of the case)
Electric Storage Battery v. Shimadzu, 307 U.S. 5 (1939) (Japanese applicant did not file Japanese application until 15 months after reduction to practice held not to demonstrate abandonment)
Shindelar v. Holdeman, 628 F.2d 1337 (CCPA 1980)
Invention was reduced to practice and invention disclosure form sent to patent department in January 1973, where it was docketed.
"Normally, the patent attorney took the cases up for application preparation in the order in which they were received except where potential statutory bars required earlier filing."
Here, there was one discussion with inventor; a patent search made in January 1974; application prepared in June 1975, "approximately two years and five months after his [the attorney's] receipt of the invention disclosure."
There was evidence of the attorney's heavy workload; there was also evidence of a continuing intent to file--someday.
"The patent attorney's workload will not preclude a holding of unreasonable delay. Nor will the showing of intent to file--someday-- negative a holding of suppression."
Allowing one month for preparation of the text, one month for preparation of the drawings, and another month for editing and execution, only "three months could possibly be excused during the twenty-nine month delay ... more than two years of the delay period remains unaccounted for."
"We reiterate that each case involving the issue of suppression or concealment must be considered on its own particular set of facts."
Poage v. Dyer, 184 USPQ 223 (POBdInt 1974)
(10-month delay, with other work, and litigation, excused)
Rines v. Morgan, 250 F.2d 365 (CCPA 1957)
(Inventor not charged with attorneys 3-month delay in filing during the "critical period" in interference priority contest -- excused where record showed continuing work on related applications)
Emery, Howe and Marcella v. Ronden and Rabel, 188 USPQ 264 (POBdInt 1974)
"... it is not necessary that an inventor or his attorney should drop all other work and concentrate on the particular invention involved ..."
Bey and Jung v. Kollonitsch and Patchett, 806 F.2d 1024 (Fed. Cir. 1986)
(Interference, diligence required for critical period from May 31 to July 11, 41 days--)
"During the critical period, Hattan [the attorney] worked on a group of 22 patent applications relating to irreversible enzyme inhibitors, including the parent to the present application. ... There was no evidence that priority was given to any applications docketed after the group of 22 applications. .. Clearly, reasonable diligence can be shown if it is established the attorney worked reasonably hard on the particular application in question during the continuous critical period. ... 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."
"We hold that Hattan's work on the related cases must be credited toward reasonable diligence on the instant application, because Bey established that work on the related cases 'contributed substantially to the ultimate preparation of the involved application.' ... There is corroborated evidence of specific work performed on the related applications on almost every working day in the critical period ..."
Mendenhall v. Astec Industries Inc., 13 USPQ2d 1913 (EDTn 1988)
(This case involves attempt to use a prior invention as prior art under Sec. 102(g). A 10-month delay in filing 18-page application with 9 claims was held to be unreasonable--)
"Unexplained delays by a patent attorney in preparing an application, and a failure by the attorney to take up applications in the order that they are received, forecloses a finding of reasonable diligence."
Powell v. Poupitch, 167 F.2d 514 (CCPA 1948)
(Interference; issue is diligence during critical period--a 5-1/2 month delay from actual reduction to practice until filing of application held not diligence--)
"In the instant case, however, it appears that appellant's application here involved was not prepared in its regular turn and that work on it was deferred in favor of other applications."
Scharmann v. Kassel, 179 F.2d 991 (CCPA 1950)
(Interference case; issue is diligence in preparation of application in the critical period--appellee established conception of the invention as of February 15, 1940; appellant had made a patent memorandum invention disclosure as of September 6, 1938--
"On February 16, 1940, Cashman [the patent attorney] dictated an initial rough draft of a patent application for appellant ... That activity on February 16,1940, directed toward the filing of an application, the board correctly held, came a day too late to constitute diligence just before appellee entered the field. Furthermore, [an earlier attorney's memorandum] was written approximately a month before appellee entered the field and not immediately prior to the date of February 15, 1940. Hence it is not relevant on the question of appellant's diligence."
Fearon v. Krasnow et al, 172 F.2d 233 (CCPA 1949)
(Interference case with both parties relying on constructive reduction to practice from application filing. Krasnow filed on October 24, 1939; Fearon filed on December 27, 1939. Fearon had to establish diligence (from an earlier conception) beginning just prior to October 24, 1939--)
" ... it is sufficient to say that from a most careful examination of the record we fail to find any tangible evidence relating to the subject matter of the particular Fearon application here involved indicating that it specifically was the subject of any conference or correspondence between Fearon (or his assignee) and the attorneys from the time it was placed in the hands of the latter on May 4, 1939, until work upon it began about Nov. 8, 1939."
Willis v. Suppa and Willis v. Koehler and Zupfer, 209 USPQ 406 (POBdInt 1980)
(Three-party interference; Koehler was senior party on filing date of August 15, 1974; the junior party relied on a prior conception date and attorney diligence from just prior to August 15, 1974--)
"As [the attorney] has not accounted for his time from August 15, 1974, to the time of the draft in December, we find that attorney diligence has not been proven during this period." [Four month period]
Kondo, Takashima and Tunemoto v. Martel, Tessier, Demoute, and Jolly, 223 USPQ 528 (POBdInt 1984)
(Unsuccessful attempt to combine laboratory diligence with attorney diligence--)
"In Kondo's view diligence was exercised on his behalf by agents of FMC in the form of laboratory work by scientists in Princeton directed toward actual reduction to practice and by action by patent counsel in Philadelphia, Pa., aided by patent liaison personnel in Princeton, directed to filing a patent application."
"We do not agree with Kondo that his activities directed toward a constructive reduction to practice can be intermingled with his activities directed toward an actual reduction to practice in order to establish diligence during the critical period. ... In the present case, Kondo attempts to combine sporadic activity in the laboratory with sporadic activity by the patent attorney to prove continuous diligence.
"[The attorney's] lack of activity during the first week in August 1977 can be excused because he was on vacation during that time. Failure to work on the patent application to any extent during August 9 to September 19, 1977 can be excused because [he] was awaiting the results of an outside search. However, during the last week in September and the entire month of October 1977 there was essentially no work carried out ... [The] broad assertion of a 'heavy docket' [is] an inadequate excuse for lack of activity during this period ..."