General. The following hypothetical examples teach this concept:
Hypothetical Example No. 1. The USPTO has rejected all of the claims in Thomas's patent application over a disclosure of essentially the same invention in a paper authored by another person that was published in a technical journal just two months before he filed his patent application. Thomas had described his invention to his patent agent and had asked her to prepare his patent application before the paper was published. His patent agent had been diligent in preparing the patent application. Thomas is able to prove a date of invention before the publication date of the paper and is able to "swear behind" the reference. Thomas is the first to invent and, therefore, can overcome the rejection of his claims.
Hypothetical Example No. 2. The USPTO has informed Marie that the issue of who was the first inventor of an invention that she has claimed is hers must be resolved before patent prosecution can continue. Another inventor, Bessie, has claimed the same invention in her patent application and an "interference" has been declared. Even though Bessie filed her patent application after Marie did, Bessie was able to show that she was diligent in doing so and Marie was not. Bessie is the first to invent and wins the interference.
Hypothetical Example No. 3. Martha was very careful to document the conception of her first invention. She prepared an invention disclosure and had Albert read it under an agreement of confidentiality. She then discussed the invention with Albert and he signed and dated each page of the disclosure indicating that he had "read, discussed and understood" the material. Unfortunately, Martha was distracted by the excitement associated with her second invention and did not work on her first invention for over six months. One Sunday, she noticed that a device that embodied her first invention was being sold by FloorMart. Although she immediately filed a patent application (and disclosed the on-sale device, as was her duty to the USPTO), she was not able to show that she had diligently reduced her first invention to practice commencing at a time before the device was placed on sale and, thus, was barred from obtaining a patent on it.
Hypothetical Example No. 4. Thomas files a U.S. patent application on an invention he made in the U.S. claiming priority in a French application he filed 11 months earlier after having received a foreign filing license from the USPTO (35 U.S.C 185). The Examiner rejects Thomas's application based on a journal article that was published two months before his U.S. filing date. Thomas perfects his claim for priority in the earlier French application and overcomes the rejection by proving an earlier constructive reduction to practice (date of invention).
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