Law - Last Day To File and Swear Back To Conception

In the U.S., patents are granted to the "first to invent" rather than the "first to file" which is the case in almost every other country. If, during the prosecution of a U.S. patent application, a reference is cited by the Examiner that would otherwise render a claimed invention unpatentable ("anticipated" or "obvious"), the inventor can "swear behind" the reference by submitting evidence that his/her conception of the invention occurred (in the U.S. or in a NAFTA or WTO member country) before the effective date of the reference as long as he/she was diligent in "reducing the invention to practice" (in the U.S. or in a NAFTA or WTO member country) starting at a time just before the effective date of the reference. In order to encourage early filing of U.S. patent applications, U.S. law bars swearing back of references with effective dates more than twelve months before his/her U.S. filing date, even if the reference is the inventor's own work. For this reason, Patent Partner automatically sets up a milestone when an inventor discloses the "date of idea for complete invention," which date is probably the date of conception of the invention. In that conception is only the first of the steps that lead to completion of an invention, this milestone is a warning that diligence should begin.

The position of the USPTO on this issue is described in the following section(s) of the Manual of Patent Examining Procedure (MPEP):

MPEP 2138.04 - Conception
MPEP 2138.01 - Interference Practice
MPEP 2138.02 - "The Invention Was Made in This Country"
MPEP 2138.03 - "By Another Who Has Not Abandoned, Suppressed, or Concealed It"
MPEP 715 - Swearing Back of Reference-Affidavit or Declaration Under 37 CFR 1.131

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