Law - Last Day To File and Swear Back To Start of Diligence

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 he/she was diligent in completing the invention (in the U.S., or in a NAFTA or WTO member country), with the diligence in "reducing the invention to practice" 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 first "date of development activity (diligence)," which date is probably the start point of the diligent completion of the invention. In that the start of diligence is only one of the steps that lead to completion of an invention, this milestone is a warning that diligence should continue.

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

MPEP 2138.06 - "Reasonable Diligence"
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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