MPEP § 715.07(a) — Diligence (Annotated Rules)
§715.07(a) Diligence
This page consolidates and annotates all enforceable requirements under MPEP § 715.07(a), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Diligence
This section addresses Diligence. Primary authority: 37 CFR 1.131(a).
Key Rules
Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138)
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
AIA vs Pre-AIA Practice
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Antedating Reference – Pre-AIA (MPEP 2136.05)
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Citations
| Primary topic | Citation |
|---|---|
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138) | 35 U.S.C. § 100 |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138) | 35 U.S.C. § 102(g) |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138) | 37 CFR § 1.130 |
| – | 37 CFR § 1.131(a) |
| – | 37 CFR § 1.131(b) |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138) | 37 CFR § 1.131(c) |
| – | MPEP § 2138.06 |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138) | MPEP § 2159 |
| – | MPEP § 715 |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138) | MPEP § 717 |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138) | MPEP § 718 |
| – | Form Paragraph § 7.62 |
| – | In re Nelson, 420 F.2d 1079, 164 USPQ 458 (CCPA 1970) |
| – | In re Steed, 802 F.3d 1311, 1320, 116 USPQ2d 1760, 1767 (Fed. Cir. 2015) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 715.07(a) — Diligence
Source: USPTO715.07(a) Diligence [R-01.2024]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Where conception occurs prior to the date of the reference, but reduction to practice is afterward, it is not enough merely to allege that the inventor had been diligent. Rather, applicant must show evidence of facts establishing diligence.
In determining the sufficiency of a 37 CFR 1.131(a) affidavit or declaration, diligence need not be considered unless conception of the invention prior to the effective date of the reference as prior art is clearly established. Pursuant to 37 CFR 1.131(b), diligence comes into question only after prior conception is established.
In patent law, an inventor is either diligent at a given time or is not diligent; there are no degrees of diligence. An inventor may be diligent within the meaning of the patent law when the inventor is doing nothing, if the lack of activity is excused. Note, however, that the record must set forth an explanation or excuse for the inactivity; the USPTO or courts will not speculate on possible explanations for delay or inactivity. See In re Nelson, 420 F.2d 1079, 164 USPQ 458 (CCPA 1970). Diligence must be judged on the basis of the particular facts in each case. See In re Steed, 802 F.3d 1311, 1320, 116 USPQ2d 1760, 1767 (Fed. Cir. 2015)(“Although the claimed invention is a method conducted by computer software, this does not avoid the need for sufficient evidentiary specificity”). See MPEP § 2138.06 for a detailed discussion of the diligence requirement for proving prior invention.
Under 37 CFR 1.131(a), the critical period in which diligence must be shown begins just before the effective date of the reference or activity as prior art and ends with the date of a reduction to practice, either actual or constructive (i.e., filing a U.S. patent application). Note, therefore, that only diligence before reduction to practice is a material consideration. Any lack of diligence between an actual reduction to practice of an invention and the filing of an application thereon is not relevant to the sufficiency of an affidavit or declaration under 37 CFR 1.131(a).
Form paragraph 7.62.fti (reproduced in MPEP § 715) may be used to respond to a 37 CFR 1.131(a) affidavit where diligence is lacking.