Is diligence or reduction to practice required when showing that a reference describes an inventor’s own work?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

When showing that a reference describes an inventor’s own work to overcome a pre-AIA 35 U.S.C. 102(e) rejection, the applicant does not need to show diligence or reduction to practice.

The MPEP clearly states: “When the reference reflects an inventor’s or at least one joint inventor’s own work, evidence of diligence or reduction to practice does not need to be provided in order to establish that the inventor or at least one joint inventor invented the subject matter disclosed in the reference.“

Instead, the applicant needs to show two things:

• That the reference disclosure arose from an inventor’s or at least one joint inventor’s work
• Conception by the inventor or at least one joint inventor before the filing date of the reference

This can typically be done through an affidavit under 37 CFR 1.132 by the inventor or at least one joint inventor who invented the subject matter.