Is diligence or reduction to practice required when showing that a reference describes an inventor’s own work?
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.
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.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2136.05 - Overcoming A Rejection Under Pre - Aia 35 U.S.C. 102(E),
Patent Law,
Patent Procedure