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2138 35 U.S.C. 102(g) [R-3]

2138.04 "Conception" [R-5] - 2100 Patentability

The Federal Circuit “applies a ‘rule of reason’ standard when reviewing the sufficiency of evidence about reduction to practice.” Id., at 1238 (citing Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985)). The rule of reason “requires the Patent and Trademark Office to examine, analyze, and evaluate reasonably all pertinent evidence when weighing the credibility of an inventor's story.” Id., at 1239. 


For starters, we focus on the issue of conception. As comprehensively set forth by the Federal Circuit in
Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994):

Conception is the touchstone of inventorship, the completion of the mental part of invention. Sewall v. Walters, 21 F.3d 411, 415, 30 USPQ2d 1356, 1359 (Fed. Cir. 1994). It is “the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376, 231 USPQ 81, 87 (Fed. Cir. 1986) (citation omitted). Conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation. Sewall, 21 F.3d at 415, 30 USPQ2d at 1359; see also Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985) (conception must include every feature of claimed invention). Because it is a mental act, courts require corroborating evidence of a contemporaneous disclosure that would enable one skilled in the art to make the invention. Coleman v. Dines, 754 F.2d at 359, 224 USPQ at 862.

2138.06 "Reasonable Diligence" [R-1]


Reasonable diligence can be shown by establishing that “the attorney worked reasonably hard on the particular application in question during the continuous critical period.” Bey v. Kollonitsch, 806 F.2d 1024, 1027 (Fed. Cir. 1986).