Patents filed before March 16, 2013 are governed by the “first-to-invent” standard. The inventor can try to prove she was the first to invent (even if second to file) and still get a patent, even if prior art already disclosed the invention when the patent was filed.
But there’s a catch. We don’t want inventors making things and then waiting years before filing a patent. We require inventors be diligent in working on their invention and filing for the patent. But this standard for diligence is a little loose and hard to apply.
In a 2-1 decision, a Federal Circuit panel reversed a PTO decision that found no diligence in the critical time period. The panel concluded (entertainingly) that continuous exercise of reasonable diligence is different from reasonably continuous diligence:
A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence.
(emphasis original)
In this case the inventor of a surgical tool tried to prove he invented the tool before the publication of a certain Japanese patent application. The Japanese patent application predated his own patent filing by about three months. The inventor testified that he was “reasonably diligent” in working on his invention and patent during that time period, but the PTO found his explanations lacking for some gaps of time during those three months.
The majority said the PTO was too strict by unduly focusing on the gaps:
[T]he point of the diligence analysis is not to scour the patent owner’s corroborating evidence in search of intervals of time where the patent owner has failed to substantiate some sort of activity. It is to assure that, in light of the evidence as a whole, “the invention was not abandoned or unreasonably delayed.”
Basically the PTO couldn’t see the forest for the trees.
Judge Schall, writing in dissent, disagreed and argued (1) those gaps still needed to be explained; and (2) the PTO wasn’t clearly wrong, which is what the Federal Circuit needs to determine.
In any case, this kind of esoteric dispute is one of the primary reasons patent law is so unpredictable and expensive. This isn’t even an opposed proceeding. Imagine the litigation.