Joseph Robinson has over 20 years of experience in all aspects of intellectual property law.
He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields.
Reduction to practice may be constructive and satisfied through filing a patent application. In this regard, the Dissent believed the Board had not imposed too stringent a standard and commented that the Court’s cases have phrased the diligence test in a variety of terms including “reasonably continuous diligence,” “continuity of activity which constitutes reasonable diligence,” “continuously or reasonably diligent,” “continuous exercise of reasonable diligence,” etc. Joe also focuses on complex inter partes matters before the U. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website. Pre-AIA section 102(g) permits a patentee to antedate a reference by proving earlier conception and reasonable diligence in reducing an invention to practice. According to the Dissent, the precise articulation of the test is not so important, and rather, “[w]hat matters is that the party seeking priority ‘account for the entire period during which diligence is required.’” Measured that way, the Dissent would have found the Board’s treatment supportable by substantial evidence for one gap of inactivity and therefore sufficient overall. The Board found, however, that the inventor had not been reasonably diligent in reducing the invention to practice, determined that conception therefore did not need to be addressed, found JP’551 to be prior art, and found all claims at issue to be anticipated or obvious in view of JP’551 singly or in combination with FR’149. The Dissent, in focusing on one particular gap of inactivity of 19 days, indicated there was no corroborating evidence to substantiate the inventor’s testimony of typically working 80 hours each week and performing four to six surgeries per week, and offered that a reasonable mind could find a lack of diligence for that period based on the lack of corroborating evidence.