715 Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) [R-07.2022]

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byChhabra Law Firm

715 Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) [R-07.2022]

[Editor Note: This MPEP section and the provisions of 37 CFR 1.131(a) are not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]

37 CFR 1.131  Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.

  • (a) When any claim of an application or a patent under reexamination is rejected, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination, or the party qualified under § 1.42 or § 1.46, may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. The effective date of a U.S. patent, U.S. patent application publication, or international application publication under PCT Article 21(2) is the earlier of its publication date or the date that it is effective as a reference under 35 U.S.C. 102(e) as in effect on March 15, 2013. Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. Prior invention may not be established under this section if either:
    • (1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application naming another inventor which claims interfering subject matter as defined in § 41.203(a) of this chapter, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this chapter; or
    • (2) The rejection is based upon a statutory bar.
  • (b) The showing of facts for an oath or declaration under paragraph (a) of this section shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained.
  • (c) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
    • (1) A terminal disclaimer in accordance with § 1.321(c); and
    • (2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.
  • (d) The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
    • (1) A claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013; or
    • (2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013.
  • (e) In an application for patent to which the provisions of § 1.130 apply, and to any patent issuing thereon, the provisions of this section are applicable only with respect to a rejection under 35 U.S.C. 102(g) as in effect on March 15, 2013.

Under 37 CFR 1.131(a) which provides for the establishment of a date of completion of the invention in a NAFTA or WTO member country, as well as in the United States, an applicant or patent owner can establish a date of completion in a NAFTA member country on or after December 8, 1993, the effective date of section 331 of Public Law 103-182, the North American Free Trade Agreement Act, and can establish a date of completion in a WTO member country other than a NAFTA member country on or after January 1, 1996, the effective date of section 531 of Public Law 103-465, the Uruguay Round Agreements Act (URAA). Acts occurring prior to the effective dates of NAFTA or URAA may be relied upon to show completion of the invention; however, a date of completion of the invention may not be established under 37 CFR 1.131(a) before December 8, 1993, in a NAFTA country or before January 1, 1996, in a WTO country other than a NAFTA country, in applications subject to pre-AIA 35 U.S.C. 104.

If a country joined the WTO after January 1, 1996, the effective date for proving inventive activity in that country for the purpose of pre-AIA 35 U.S.C. 104 and 37 CFR 1.131(a) is the date the country becomes a member of the WTO. See MPEP § 213.01 for a list that includes WTO member countries.

Any printed publication or activity dated prior to an applicant’s or patent owner’s effective filing date, or any domestic patent of prior filing date, which is in its disclosure pertinent to the claimed invention, is available for use by the examiner as a reference in the rejection of the claims of the application or patent under reexamination. In addition, patent application publications and certain international application publications having an effective prior art date prior to the application being examined may be used in a rejection of the claims. See MPEP §§ 2136 – 2136.03.

Such a rejection may be overcome, in certain instances noted below, by filing of an affidavit or declaration under 37 CFR 1.131(a), known as “swearing behind” the reference.

It should be kept in mind that it is the rejection that is withdrawn and not the reference.

I. SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS CAN BE USED

Affidavits or declarations under 37 CFR 1.131 may be used to overcome rejections in applications subject to pre-AIA 35 U.S.C. 102, and to overcome rejections under pre-AIA 35 U.S.C. 102(g) in applications subject to pre-AIA 35 U.S.C. 102(g) and current 35 U.S.C. 102, for example:

II. SITUATIONS WHERE 37 CFR 1.131(a) AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE

An affidavit or declaration under 37 CFR 1.131(a) is not appropriate in the following situations:

  • (A) Where the application is subject to current 35 U.S.C. 102 and the affidavit or declaration is not directed to evidence used in a rejection based on pre-AIA 35 U.S.C. 102(g).
  • (B) Where the reference publication date is more than 1 year prior to applicant’s or patent owner’s effective filing date. Such a reference is a “statutory bar” under pre-AIA 35 U.S.C. 102(b) as referenced in 37 CFR 1.131(a)(2). A reference that only qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or (e) is not a “statutory bar.”
  • (C) Where the reference U.S. patent or U.S. patent application publication claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05 for a discussion of “interfering subject matter” and MPEP Chapter 2300 . Where the reference patent and the application or patent under reexamination are commonly owned, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent are not identical but are not patentably distinct, a terminal disclaimer and an affidavit or declaration under 37 CFR 1.131(c) may be used to overcome a rejection under 35 U.S.C. 103. See MPEP § 718.
  • (D) Where the reference is a foreign patent for the same invention to applicant or patent owner or their legal representatives or assigns issued prior to the filing date of the domestic application or patent on an application filed more than 12 months prior to the filing date of the domestic application. See pre-AIA 35 U.S.C. 102(d).
  • (E) Where the effective filing date of applicant’s or patent owner’s parent application or an International Convention proved filing date is prior to the effective date of the reference, an affidavit or declaration under 37 CFR 1.131(a) is unnecessary because the reference should not have been used. See MPEP §§ 211 – 216.
  • (F) Where the reference is a prior U.S. patent to the same entity, claiming the same invention. The question involved is one of “double patenting.”
  • (G) Where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art. In this case, that subject matter may be used as a basis for rejecting their claims and may not be overcome by an affidavit or declaration under 37 CFR 1.131. In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA 1964); In re Lopresti, 333 F.2d 932, 142 USPQ 177 (CCPA 1964).
  • (H) Where the subject matter relied upon is prior art under pre-AIA 35 U.S.C. 102(f).
  • (I) Where the subject matter corresponding to a lost count in an interference is either prior art under pre-AIA 35 U.S.C. 102(g) or barred to applicant by the doctrine of interference estoppel. In re Bandel, 348 F.2d 563, 146 USPQ 389 (CCPA 1965); In re Kroekel, 803 F.2d 705, 231 USPQ 640 (Fed. Cir. 1986). See also In re Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992) (Under the principles of res judicata and collateral estoppel, applicant was not entitled to claims that were patentably indistinguishable from the claim lost in interference even though the subject matter of the lost count was not available for use in an obviousness rejection under 35 U.S.C. 103). But see In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989) (A losing party to an interference, on showing that the invention now claimed is not “substantially the same” as that of the lost count, may employ the procedures of 37 CFR 1.131(a) to antedate the filing date of an interfering application). On the matter of when a “lost count” in an interference constitutes prior art under pre-AIA 35 U.S.C. 102(g), see In re McKellin, 529 F.2d 1342, 188 USPQ 428 (CCPA 1976) (A count is not prior art under pre-AIA 35 U.S.C. 102(g) as to the loser of an interference where the count was lost based on the winner’s foreign priority date). Similarly, where one party in an interference wins a count by establishing a date of invention in a NAFTA or WTO member country (see pre-AIA 35 U.S.C. 104), the subject matter of that count is unpatentable to the other party by the doctrine of interference estoppel, even though it is not available as statutory prior art under pre-AIA 35 U.S.C. 102(g). See MPEP §§ 2138.01 and 2138.02.

III. REFERENCE DATE TO BE OVERCOME

The date to be overcome under 37 CFR 1.131(a) is the effective date of the reference (i.e., the date on which the reference is available as prior art).

A. U.S. Patents, U.S. Patent Application Publications, and International Application Publications

See MPEP §§ 2136 – 2136.03 for a detailed discussion of the effective date of a U.S. patent, U.S. patent application publication, or WIPO publication of an international application as a reference under pre-AIA 35 U.S.C. 102(e).

The effective date of a domestic patent when used as a reference in a rejection under pre-AIA 35 U.S.C. 102(e) is not the foreign filing date to which the application for patent may have been entitled under 35 U.S.C. 119(a) during examination. In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966). Therefore, the date to be overcome under 37 CFR 1.131(a) is the effective U.S. filing date, not the foreign priority date. When a U.S. patent or U.S. patent application publication reference is entitled to claim the benefit of an earlier filed application, its effective filing date is determined under pre-AIA 35 U.S.C. 102(e). See MPEP §§ 2136 – 2136.03.

B. Foreign Patents

See MPEP §§ 2126 through 2127 regarding date of availability of foreign patents as prior art.

C. Printed Publications

A printed publication, including a published foreign patent application, is effective as of its publication date, not its date of receipt by the publisher. For additional information regarding effective dates of printed publications, see MPEP §§ 2128 – 2128.02.

D. Activities

An applicant may make an admission, or submit evidence of use of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was used or known by others in this country. See MPEP §§ 2120.02 and 2133.03. The effective date of the activity used to reject the claim(s) is the date the activity was first known to have occurred.

FORM PARAGRAPHS

Form paragraphs 7.57.fti – 7.64.fti may be used to respond to 37 CFR 1.131(a) affidavits.

¶ 7.57.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective- Heading

The [1] filed on [2] under 37 CFR 1.131(a) has been considered but is ineffective to overcome the [3] reference.

Examiner Note:

  • 1. In bracket 1, insert either –affidavit– or –declaration–.
  • 2. This form paragraph must be followed by one or more of form paragraphs 7.58.fti to 7.63.fti or a paragraph setting forth proper basis for the insufficiency, such as failure to establish acts performed in this country, or that the scope of the declaration or affidavit is not commensurate with the scope of the claim(s).

¶ 7.58.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Claiming Same Invention

The [1] reference is a U.S. patent or U.S. patent application publication of a pending or patented application that claims the rejected invention. An affidavit or declaration is inappropriate under 37 CFR 1.131(a) when the reference is claiming interfering subject matter as defined in 37 CFR 41.203(a), see MPEP Chapter 2300. If the reference and this application are not commonly owned, the reference can only be overcome by establishing priority of invention through interference proceedings. See MPEP Chapter 2300 for information on initiating interference proceedings. If the reference and this application are commonly owned, the reference may be disqualified as prior art by an affidavit or declaration under 37 CFR 1.131(c). See MPEP § 718.

Examiner Note:

  • 1. If used to respond to the submission of an affidavit under 37 CFR 1.131(a), this paragraph must be preceded by paragraph 7.57.fti.
  • 2. This form paragraph may be used without form paragraph 7.57.fti when an affidavit has not yet been filed, and the examiner desires to notify applicant that the submission of an affidavit under 37 CFR 1.131(a) would be inappropriate.

¶ 7.59.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Reduction to Practice Before Reference Date

The evidence submitted is insufficient to establish a reduction to practice of the invention in this country or a NAFTA or WTO member country prior to the effective date of the [1] reference. [2]

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.57.fti.
  • 2. An explanation of the lack of showing of the alleged reduction to practice must be provided in bracket 2.

¶ 7.60.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Reference Is a Statutory Bar

The [1] reference is a statutory bar under pre-AIA 35 U.S.C. 102(b) and thus cannot be overcome by an affidavit or declaration under 37 CFR 1.131(a).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.57.fti.

¶ 7.61.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Conception

The evidence submitted is insufficient to establish a conception of the invention prior to the effective date of the [1] reference. While conception is the mental part of the inventive act, it must be capable of proof, such as by demonstrative evidence or by a complete disclosure to another. Conception is more than a vague idea of how to solve a problem. The requisite means themselves and their interaction must also be comprehended. See Mergenthaler v. Scudder, 1897 C.D. 724, 81 OG 1417 (D.C. Cir. 1897). [2]

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.57.fti.
  • 2. An explanation of the deficiency in the showing of conception must be presented in bracket 2.
  • 3. If the affidavit additionally fails to establish either diligence or a subsequent reduction to practice, this form paragraph should be followed by form paragraph 7.62.fti and/or 7.63.fti. If either diligence or a reduction to practice is established, a statement to that effect should follow this paragraph.

¶ 7.62.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Diligence Lacking

The evidence submitted is insufficient to establish diligence from a date prior to the date of reduction to practice of the [1] reference to either a constructive reduction to practice or an actual reduction to practice. [2]

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.57.fti.
  • 2. If the affidavit additionally fails to establish conception, this paragraph must also be preceded by form paragraph 7.61.fti. If the affidavit establishes conception, a statement to that effect should be added to this paragraph.
  • 3. If the affidavit additionally fails to establish an alleged reduction to practice prior to the application filing date, this paragraph must be followed by form paragraph 7.63.fti. If such an alleged reduction to practice is established, a statement to that effect should be added to this paragraph.
  • 4. An explanation of the reasons for a holding of non-diligence must be provided in bracket 2.
  • 5. See MPEP § 715.07(a) which explains that diligence is not required after reduction to practice.

¶ 7.63.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Actual Reduction to Practice

The evidence submitted is insufficient to establish the inventor’s alleged actual reduction to practice of the invention in this country or a NAFTA or WTO member country after the effective date of the [1] reference. [2].

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.57.fti.
  • 2. If the alleged reduction to practice is prior to the effective date of the reference, do not use this paragraph. See form paragraph 7.59.fti.
  • 3. If the affidavit additionally fails to establish either conception or diligence, form paragraphs 7.61.fti and/or 7.62.fti should precede this paragraph. If either conception or diligence is established, a statement to that effect should be included after this paragraph.
  • 4. An explanation of the lack of showing of the alleged reduction to practice must be given in bracket 2.

¶ 7.64.fti Affidavit or Declaration Under 37 CFR 1.131(a): Effective To Overcome Reference

The [1] filed on [2] under 37 CFR 1.31(a) is sufficient to overcome the [3] reference.

Examiner Note:

  • 1. In bracket 1, insert either –affidavit– or –declaration–.
  • 2. In bracket 2, insert the filing date of the affidavit or declaration.
  • 3. In bracket 3, insert the name of the reference.