718 Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c) [R-10.2019]

Created On
byChhabra Law Firm

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159.]

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

*****

  • (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.

See MPEP §§ 804.03 and 2146 – 2146.03 for subject matter disqualified as prior art under pre-AIA 35 U.S.C. 103(c) where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.

37 CFR 1.131(c) addresses those situations in which the rejection in an application or patent under reexamination to be overcome is a rejection under 35 U.S.C. 103 (based on prior art under pre-AIA 35 U.S.C. 102) in view of a U.S. patent or U.S. patent application publication which is not prior art under pre-AIA 35 U.S.C. 102(b) due to the requirement in 37 CFR 1.131(a) that any U.S. patent or U.S. patent application publication to be antedated not claim interfering subject matter (as defined in 37 CFR 41.203(a)) as the application or patent under reexamination. The applicant or patent owner is also prevented from proceeding in an interference due to the provision in 37 CFR 41.206 that an interference will not normally be declared or continued between applications that are commonly owned, or an application and an unexpired patent that are commonly owned.

As 37 CFR 1.131(c) addresses those situations in which the inventions defined by the claims in the application or patent under reexamination and by the claims in the U.S. patent or patent application publication are not patentably distinct, 37 CFR 1.131(c)(1) requires a terminal disclaimer in accordance with 37 CFR 1.321(c), and 37 CFR 1.131(c)(2) requires an oath or declaration stating, inter alia, that the inventor named in the application or patent under reexamination is the prior inventor under pre-AIA 35 U.S.C. 104. The inventor named in the application or patent under reexamination must have invented the claimed subject matter before the actual date of invention of the subject matter of the reference claims. The affidavit or declaration may be signed by the inventor(s), the attorney or agent of record, or assignee(s) of the entire interest. It is noted that a terminal disclaimer is only effective in overcoming a nonstatutory double patenting rejection and cannot be used to overcome statutory double patenting. See MPEP § 804, subsection I.B.2.

The phrase “prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013” requires that the inventor named in the application or patent be the prior inventor within the meaning of pre-AIA 35 U.S.C. 104, in that an applicant or patent owner may not:

  • (A) establish a date of invention in a foreign country other than a NAFTA or WTO member country;
  • (B) establish a date of invention in a WTO member country other than a NAFTA country earlier than January 1, 1996; or
  • (C) establish a date of invention in a NAFTA country other than the U.S. earlier than December 8, 1993.

A U.S. patent or U.S. patent application publication that anticipates the claimed subject matter cannot be disqualified as prior art under pre-AIA 35 U.S.C. 103(c) or 37 CFR 1.131(c).