You are here:  Ed9 10.2019 Guidebook » Appendix IV: Disqualify Prior Art

715    Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a)

MPEP SECTION SUMMARY

This section discusses swearing behind a reference with an affidavit or declaration under 37 C.F.R. 1.131(a). Swearing back, (also called an affidavit or declaration under 37 C.F.R. 1.131) may be used to overcome rejections where the prior art used to establish the rejection was not by “another”, but filed by the same inventor.

This section covers situations where 37 C.F.R. 1.131 affidavits or declarations can and cannot be used and the reference date to be overcome.

  Section Frequency Chart

Key
2
4
6
8
10
715
   

  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).

37 C.F.R. 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 and can establish a date of completion in a WTO member country other than a NAFTA member country on or after January 1, 1996.

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.

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 back” of the reference.


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

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:

  • To antedate a reference or activity that qualifies as prior art under pre-AIA 35 U.S.C. 102(a) and not under pre-AIA 35 U.S.C. 102(b), e.g., where the prior art date under pre-AIA 35 U.S.C. 102(a) of the patent, the publication or activity used to reject the claim(s) is less than 1 year prior to applicant’s or patent owner’s effective filing date.
    • If the prior art reference under pre-AIA 35 U.S.C. 102(a) is a U.S. patent or U.S. patent application publication, the reference may not be antedated if it claims interfering subject matter.
  • To antedate a reference that qualifies as prior art under pre-AIA 35 U.S.C. 102(e), where the reference has a prior art date under pre-AIA 35 U.S.C. 102(e) prior to applicant’s effective filing date, and shows but does not claim interfering subject matter.
  • During examination, to antedate an activity that qualifies as prior art under pre-AIA 35 U.S.C. 102(g) and not under pre-AIA 35 U.S.C. 102(b), e.g., where the prior art date under pre-AIA 35 U.S.C. 102(g) of the activity used to reject the claim(s) is less than 1 year prior to applicant’s or patent owner’s effective filing date.
    • If the evidence of the activity under pre-AIA 35 U.S.C. 102(g) is a U.S. patent or U.S. patent application publication, the evidence may not be antedated if it claims interfering subject matter.


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.
  • (C) Where the reference U.S. patent or U.S. patent application publication claims interfering subject matter. 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.
  • (D) Where the reference is a foreign patent for the same invention to applicant or patent owner or his or her 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.
  • (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.
  • (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 his or her claims and may not be overcome by an affidavit or declaration under 37 CFR 1.131.
  • (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.


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.

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).

A printed publication, including a published foreign patent application, is effective as of its publication date, not its date of receipt by the publisher.

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.

  • The effective date of the activity used to reject the claim(s) is the date the activity was first known to have occurred.

 

» 715.01 37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits