715.01 37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits
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In some situations, an applicant may, alternatively, be able to overcome prior art rejections relying on references or activities which are available as prior art under pre-AIA 35 U.S.C. 102(a) or references which are available as prior art under pre-AIA 35 U.S.C. 102(e) by proving that the subject matter relied upon in the reference or activity was applicant’s own invention.
- Similarly, where the reference relied upon in a 35 U.S.C. 103 rejection qualifies as prior art only under pre-AIA 35 U.S.C. 102(f) or (g), or, in an application filed on or after November 29, 1999, under pre-AIA 35 U.S.C. 102(e), applicant may be able to overcome this rejection by proving that the subject matter relied upon and the claimed invention were commonly owned or subject to common assignment at the time the later invention was made.
715.01(a) Reference Is a Joint Patent or Published Application to Applicant and Another
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This MPEP section is 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).
When subject matter disclosed in a patent or patent application publication filed jointly by S and another is claimed in a later application filed by S, the joint patent or joint patent application publication is a valid reference under pre-AIA 35 U.S.C. 102(a), (e), or (f) unless overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention or by an affidavit or declaration under 37 CFR 1.132.
- An unequivocal declaration under 37 CFR 1.132 by S that he/she conceived or invented the subject matter that was disclosed but not claimed in the patent or application publication and relied on in the rejection would be sufficient to overcome the rejection.
- Where the reference is a U.S. patent or patent application publication which includes a claim reciting the subject matter relied upon in a rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination, a declaration under 37 CFR 1.132 must also explain the presence of the additional inventor in the reference (e.g., the disclosure in claim 1 of the reference is relied upon to reject the claims; the affidavit or declaration explains that S is the sole inventor of claim 1, and the additional inventor and S are joint inventors of claim 2 of the reference).
- Disclaimer by the other patentee or applicant of the patent application publication should not be required but, if submitted, may be accepted by the examiner.
Note that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming another inventor which claims interfering subject matter.
Although affidavits or declarations submitted for the purpose of establishing that the reference discloses applicant’s invention are properly filed under 37 CFR 1.132, rather than 37 CFR 1.131(a), such affidavits submitted improperly under 37 CFR 1.131(a) will be considered as though they were filed under 37 CFR 1.132 to traverse a ground of rejection.
715.01(b) Reference and Application Have Common Assignee
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The mere fact that the reference patent or application publication which shows but does not claim certain subject matter and the application which claims it are owned by the same assignee does not avoid the necessity of filing an affidavit or declaration under 37 CFR 1.131(a), in the absence of a showing under 37 CFR 1.132 that the patentee derived the subject matter relied on from the applicant.
- Where, however, a rejection is applied under pre-AIA 35 U.S.C. 102(f)/103 or pre-AIA 35 U.S.C. 102(g)/103, or, in an application filed on or after November 29, 1999, under pre-AIA 35 U.S.C. 102(e)/103 using the reference, a showing that the invention was commonly owned, or subject to an obligation of assignment to the same person, at the time the later invention was made would preclude such a rejection or be sufficient to overcome such a rejection.
715.01(c) Reference Is Publication of Applicant’s Own Invention
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Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 prior art based on a publication may be overcome by a showing that it was published either by applicant himself/herself or on his/her behalf.
- Since such a showing is not made to show a date of invention by applicant prior to the date of the reference under 37 CFR 1.131(a), the limitation in pre-AIA 35 U.S.C. 104 and in 37 CFR 1.131(a) that only acts which occurred in this country or in a NAFTA or WTO member country may be relied on to establish a date of invention is not applicable.
I. CO-AUTHORSHIP
Where the applicant is one of the co-authors of a publication cited against his or her application, he or she may overcome the rejection by filing an affidavit or declaration under 37 CFR 1.131(a).
- Alternatively, the applicant may overcome the rejection by filing a specific affidavit or declaration under 37 CFR 1.132 establishing that the article is describing applicant’s own work.
- An affidavit or declaration by applicant alone indicating that applicant is the sole inventor and that the others were merely working under his or her direction is sufficient to remove the publication as a reference under pre-AIA 35 U.S.C. 102(a).
II. DERIVATION
When the unclaimed subject matter of a patent, application publication, or other publication is applicant’s own invention, a rejection, which is not a statutory bar, on that patent or publication may be removed by submission of evidence establishing the fact that the patentee, applicant of the published application, or author derived his or her knowledge of the relevant subject matter from applicant.
- Moreover applicant must further show that he or she made the invention upon which the relevant disclosure in the patent, application publication, or other publication is based.
715.01(d) Activities Applied Against the Claims
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715.02 How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims
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Where the examiner, in rejecting a claim under pre-AIA 35 U.S.C. 103, has treated a claim limitation as being an obvious feature or modification of the disclosure of the reference(s) relied upon, without citation of a reference which teaches such feature or modification, a 37 CFR 1.131(a) affidavit or declaration may be sufficient to overcome the rejection even if it does not show such feature or modification.
Even if applicant’s 37 CFR 1.131(a) affidavit is not fully commensurate with the rejected claim, the applicant can still overcome the rejection by showing that the differences between the claimed invention and the showing under 37 CFR 1.131(a) would have been obvious to one of ordinary skill in the art, in view of applicant’s 37 CFR 1.131(a) evidence, prior to the effective date of the reference(s) or the activity.
I. SWEARING BEHIND ONE OF A PLURALITY OF COMBINED REFERENCES
Applicant may overcome a pre-AIA 35 U.S.C. 103 rejection based on a combination of references by showing completion of the invention by applicant prior to the effective date of any of the references; applicant need not antedate the reference with the earliest filing date.
Where a claim has been rejected under pre-AIA 35 U.S.C. 103 based on Reference A in view of Reference B, with the effective date of secondary Reference B being earlier than that of Reference A, the applicant can rely on the teachings of Reference B to show that the differences between what is shown in his or her 37 CFR 1.131(a) affidavit or declaration and the claimed invention would have been obvious to one of ordinary skill in the art prior to the date of Reference A. However, the 37 CFR 1.131(a) affidavit or declaration must still establish possession of the claimed invention, not just what Reference A shows, if Reference A does not teach the basic inventive concept.
II. GENERAL RULE AS TO GENERIC CLAIMS
A reference or activity applied against generic claims may (in most cases) be antedated as to such claims by an affidavit or declaration under 37 CFR 1.131(a) showing completion of the invention of only a single species, within the genus, prior to the effective date of the reference or activity (assuming, of course, that the reference or activity is not a statutory bar or a patent, or an application publication, claiming the same invention).
715.03 Genus-Species, Practice Relative to Cases Where Predictability Is in Question
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Where generic claims have been rejected on a reference or activity which discloses a species not antedated by the affidavit or declaration, the rejection will not ordinarily be withdrawn, subject to the rules set forth below, unless the applicant is able to establish that he or she was in possession of the generic invention prior to the effective date of the reference or activity.
- In other words, the affidavit or declaration under 37 CFR 1.131(a) must show as much as the minimum disclosure required by a patent specification to furnish support for a generic claim.
I. REFERENCE OR ACTIVITY DISCLOSES SPECIES
A. Species Claim
Where the claim under rejection recites a species and the reference or activity discloses the claimed species, the rejection can be overcome under 37 CFR 1.131(a) directly by showing prior completion of the claimed species or indirectly by a showing of prior completion of a different species coupled with a showing that the claimed species would have been an obvious modification of the species completed by applicant.
B. Genus Claim
The principle is well established that the disclosure of a species in a cited reference is sufficient to prevent a later applicant from obtaining a “generic claim.”
C. Species Versus Embodiments
References or activities which disclose one or more embodiments of a single claimed invention, as opposed to species of a claimed genus, can be overcome by filing a 37 CFR 1.131(a) affidavit showing prior completion of a single embodiment of the invention, whether it is the same or a different embodiment from that disclosed in the reference or activity.
II. REFERENCE OR ACTIVITY DISCLOSES CLAIMED GENUS
In general, where the reference or activity discloses the claimed genus, a showing of completion of a single species within the genus is sufficient to antedate the reference or activity under 37 CFR 1.131(a).
715.04 Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations
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I. WHO MAY MAKE AFFIDAVIT OR DECLARATION
Affidavits or declarations filed under 37 CFR 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 102 or 103 must be made by either:
- (A) All the inventors of the subject matter claimed.
- (B) Less than all named inventors of an application if it is shown by affidavit or declaration that less than all named inventors of an application invented the subject matter of the claim or claims under rejection.
- For example, one of two joint inventors is accepted where it is shown that one of the joint inventors is the sole inventor of the claim or claims under rejection.
- (C) For affidavits and declarations submitted in an application filed before September 16, 2012, a joint inventor or assignee was granted or the application was accepted under pre-AIA 37 CFR 1.42 or 1.43.
- (D) For affidavits and declarations in applications filed before September 16, 2012, the legal representive of a deceased, insane or otherwise legally incapacitated inventor under pre-AIA 37 CFR 1.42 or 1.43.
- (E) For affidavits and declarations submitted in applications filed on or after September 16, 2012, the party qualified under 37 CFR 1.42 or 1.46.
- (F) The assignee or other party in interest when it is not possible to produce the affidavit or declaration of the inventor.
- (G) The owner of the patent under reexamination.
For affidavits and declarations submitted in applications filed before September 16, 2012, where one or more of the named inventors of the subject matter of the rejected claim(s) (who had originally signed the oath or declaration for patent application under 37 CFR 1.63) is thereafter unavailable to sign an affidavit or declaration under 37 CFR 1.131(a), the affidavit or declaration under 37 CFR 1.131(a) may be signed by the remaining joint inventors provided a petition under 37 CFR 1.183 requesting waiver of the signature of the unavailable inventor is submitted with the affidavit or declaration.
Proof that the non-signing inventor is unavailable or cannot be found (similar to the proof required for a petition under pre-AIA 37 CFR 1.47) must be submitted with the petition under 37 CFR 1.183.
II. FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS
An affidavit is a statement in writing made under oath before a notary public, magistrate, or officer authorized to administer oaths.
715.05 U.S. Patent or Application Publication Claiming Same Invention
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If the reference is claiming the same invention as the application and its publication date is less than 1 year prior to the presentation of claims to that invention in the application, this fact should be noted in the Office action.
- The reference can then be overcome only by way of interference.
If the reference is a U.S. patent which claims the same invention as the application and its issue date is more than 1 year prior to the presentation of claims to that invention in the application, a rejection of the claims of the application under pre-AIA 35 U.S.C. 135(b)(1) applicable generally to applications subject to pre-AIA 35 U.S.C. 102 should be made.
If the reference is a U.S. patent application publication under 35 U.S.C. 122(b), or a WIPO publication on an international application filed on or after November 29, 2000, which claims the same invention as the application being examined and its publication date is more than 1 year prior to the presentation of claims to that invention in the application being examined, a rejection of the claims of the application (being examined) under pre-AIA 35 U.S.C. 135(b)(2) applicable generally to applications subject to pre-AIA 35 U.S.C. 102 should be made only if the application being examined was filed after the publication date of the reference.
- Where the reference 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 reference 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.
If the application (or patent under reexamination) and the domestic reference contain claims which are identical, or which are not patentably distinct, then the application and patent are claiming "interfering subject matter" as defined in 37 CFR 41.203(a).
An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.
- An applicant who is claiming an invention which is identical to, or obvious in view of, the invention as claimed in a domestic patent or patent application publication cannot employ an affidavit under 37 CFR 1.131(a) as a means for avoiding an interference with the reference.
Since 37 CFR 1.131(a) defines "interfering subject matter" in the same way as the interference rules, the USPTO cannot prevent an applicant from overcoming a reference by a 37 CFR 1.131(a) affidavit or declaration on the grounds that the reference claims applicant’s invention and, at the same time, deny applicant an interference on the grounds that the claims of the application and those of the reference are not for substantially the same invention.
715.07 Facts and Documentary Evidence
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I. GENERAL REQUIREMENTS
The allegations of fact might be supported by submitting as evidence one or more of the following:
- (A) attached sketches;
- (B) attached blueprints;
- (C) attached photographs;
- (D) attached reproductions of notebook entries;
- (E) an accompanying model;
- (F) attached supporting statements by witnesses, where verbal disclosures are the evidence relied upon.
- (G) testimony given in an interference. Where interference testimony is used, the applicant must point out which parts of the testimony are being relied on; examiners cannot be expected to search the entire interference record for the evidence;
- (H) documents submitted under the Disclosure Document Program (discontinued February 1, 2007) may be used as documentary evidence of conception.
Applicant must give a clear explanation of the exhibits pointing out exactly what facts are established and relied on by applicant.
II. ESTABLISHMENT OF DATES
If the dates of the exhibits have been removed or blocked off, the matter of dates can be taken care of in the body of the oath or declaration.
When alleging that conception or a reduction to practice occurred prior to the effective date of the reference, the dates in the oath or declaration may be the actual dates or, if the applicant or patent owner does not desire to disclose his or her actual dates, he or she may merely allege that the acts referred to occurred prior to a specified date.
- However, the actual dates of acts relied on to establish diligence must be provided.
III. THREE WAYS TO SHOW PRIOR INVENTION
The affidavit or declaration must state FACTS and produce such documentary evidence and exhibits in support thereof as are available to show conception and completion of invention in this country or in a NAFTA or WTO member country, at least the conception being at a date prior to the effective date of the reference.
- Where there has not been reduction to practice prior to the date of the reference, the applicant or patent owner must also show diligence in the completion of his or her invention from a time just prior to the date of the reference continuously up to the date of an actual reduction to practice or up to the date of filing his or her application.
37 CFR 1.131(b) provides three ways in which an applicant can establish prior invention of the claimed subject matter. The showing of facts must be sufficient to show:
- (A) (actual) reduction to practice of the invention prior to the effective date of the reference; or
- (B) conception of the invention prior to the effective date of the reference coupled with due diligence from prior to the reference date to a subsequent (actual) reduction to practice; or
- (C) conception of the invention prior to the effective date of the reference coupled with due diligence from prior to the reference date to the filing date of the application (constructive reduction to practice).
A conception of an invention, though evidenced by disclosure, drawings, and even a model, is not a complete invention under the patent laws, and confers no rights on an inventor, and has no effect on a subsequently granted patent to another, UNLESS THE INVENTOR FOLLOWS IT WITH REASONABLE DILIGENCE BY SOME OTHER ACT, such as an actual reduction to practice or filing an application for a patent.
The purpose of filing a [37 CFR 1.]131 affidavit is not to demonstrate prior invention, per se, but merely to antedate the effective date of a reference.
715.07(a) Diligence
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Determining the sufficiency of a 37 CFR 1.131(a) affidavit or declaration, diligence need not be considered unless conception of the invention prior to the effective date is clearly established, diligence comes into question only after prior conception is established.
Under 37 CFR 1.131(a), the critical period in which diligence must be shown begins just prior to the effective date of the reference or activity and ends with the date of a reduction to practice, either actual or constructive (i.e., filing a United States patent application).
715.07(b) Interference Testimony Sometimes Used
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715.07(c) Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country
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(a) IN GENERAL.—
(1) PROCEEDINGS.—In proceedings in the Patent and Trademark Office, in the courts, and before any other competent authority, an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a foreign country other than a NAFTA country or a WTO member country, except as provided in sections 119 and 365 of this title.
(2) RIGHTS.—If an invention was made by a person, civil or military—(A) while domiciled in the United States, and serving in any other country in connection with operations by or on behalf of the United States,
(B) while domiciled in a NAFTA country and serving in another country in connection with operations by or on behalf of that NAFTA country, or
(C) while domiciled in a WTO member country and serving in another country in connection with operations by or on behalf of that WTO member country, that person shall be entitled to the same rights of priority in the United States with respect to such invention as if such invention had been made in the United States, that NAFTA country, or that WTO member country, as the case may be.(3) USE OF INFORMATION.—To the extent that any information in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or disproving a date of invention has not been made available for use in a proceeding in the Patent and Trademark Office, a court, or any other competent authority to the same extent as such information could be made available in the United States, the Director, court, or such other authority shall draw appropriate inferences, or take other action permitted by statute, rule, or regulation, in favor of the party that requested the information in the proceeding.
(b) DEFINITIONS.—As used in this section—
(1) The term “NAFTA country” has the meaning given that term in section 2(4) of the North American Free Trade Agreement Implementation Act; and
(2) The term “WTO member country” has the meaning given that term in section 2(10) of the Uruguay Round Agreements Act.
The 37 CFR 1.131(a) affidavit or declaration must contain an allegation that the acts relied upon to establish the date prior to the reference or activity were carried out in this country or in a NAFTA country or WTO member country.
715.09 Timely Presentation
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Affidavits and declarations submitted under 37 CFR 1.131(a) and other evidence traversing rejections are considered timely if submitted:
- prior to a final rejection;
- before appeal in an application not having a final rejection;
- after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier; or
- after the prosecution is closed (e.g., after a final rejection, after appeal, or after allowance) if applicant files the affidavit or other evidence with a request for continued examination (RCE); or a continued prosecution application (CPA).
All admitted affidavits and declarations are acknowledged and commented upon by the examiner in his or her next succeeding action.
Review of an examiner’s refusal to enter an affidavit as untimely is by petition and not by appeal to the Patent Trial and Appeal Board.
715.10 Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode
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Any affidavits or declarations submitted under 37 CFR 1.131(a) and the accompanying evidence must be reviewed carefully by the examiner in order to determine whether they show that the claimed invention was “in public use” or “on sale” in this country more than one year prior to the effective filing date of the application, which acts constitute a statutory bar under pre-AIA 35 U.S.C. 102(b).
- Although the rejection based on the reference(s) or activity sought to be antedated may actually be overcome by such an affidavit or declaration, the effect of the applicant’s prior “public use” or “on sale” activities may not be overcome under 37 CFR 1.131(a).
Where the 37 CFR 1.131(a) evidence relies on an embodiment of the invention not disclosed in the application, the question of whether the application includes the “best mode” must be considered.
- However, a “best mode” rejection should not be made unless the record, taken as a whole, establishes by a preponderance of the evidence that applicant's specification has not set forth the best mode contemplated by the inventor of carrying out the invention.
» 716 Affidavits or Declarations Traversing Rejections, 37 CFR 1.132
