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37 CFR 1.131 Declarations

37 CFR 1.131 Declarations. Robert J. Hill, Jr. Quality Assurance Specialist 703-308-4314 Robert.Hill@USPTO.Gov. What will be covered? . When is a declaration under 37 CFR 1.131 appropriate? Who can file a declaration under 37 CFR 1.131? What must a declaration under 37 CFR 1.131 establish?

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37 CFR 1.131 Declarations

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  1. 37 CFR 1.131 Declarations Robert J. Hill, Jr. Quality Assurance Specialist 703-308-4314 Robert.Hill@USPTO.Gov

  2. What will be covered? • When is a declaration under 37 CFR 1.131 appropriate? • Who can file a declaration under 37 CFR 1.131? • What must a declaration under 37 CFR 1.131 establish? • An Unusual Situation

  3. 37 CFR 1.131 • “When any claim of an application…is rejected, the inventor of the subject matter of the rejected claim…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… .” (emphasis added).

  4. Purpose of Declarations Under 37 CFR 1.131 Swearing behind a reference

  5. Inappropriate Situations for a 131 Declaration • The rejection is based upon a statutory bar • Reference is prior art under: • 35 U.S.C. 102(b) • 35 U.S.C. 102(d) • 35 U.S.C. 102(f) • 35 U.S.C. 102(g)

  6. Inappropriate Situations for a 131 Declaration • Reference is: • U.S. Patent • Published U.S. Patent Application • And: • Claims the same patentable invention • Same in a 35 U.S.C. 102 sense • Obvious in a 35 U.S.C. 103 sense

  7. Appropriate Situations for a 131 Declaration • Reference is: • Prior art applied under 35 U.S.C. 102(a) or (e) • By another • And: • Does not claim the same patentable invention

  8. Who Must Sign a Declaration Under 37 CFR 1.131? • The inventor of the subject matter of the rejected claim • The owner of the patent under reexamination • A party qualified under 37 CFR 1.42, 1.43, or 1.47 • 1.42 – legal representative of dead inventor • 1.43 – legal representative of insane or legally incapacitated inventor • 1.47 – appropriate representative when an inventor refuses to sign

  9. What Must a Declaration Under 37 CFR 1.131 Show? • Prior Invention • What the inventors did • When they did it • Where the work was done

  10. Prior Invention • Reduction to practice of the invention • Conception of the invention coupled with diligence to actual reduction to practice • Conception of the invention coupled with diligence to the filing of the application

  11. Evidence of Conception or Reduction to Practice • Attached sketches • Attached blueprints • Attached photographs • Attached reproductions of notebook entries • An accompanying model • Attached supporting statements by witnesses, where verbal disclosures are the evidence relied upon • Testimony given in an interference • Disclosure document (MPEP 1706)

  12. Dates • Conception or Reduction to Practice: • Actual dates • Allegation of actions prior to a specific date • Can be redacted from the evidence • Must be dealt with in the body of the declaration • Diligence • Actual dates required

  13. Diligence • Coupled with conception • Only after conception is established • Prior to effective date of reference to reduction to practice • Actual • Constructive • Not required after reduction to practice

  14. Diligence • Actual dates required • Allegation not enough • Evidence of facts establishing diligence • No degrees of diligence • All activity and inactivity should be explained and supported

  15. Where must acts relied upon be carried out? • United States • NAFTA Country • Not before December 8, 1993 • WTO Member Country • Not before January 1, 1996

  16. How much of the claimed invention needs to shown? • Depends on the claim and the reference • General rule as to generic claims • Many times would not apply to chemical or biotechnology applications • Species claim • Reference species • Same • Different • Genus claim • Reference species • Reference genus

  17. Seasonable Presentation • Prior to final • Before appeal where no final is present • After final • With first response to new ground of rejection in final • Showing under 37 CFR 1.116(c) or 37 CFR 1.195 • With 37 CFR 1.129(a) request

  18. An Unusual Situation • Inventor A at company XYZ invents M and N and files an application disclosing M and N but only claiming M • XYZ decides that N cannot be commercialized – so it is not claimed • Inventor B at company XYZ modifies N to N’ (commercially feasible) • Patent on M issues • Subsequently (after 11/29/99) but less than one year after patent on M issues, B files an application to N’

  19. An Unusual Situation Continued • N’ is not obvious over M • N’ is obvious over N • Examiner rejects claims to N’ under 35 U.S.C. 103 using the disclosure of A’s patent • Can B invoke the new 103(c) and just provide a statement of common ownership at the time the invention N’ was made?

  20. An Unusual Situation Continued • Answer: NO • 103(c) is invoked when the reference is only prior art under 102(e), (f), and (g) • Here 102(a) also applies • Solution: • Declaration under 37 CFR 1.131 to “swear behind” the issue date of the reference • No longer prior art under 102(a) • Statement of common ownership at the time the invention N’ was made

  21. Thank You!!

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