Q) 1.131 and 1.132 Affidavits (MPEP 700, In Progress*)

by patentbar on May 12, 2007 · 25 comments

in Exam Questions

Question 1 –

Question asking who can sign a 1.132 petition showing that a previous invention was not by another. The subject matter of the question is “Application A” and “Patent X”. The answer choices included variations of: declarations or statements from:

A) the owner of Application A,

B) the inventor of Application A,

C) the inventor of Patent X,

D) the attorney, and

E) there was another choice.

2 answers were accepted because the inventor is in a position to have the best knowledge of ownership of the invention – or something along those lines – but the original correct answer was the attorney can send in a statement.

{ 25 comments… read them below or add one }

1 patentbarNo Gravatar December 20, 2007 at 10:13 pm

NOTE – this pertains to 1.131 NOT 1.132.

MPEP 715.05 WHO MAY MAKE AFFIDAVIT OR DECLARATION
The following parties may make an affidavit or declaration under 37 CFR 1.131

(A)All the inventors of the subject matter claimed.
(B)An affidavit or declaration by less than all named inventors of an application is accepted where it is shown 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)If a petition under 37 CFR 1.47 was granted or the application was accepted under 37 CFR 1.42 or 1.43, the affidavit or declaration may be signed by the 37 CFR 1.47 applicant or the legal representative, where appropriate.
(D)The assignee or other party in interest when it is not possible to produce the affidavit or declaration of the inventor. Ex parte Foster, 1903 C.D. 213, 105 O.G. 261 (Comm’r Pat. 1903).

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2 maggieNo Gravatar November 15, 2011 at 4:02 pm

I think this is very similar to the Laurel, Abbot and Hardy (4.00.14a) Q

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3 patentbarNo Gravatar December 20, 2007 at 10:13 pm

Also tested: Know what responses overcome certain rejections such as when 1.131 and 1.132 affidavit appropriate – MPEP 715.01.

When an applicant cannot swear behind a 1.131 or 1.132 affidavit.
1.131 can’t swear behind 102(b) art
1.131 can’t swear behind same patentable invention
1.132 “unexpected result” irrelevant for 102 art

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4 patentbarNo Gravatar August 22, 2008 at 12:16 pm

See also 10.01.6a under repeat exam question .

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5 patentbarNo Gravatar August 22, 2008 at 12:18 pm

Swearing Back of a Reference: (715)

What it is: “Swearing Back” means that under some circumstances the applicant can file an affidavit (under 37 CFR 1.131 or sometimes 37 CFR 1.132) that the applicant actually invented the matter that is discussed in the prior art before the prior art was published (swearing back in time before the prior art was published). The date sworn back to will actually be earlier than the effective filing date of the patent.

Requirements for being able to Swear Back under 37 CFR 1.131:

* The invention has to have been created in either the U.S., a member of NAFTA (Canada & Mex), or in a WTO country for apps after 19960101 (If a country joined the WTO after that date, then whatever date that country joined is the effective date for inventions made in that country).
o For example: If I make a Kim Jong Il Pez dispenser in North Korea, I can’t swear back to it.
* When the statutory bar from 35 U.S.C. 102(b) does not apply. Remember, that 102(b) gives a 12 month deadline from the first time the applicant itself publishes or puts the invention on sale to file for a patent. When trying to swear back, the 12 month limit still applies, so swearing back will only ever work for prior art that was made less than 12 months before the app was filed. (You can’t claim to have invented something 10 years ago and swear back to it, the statutory bar is in place!)
* First Main Situation: There is a prior art reference under 35 U.S.C. 102(a) (some prior art published on the subject matter taught by the patent). If the prior art was made claims of the earlier patent must not cover the same invention as the later patent for this to work.
* Second Main Situation: With 102(e) prior art (prior filed patent app is the prior art), if the prior filed app discloses the prior art, but does not claim the prior art as its own (which would cause an interference case) then it is possible to swear back that the invention was made before the filing date of the 102(e) referenced app. Important: Remember, disclosures in apps that are not claimed can be used as prior art, but they are not something that can actually be sued over unless they fall under a claim!

10 Important cases where you CANNOT swear back:

1. 1. If the reference publication for the prior art is > 1 year older than the effective filing date (statutory bar under 35 U.S.C. 102(b)).
2. 2. Where the referenced U.S. patent or application (102(e) prior art) claims the same invention as the app under question. (this would create an interference case).
3. 3. If the prior art is a foreign patent or app (it could even be owned by the same applicant or the same assignees) that was filed > 12 months prior to the U.S. application date. (Remember the 102(b) statutory bar as well as the 12 month requirement for claiming priority over foreign apps!!)
4. 4. If it is proven that the effective filing date for the app is actually prior to the date of the referenced prior art, then the affidavit is actually not necessary since the prior art should never have been referenced in the first place. (Remember, the affidavit is only for when the actual invention is before the prior art, if the effective filing date is already early enough, no need to swear anything back!)
5. 5. Where the reference is to a prior U.S. patent or app issued to the same entity claiming the same invention. (This is known as “double patenting” and obviously, you can only get the patent once).
6. 6. Where the reference is the disclosure of a prior U.S. patent to the same applicant (At this point, you should be trying to claim the benefit of the earlier app since it is not logical to swear back on your own invention).
7. 7. Where the applicant has clearly admitted on the record that the subject matter in the reference is prior art (Something like an IDS statement or a statement in an interview. Think: Equitable Estoppel).
8. 8. Where the subject matter in the prior art is covered under 35 U.S.C. 102(f) (remember: f is where the applicant or common owner did not actually invent the earlier invention)
9. 9. Where the subject matter is prior art under 35 U.S.C. 102(g) (This is interference where the same subject matter exists in 2 different patent apps. There are separate procedures for interference so swearing back is not an option).
10. 10. Similar to #9 but in this case, the applicant has already lost the interference claim. (102(g) is when there is an interference on a claim and the applicant loses, under res judicata the issue has already been decided by the USPTO, so it is not possible to swear back at this point).

A narrow Alternative: Affidavits under 37 CFR 1.132: (715.01)

* These are similar in function to 37 CFR 1.131 (they defeat prior art) but are not the same thing as swearing back.
* A 1.132 affidavit is that the invention that is the subject of the prior art reference was actually invented by the same entity responsible for the current application (could be the same inventors or the inventions could have the same assignee)
o Remember from the earlier lessons on 103, 102(e)(f)(g) where normally the prior art would defeat the claims, but the same entity (common owner, JRA) was responsible for the earlier invention.
* Co-authorship: (What are the rules for deciding if it is the same inventive entity):
o If the applicant is one of the co-authors of the prior art, he may file the 37 CFR 1.132 affidavit if the work referenced by the claim was his own work. (Another method is a normal 37 CFR 1.131 affidavit claiming to have invented the item before the prior art got published).
* Derivation:
o If there is subject matter in a prior patent or patent app that is not covered in the claims of that patent then if there is evidence submitted showing that the applicant for the new patent was the source of the same material in the prior app, then that evidence can defeat the prior art reference.
o Example: I worked on a big project that got a patent, but the description of some of my contributions was never actually claimed in the prior patent application, just put in to describe the invention. Later on I use that same work to make a new invention. Normally, the prior art in the previous app would defeat my later app, but since I created both (common inventor) then evidence showing I made the earlier unclaimed material will defeat the prior art reference.

More on Swearing Back (715.04-716.02)

Who is allowed to swear back a reference? (715.04 who can file the 37 USC 1.131 affidavit)

1. All of the inventors of the subject matter claimed
2. An aff/decl by less than all the inventors where it is shown that less than all of the named inventors on the app actually invented the subject matter being sworn back to.
3. When there is a 37 CFR 1.47 petition that is accepted (when the inventor refuses to sign or cannot sign) then the aff can be signed by the 37 CFR 1.47 applicant, or by legal representative.
4. When it is not possible to produce the inventor, then the assignee or other party with proprietary interest may sign.

Formally, the affidavit just has to be a sworn, written statement (may be an oath or declaration)

715.05: When your Patent App claims the same invention as another app or patent:

* Remember: you cannot file an affidavit in this situation! Instead, see 37 CFR 41.202 (interferences) for how to resolve issues when the prior art is a claimed previous invention.
o Also remember: this is different from a case where a previous patent/app has prior art, but is not actually claiming the prior art for the same invention. IF the 2 inventions are shown to be substantially different, then as long as the previous app does not claim the subject matter, it can be sworn-behind.
* Remember the 1 year bar. the 1 year time limit includes the anniversary date of the prior art (just like Rule 6 from FRCP) so prior art on June 10 2005 can still be sworn back for an app on June 10, 2006.
* The “same invention” here does not mean the prior and current apps are identical, it just means that the two are not “patently distinct”.

715.07: What evidence do you need to show in the Affidavit?
In order to successfully swear back, the applicant must show facts that the invention was actually made and practiced in the U.S., NAFTA Country, or WTO country prior to the referenced prior art being available. Here are the types of evidence that can show this:

* A. attached sketches
* B. attached blueprints
* C. attached photos
* D. attached reproductions of notebook entries (inventor’s notebooks are a big deal)
* E. an accompanying model
* F. attached supporting statements by witnesses (verbal disclosures)
* G. testimony from an interference proceeding. The applicant must clearly show which parts of the testimony are being relied upon.
* H. Disclosure documents (see infra 1706) may used as documentary evidence of conception.

Establishing the Dates (important if you want ot beat the prior art):
For swearing back, the inventor does not have to always give the actual date of an invention, just show that the invention happened before the referenced art. However, for showing diligence in the invention (see below) the applicant must have actual dates.

Three ways to show Prior Invention:
Remember, the Ofifce cares about facts that the invention was conceived & completed in the US/NAFTA/WTO country. When it comes to how far along the invention was: At least the conception has to antedate the prior art, but if the invention was not complete before the prior art, the applicant also has to show diligence in completing the applicant until it was either fully reduced to practice or was diligent up to the date of filing of the patent app. Basically: You didn’t have to be done with the invention before the prior art, as long as you have factual evidence that you had already conceived it, and that you diligently worked on the invention until it was doen, or you filed for the patent.

1. A. Actual reduction to practice of teh invention prior to the effective date of the reference (you finished the invention before the prior art, easiest when you can show it); OR
2. B. Conception of the invention happened before the date of the prior art, and there was due diligence prior to the reference date in actually reducing the invention to practice (you weren’t done with the invention but kept working on it prior to the referenced art, and got the invention done (’reduction to practice’)); OR
3. C. Conception of the invention happened before the date of the prior art, and there was due diligence prior to the reference date all the way up until the date of filing the patent app. (you conceived of the invention first, and were diligent all the way up until the app was filed).

For sufficiency, the conception needs to be more than a vague idea, but has to show an understanding of how the parts of the invention interact with each other.

More on Diligence:
Just like with other forms of evidence in the affidavits, it is not sufficient to merely allege diligence, there must be facts showing the diligent work. For example, even if the applicant is doing nothing, he may be ‘diligent’ if he can show evidence that there is a valid reason for inaction, and that this reason means the applicant was actually being diligent.

715.10: Review of Affidavit for evidence of Public sale/use or failure to describe best mode:
The examiner should review the affidavits under 37 CFR 1.131 for evidence that the applicant was selling or publicly using the invention in the U.S. > 12 months prior to the actual invention.

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6 newbeeNo Gravatar May 26, 2009 at 11:16 pm

I think the answer to who can sign petition 1.132 affidavit is inventor of A. Look at example in 715.01(a)

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7 Big TexNo Gravatar December 8, 2009 at 8:01 pm

Isn’t this just a 10.03.30a?

30. A registered practitioner receives an Office action for Application X, a patent application filed after November 29, 1999. The action contains a rejection of all the claims as being obvious under 35 USC 103(a) over Patent A in view of Patent B. Patent A is only available as prior art under 35 USC 102(e). Patent B is available under 35 USC 102(b). The practitioner seeks to disqualify Patent A as prior art under 35 USC 103(c). Which of the following would be sufficient evidence to disqualify Patent A as prior art in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) A declaration signed by an employee of Corporation K, who is not empowered to act on behalf of Corporation K, stating that at the time the invention claimed in Application X was made, the claimed invention and Patent A were commonly owned by Corporation K.
(B) A declaration signed by the inventor of Patent A stating that at the time the invention claimed in Application X was made, the invention claimed in Application X and the invention claimed in Patent A were both subject to an obligation of assignment to the same person.
(C) A statement by the inventor Jones, the sole inventor of Application X, saying that at the present time, Application X and Patent A are commonly owned.
(D) A statement by the practitioner stating that Application X and Patent A were, at the time the invention claimed in Application X was made, commonly owned by the same person.
(E) A statement by inventor Jones, the sole inventor of Application X, saying that at the time the invention claimed in Application X was made, Jones owned a majority interest in Patent A.

30. ANSWER: (B) or (D) is accepted as the correct answer. As to (B) and (D), see MPEP § 706.02(l)(2), under the heading “II. Evidence Required To Establish Common Ownership.” (B) is accepted because applicants, e.g., inventors, have the best knowledge of the ownership of their applications, and because their statement of such is sufficient evidence because of their paramount obligation of candor and good faith to the USPTO. (D) reproduces the example set forth under the foregoing heading. (A) is incorrect because applicants or the representatives of record have the best knowledge of the ownership of their applications, and because their statement of such is sufficient evidence because of their paramount obligation of candor and good faith to the USPTO. (C) is incorrect because the statement does not establish common ownership at the time the later invention was made. 35 U.S.C. § 103(c). (E) is incorrect because it does not establish that the prior art invention and the claimed invention are entirely or wholly owned by the same person. MPEP § 706.02(l)(2).

The reason (C) is wrong in this example is not because the inventor of X cannot make a 1.132 affidavit regarding the invention, rather because he is not establishing common ownership. Answer (E) is likewise wrong because it does not establish common ownership. I believe the question as given above only explains half the concept.

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8 maggieNo Gravatar November 15, 2011 at 4:08 pm

Q: Is to the Prior Art Exception rule for a 103(a) Rejection for applications filed after November 29, 1999. The question of “who” can make an 131 or 132 is a minor point I think.

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9 peeJNo Gravatar May 25, 2012 at 12:20 pm

agreed – under answer (D), the atty is not actually making a declaration, just the statement of common ownership required under 103(c) exception

10 DanielNo Gravatar August 3, 2011 at 11:05 am

I had the 2003 repeat above and another 2003 repeat relating to 1.131 on 7/29/2011

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11 KFNo Gravatar November 2, 2011 at 4:31 pm

Can someone help me understand how answers B and D in the example above can help reject something under 102(c)-for abandonment?? I don’ see how being assigned to or owned by the same person indicates abandonment and thus prior art under 102(c).

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12 maggieNo Gravatar November 15, 2011 at 4:13 pm

131 Aff is not appropriate for:
1. 102(g) and 102(f)
2. 102(b) bar
3. 102(d) bar
4. Admission of prior art on record
5. Statutory Double patenting rejection (claiming the same invention).
6. “same patentable invention” claims in the patent are not identical but are not patentably distinct.

Who/When you can make a 131/132 aff:
(1) Must be personal knowledge
(2) need to be signed under oath (by person responsible for invention of claim in Q)
(3) 131 work for for dates
(swearing back inventive conduct, Antedating reference) for a 102a and 102e rejections (Utility) 101 rejections
(4) 132 works for facts
(secondary indicata/ considerations for 103 rejections) (showing that work is not done by another for 102e/102a rejections)

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13 GDBNo Gravatar April 18, 2012 at 7:14 pm

also can’t swear back for obviousness-type double patenting.

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14 ENo Gravatar November 25, 2011 at 6:26 pm

I got two questions about 131 Affidavits and could find both answers in MPEP 715

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15 GDBNo Gravatar April 19, 2012 at 6:57 pm

Got lots of 1.131 questions 19/04/12

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16 CGNo Gravatar April 26, 2012 at 7:26 am

Got this one on 4/25/12. The answer was all of the above straight out of the MPEP.

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17 Miss_ANo Gravatar May 22, 2012 at 9:02 am

Got this on 5/22/12. Easy credit. Passed!

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18 IndiJonesNo Gravatar June 30, 2012 at 1:37 am

Got several questions on 1.131 and 1.132 affidavits. who can sign? which rejections can be sworn behind etc.

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19 RandomNo Gravatar October 15, 2012 at 8:29 pm

Got this question today 10/15 (Laurel, Abbott, Hardy version).

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20 DJEBNo Gravatar April 2, 2013 at 8:49 pm

According to USPTO rules and procedure, which of the following can be overcome by an affidavit under 37 CFR 1.131?

(A) A rejection properly made under 35 USC 102(a) based on a journal article dated one month prior to the effective filing date of the U.S. patent application.

(B) A rejection properly made under 35 USC 102(b) based on a U.S. patent that issued 18 months before the effective filing date of the application. The patent discloses, but does not claim, the invention.

My answer key says (B) is correct. Why is it (B) and not (A)?

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21 JaneNo Gravatar December 26, 2013 at 7:36 pm

131 cannot overcome 102(b)

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22 patentmanNo Gravatar August 1, 2015 at 12:59 pm

Then why is it correct?

23 patentmanNo Gravatar August 1, 2015 at 1:10 pm

October 2002 morning question 6 says that answer D which is same as B in DJEB exam is wrong based on explanations.

24 EyestrainedNo Gravatar June 22, 2013 at 8:07 pm

Got bunch of these. 06/21/13.

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25 SoCloseNo Gravatar June 24, 2013 at 3:13 pm

So Eyestrained, did you pass??

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