This is Part VI of my series on the relevance of the invention date in patent prosecution. You may download my entire paper here.
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Measuring the Success of Attempts to Swear Behind Prior Art: BPAI Decisions
After being twice-rejected by a patent examiner, a patent applicant has a right to appeal to the USPTO’s administrative court, the Board of Patent Appeals and Interferences (“BPAI”). The BPAI is an active court, which issues several thousand decisions each year. To study BPAI decisions, we first used a broad search criterion of BPAI decisions in Westlaw. The resulting decisions were reviewed to identify whether the BPAI made a decision regarding an attempt to antedate one or more references. We identified 73 BPAI decisions that adjudged the merits of an attempt to antedate. As shown in Table 13, the BPAI rejected the attempt to antedate in 77% (56) of these decisions, accepted the attempt to antedate in 22% (16), and partially accepted and partially rejected the attempt to antedate in 1% (1).
In each rejected case, the applicant had filed a Rule 131 declaration, but the BPAI rejected those declarations for a variety of reasons, including insufficient evidence to establish reduction to practice prior to the effective date, insufficient evidence to prove conception and/or reasonable diligence toward reduction to practice, failure to assert conception of the entire claimed invention, failure to prove prior conception of the elements taught in a reference, failure to show country of invention, failure to include signatures of all listed inventors, failure to allege a sufficiently early conception date, failure to properly explain submitted evidence, attempt to antedate a reference that qualifies as a statutory bar under § 102(b), claims to the same invention as the prior art (thus necessitating an interference proceeding), failure to properly submit the affidavit, and an attempt to double-patent.
One survey respondent expressed the difficult in pursuing a Rule 131 declaration in a comment:
It is extremely difficult to get a 1.131 declaration accepted. One nearly needs to justify each day. Personally, I think it would be close to impossible to antedate over 6 months based upon constructive reduction to practice. If it is more than 2 months, I would probably be a waste of the client’s money to try.