The Relevance of Invention Date in Patent Prosecution: Part VI (BPAI Decisions)

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).


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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.







31 thoughts on “The Relevance of Invention Date in Patent Prosecution: Part VI (BPAI Decisions)

  1. Or, Ned, putting it another way, all Europe admired and looked up to the USA, back in the 1960′s. It had successful industry, great music, and its people were rich, generous, educated, and had lots of fun. Europe then created its own new patent law, different from that of every country in Europe, and starting from a plain white sheet of paper with no constraints, to help Europe prosper, like America.

    Notwithstanding its admiration of all things American, it didn’t adopt any of the details of US patent law.

    And if it didn’t then, why should it now?

  2. Yes ping it is. You and I must be at different levels of generality. Mine is: priority, novelty, obviousness, sufficiency, enablement, scope defined by claims, prohibition of addition of subject matter during prosecution. These basics we find everywhere.

    Ned, your problem is that both sides think their respective system is as finely tuned as it ever can be, and that any compromise will destroy the integrity of both. My problem is that I can see the force of that argument from the European side, but not from the American side. So why should I want to compromise. I like it that you have your system as it is today. It provides me with sport, on this blog.

  3. Max and Ping, what I would do is adhere to the EPC, but work with the Euros to fix priority claims, to internal priority or otherwise, to operate fairly like the proposed US grace period — what’s disclosed in the priority document preempt later filings or disclosures of the same subject matter from being prior art against any claim in the priority claiming document.

    Second, I would provide that all published patents and patent applications worldwide have an effective date as of the effective filing date of the subject matter.

    Third, I would add to US law prior user rights and to European law some sort of on sale bar that would extend to non public commercial exploitation by the applicant.

  4. I don’t know, there’s gotta be some universal patent law that applies to all jurisdictions, eh Maxie?

    Isn’t that a long running premise of yours?

  5. The grace period though Ned. What about that? EPC with a grace period bolted on? What a monstrosity. Stalemate? Stay as we are? Each with his own?

  6. No. But your suggestion about simply become part of the EPC in some fashion is very attractive as an alternative. We would at least have a FTF system that has most of its bugs worked out.

  7. Yes I know Ned, but thanks for the clear statement about this important difference.

    To me, it is just a little bit strange (to say the least), to decide obviousness on the basis of a definition of the state of the art which includes stuff that is, as yet, completely unknown to any member of the public. As you know, Europe finds the date of the claim and then assesses its obviousness relative to what was public knowledge by that date.

    So, how does Europe handle priority contests, when inventors, independent of one another, file respective applications on close but not identical dates? Why, using novelty. (Why else does one need a law of novelty, when 103 will by itself snuff out everything that’s old or obvious). The later filers can get to issue only with subject matter they enabled on their filing date and which, further, is novel over the enabled subject matter disclosed to the PTO already, in the earlier filings of the other inventors. Since writing a claim that has novelty is usually easy to achieve, those later filers do usually get through to issue, despite the earlier filing.

    Debate about a grace period is one issue. But I would gladly debate what’s wrong with this European division of responsibilities between 102 and 103 (Art 54 and 56, EPC).

    Not the least of the merits of the European system is that inventors quickly see its logic, simplicity, efficiency and fairness. In my experience, it is a few US patent attorneys that have the most trouble grasping it. Even though it is very, very simple, the notion of a document being available for novelty attacks, but not for obviousness, is still beyond their imagination.

    And Ned, you write “will” be. It’s not all over yet, is it?

  8. Max, thanks for that last piece. It is interesting to see just how dramatically different a US FTF system will be from an European FTF system. In the US, all prior art is available for obviousness purposes.

    So, in the US, the examiner could cite the reference to the device and argue the improvement was obvious, or even cite the improvement of another device in the prior art in combination with the reference to the device showing that everything was old and would be obvious to combine.

  9. Ned, as you say, we are here addressing priority of invention. But you wrote:

    “But in FtF, your intervening reference to the machine per se could render his claim to the improvement unpatentable as the your reference, the machine per se, could be cited against his claim to the improved machine.”

    …..and lost me right there.

    I am talking Art 54(3) EPC here. Obviousness attack not available. Since when does a disclosure of the machine without the improvement deprive of novelty a claim to the improved machine?

    ping the machine, as such, is the thing as such, without the improvement. And “alight” means “chance upon” or “conceive” or “invent” or “reduce to practice” or “set forth a written description thereof” or whatever other lawyerly prose you are more familiar with.

  10. Max, assume we are talking about priority of invention. He has a claim to the machine as such and a claim to the machine with the improvement. Your intervening reference showing the machine with the improvement is cited as a reference against him.

    Under Stempel, he could swear behind your reference for the machine claim, per se, but not behind the reference with respect to the machine plus improvement. This is pretty much what the MPEP says as well.

    With regard to your own patent application, the machine per se would be a good reference against you. So you would be limited to patenting the improved machine.

    Now, I think this comes out the same way in FTF.

    Obviously, since you did not expect this answer, you must have some misunderstanding of the principles involved here.

    Change the facts just a bit to see the difference. He files first on the machine. You second on the same machine. He third on the machine, and the machine plus improvement. Under Stempel, his proof of prior invention would remove your reference against both his claims. This seems right to me. But in FtF, your intervening reference to the machine per se could render his claim to the improvement unpatentable as the your reference, the machine per se, could be cited against his claim to the improved machine.

    See the difference?

  11. the machine as such

    Please translate – does the “as such” mean that the improvement (as filed in March) is there?

    What does “didn’t alight” mean?

    Speak plainly Maxie – you are trying too hard to be too cute.

  12. Ned, I am the inventor of a detail improvement to an existing machine. I file for it in March. Two months earlier, in January, a competitor had filed for the machine as such, but he didn’t alight upon the improvement till June. Ignorant of my improvement, he filed again by December, with an amplified disclosure, including the improvement, and a claim to the machine including the improvement.

    Why do you think he should get a January date for a claim to the machine as such, and why do you think his claim to the machine with the improvement should also get that same January date? Don’t you think (like me) that the right outcome is that he gets January for his machine but not for his improvement claim? You write that it “does not make any sense” to give him January for his machine but not for the improvement. Is this still your view?

  13. Paul, assume you demonstrate claim 1 — all its elements — to remove a reference that shows the substance of claim 1, for example, one’s own published white paper or scientific article.

    Doesn’t one normally just say that the dependent claims 2-55 are patentable because they depend upon a patentable parent? Now think if I had to show in my proof of prior invention, every little detail of every dependent claim as well? Now, I would argue, that that does not make any sense.

    However, in FTF regimes that is precisely the way it works. Not only do you have to demonstrate that claim 1 is supported, you have to show how all its dependent claims are supported as well. There are cases on point from the European enlarged panel I have cited in these discussions.

  14. Molehill: “I’ve been an examiner for about 3 years and had a whopping one case where a 131 affidavit was sent in (I accepted it). Is this really that big of an issue?”

    I agree. I have been a practicing attorney for about 30 years and have submitted exactly the same number (one) of 131 affidavits that you have seen in your 3 years as an examiner.

  15. I’ve been an examiner for about 3 years and had a whopping one case where a 131 affidavit was sent in (I accepted it). Is this really that big of an issue? Shouldn’t it be expected to be difficult to go back beyond 4 months prior to the priority date?

  16. Ned, that is what I find a bit strange about “partial” 131′s outside of these special single species vs genus claim situations. After all, the “invention” being 102(g) proven prior to the reference date should be fully defined by what is being claimed. [It is normally considered preferable to use a 131 declaration for as few of the claims as possible, and argue the others.] If, as in the later case you refer to, the claim is a true combination or mixture claim, the “invention” is not normally in any individual claim elements, it is in their combination.

  17. Paul, there is subsequent authority both following Stempel and clarifying it. I recall one case involving an alloy where the alloy consisted of a mixture of two elements. The inventor was not permitted to show prior invention of one of the two elements because the element by itself was not the invention.

    But, in other cases, even cases involving foreign priority, where the proof of prior invention is directed to the overall inventive concept as in a species of a genus, then it is good enough if the proofs show what the reference shows, even if the proofs are not sufficient to show every element in the claim.

  18. Since its an interesting Rule 131 point, here is what the relevant part of MPEP 715.03 actually says:
    “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.” In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989); In re Slayter, 276 F.2d 408, 125 USPQ 345 (CCPA 1960).

    Where the only pertinent disclosure in the reference or activity is a single species of the claimed genus, the applicant can overcome the rejection directly under 37 CFR 1.131 by showing prior possession of the species disclosed in the reference or activity. On the other hand, a reference or activity which discloses several species of a claimed genus can be overcome directly under 37 CFR 1.131 only by a showing that the applicant completed, prior to the date of the reference or activity, all of the species shown in the reference. In re Stempel, 241 F.2d 755, 113 USPQ 77 (CCPA 1957).

    {What, no subsequent CAFC authority on this?}

  19. Ping, I think I understand your point, but I am not sure.

    Assume the claim is to a genus of A B and C. The reference shows A, a species in the genus. Stempel requires me to show A to antedate the reference. It does not further require me to show B and C.

    What you consistently imply, if not state, is that to overcome a reference showing A that I must show prior invention of not only A, but also of B and C. That is not required.

    However, if the reference discloses the same genus, A, B and C, showing prior invention of only A is NOT sufficient. This much is well understood and obvious. Further, if it claims the same genus, a Rule 131 affidavit is not possible. Priority of invention must be decided by an interference.

    The problem comes in applying these simple rules to actual facts – as in the car example. I claim a car with blue glass. I am rejected over my own white paper showing the car without describing the nature of the glass. Can I show prior invention of only the car, what the white paper shows, or must I additionally show prior invention of a car with blue glass?

    Now I argue that Stempel permits me to show prior invention of the car. I KNOW that FTF requires me to show support for the whole claim in the priority document.

    Now, ping, do we agree or disagree?

  20. No Ned,

    The reference as in “elements taught in a reference” is what your invention __ _______ is trying to overcome. Again, INVENTION of what? (hint: what defines an invention?)

  21. Of what is in the reference. See, e.g., the last bit from Dennis’s blog post below:

    “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….”

  22. Ned,

    INVENTION of what?

    and please stop parsing the as claimed (and the baggage that must attend such claims).

  23. I agree with the sentiments that it impossible to rely on conception plus diligence. Even in our land of FTI, the early filing date is always preferred.

    We do have a debate here, though, as to whether to file the “drawings” as in Pfaff, an invention disclosure submitted by the inventor to a patent departmeent, or to engage the services of a patent attorney to draft a complete patent application on the theory that nothing else is effective to establish a date of INVENTION (and please stop conflating an effective filing date (relevant to statutory bars) with a prior invention date.

  24. Although I have never had a 1.131 Declaration voided at the BPAI, I would not be surprised that the Examiner did not reject the Declaration on the formalities but based upon something more subjective (i.e., reasonable diligence) and it was the BPAI itself that first raised the issue of the formal problem. Like most courts, why dispose of an issue on the merits when you can dispose of the issue on a technicality?

    That’s plausible to me too, except that examiners are also pretty good at bouncing responses on technicalities.

    Examiners have 1.131 “experts” to rely upon.

    Interesting. Still, it looks like the ones getting rejected are for the most part the ones that should be.

    I apologize for implying that examiners might be good at something.

  25. “I wonder who thought those cases were worth appealing instead of submitting a corrected declaration.”

    Although I have never had a 1.131 Declaration voided at the BPAI, I would not be surprised that the Examiner did not reject the Declaration on the formalities but based upon something more subjective (i.e., reasonable diligence) and it was the BPAI itself that first raised the issue of the formal problem. Like most courts, why dispose of an issue on the merits when you can dispose of the issue on a technicality?

    Heck, that is the first thing I do when I get an office action, I check to see if the prior art is really prior art and/or if it can be disposed of under 35 USC 103(c). Why waste time arguing the merits, when you kick it off your desk with a simple form paragraph?

    “Seems to me the examiners are pretty good at knowing which ones to reject.”
    No — Examiners have 1.131 “experts” to rely upon. I’ve had a conversation with one once. They gave me a suggestion as to what evidence will overcome a “due diligence” issue based upon what they accepted in the past. I followed the suggestion to the letter, and the revised Declaration still got rejected.

  26. There’s a pretty strong (and probably unavoidable) selection bias here, since we’re only looking at 131 declarations that the examiner has already rejected. Seems to me the examiners are pretty good at knowing which ones to reject.

    Also, based on the reasons it looks like a lot of them got rejected for formalities or careless drafting, e.g. not getting signatures from all the inventors, not alleging the entire claimed invention. I wonder who thought those cases were worth appealing instead of submitting a corrected declaration.

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