39 thoughts on “Survey: Swearing behind prior art

  1. 39

    bleedingpen, thanks for the reply… if diligence/reduction to practice and conception are a snap to document, then I agree, sure, file that 1.131 instead of (or in addition to) arguing. So, ideally, the poll question would have had another option: “It depends on how easy it is to prove conception and reduction to practice or diligence.” As for your earlier remark “Seems to me like you are kicking up unnecessary prosecution history [by arguing instead of filing the 1.131]”, some practitioners see a 1.131 as mucking up a prosecution history more than an argument, although I don’t necessarily agree with that take.

  2. 38

    The reason I agree with you, Michael R. Thomas, is because diligence is a relative term. Big corporations have more resources, so they can afford to be more diligent than an everyday regular person. An everyday regular person may not want to fork over 100-1000 dollars on a patent application. So why is diligence so important anyway? At the very least it shows that you believe in your invention and the patent system, right?

  3. 37

    Michael R. Thomas, for once you almost make sense. The closest case I have seen yet appears to be the inventors have shown conception, but not diligence. It is interesting that the requirement for diligence is found in rule 1.131, but the only related law is 35 USC 102(g). It is also interesting that disagreement with an examiner’s determination on the sufficiency of an affadavit or declaration under 1.131 is an appealable, not a petitionable, matter.

    From MPEP 715.09: “The facts to be established under 37 CFR 1.131 are similar to those to be proved in interference. The difference lies in the way in which the evidence is presented. If applicant disagrees with a holding that the facts are insufficient to overcome the rejection, his or her remedy is by appeal from the continued rejection.”

  4. 36

    Dadgummitall – “fortunate”, not “fortunated”.

    I think the latter describes the experience of being bonked on the head by the wand of a fairy godmother, which is why one tends not to see it in print much.

  5. 35

    broje, you’ve been fortunated. Any time I’ve attempted to put together a 131, the lab notebooks and invention disclosures have been inadequate to truly support the claims.

    This despite routine client training on the proper care and feeding of their lab notebooks, and on disclosure writing.

  6. 34

    Swearing behind should not be generally accepted if itโ€™s more than 90 days previous to the first application. Except where duress is involved. The vast majority of these close patents filings involve espionage so filing dates, invention clusters and provisional application additions must be considered as the most accurate determination methods for inventorship. With due diligence and reduction to practice requirements still in tact inventors still are having there civil rights violated by the theft of there intellectual materials. This also stops the inventions from salability since big business knows it can get them for free.

  7. 33

    Seeing as how you have to subscribe to post a comment on IPFrontline, it is not surprising that there are few comments.

    Numero Uno Stupido

  8. 30

    I’ve only done one, and it was successful. As I recall, I had inventors notebooks and emails ordering components and a grant application. It wasn’t for a very long period though.

  9. 29

    If all claims (1 indep and 10 dependent) are rejected, in a 131 do you normally show conception and rtp regarding just the independent? Or do you have to show them all?

  10. 28

    I too would like broje’s clients. There is one case where a two-day gap in the timeline was evidence of non-diligence in reduction of practice. Ouch.

  11. 27

    I love it, Hal Wegner is whining about the “credibility” of other blogs, yet he himself has zero comments on his post. Nothing says “vanity blog” quite like zero comments.

  12. 26

    Every 131 declaration I’ve filed has been successful. It’s a while since I’ve done one, though. Maybe the PTO are getting more difficult about these?

  13. 25

    “evidence that the invention was constructively reduced to practice before the effective date”

    You don’t anything more than the PTO assigned filing date of the application to establish a date for constructive reduction. Usually, this isn’t in dispute.

  14. 24

    If every client was like broje’s client then there would be more 131’s filed. More often, when one goes looking for such evidence, it is not easily found.

  15. 23

    Every 131 affidavit I ever filed was successful.

    In every circumstance, I’ve had an invention disclosure document that predated the reference. I’ve also had a chain of communications evidencing the submission of that document to the employer for approval, subsequent instructions to the attorney to prepare and file the application, communications betweenthe attorney and inventor(s), etc.

    I have always included a statement that the applicant/inventor(s) continually reduced the invention to practice up until the effective date, and did not abandon the invention at any time up until filing the application.

    I have also always provided a tidy timeline of the communications, each submitted as exhibits, as evidence that the invention was constructively reduced to practice before the effective date, and that it was continually reduced to practice and not abandoned.

    Any dates actually listed in the exhibits were redacted.

    That is just the way I was taught to do it.

    If I did not have those types of exhibits to submit, I would be hesitant to file a 131 affidavit, and would consider other alternatives, if any.

  16. 22

    For chemical case with a broad genus claim, a 1.131 affidavit may be hard where the reference(s) disclose many species or a subgeneric claim.

  17. 21

    I am somewhat lucky that my inventors have usually reduced to practice, so that a 1.131 affidavit will have evidence without the need to show diligence. However, one thing that has often occurred is that the examiner will say the affidavit evidence is sufficient to antedate with regards to some dependent claims, but not to the broader independent claim. Then the argument part about what would be obvious and what would not be obvious must occur.

  18. 20

    >>NWPA, I presume that your clients never file >>abroad, do they?

    Many do. And you are right when they are filing abroad it is a whole different game.

  19. 18

    Robert KS

    I have only done two 131s and both of them did the trick. I can see from other responses on this board that maybe the 131 isn’t always so successful, which makes your position understandable.

  20. 17

    I don’t remember which thread had Mooney waxing philosophic about playing nice and all grown-up on the boards after being taken to task by Actual Inventor, but the scatalogical rant segue can serve as an anchor to Mooney and his “high fallutin” rhetoric.

    Malcolm, wasn’t it you that actually posted about a sex act with a dead president?

    Honestly, where is the integrity in that?

  21. 16

    Scatalogical rant?

    What a high fallutin’ square!

    Eat __________ and ____________.

  22. 15

    Thank you Hal Wegner for a brilliant piece on “the Credibility of the Patent Blogs”

    link to tinyurl.com

    …a salient quote “It is particularly damaging to credibility [and value of even the most popular blogs] to post comments of a highly negative nature with no basis in fact, sometimes as part of a scatological rant.”

    He is clearly referring to, er, “Mooney.”

  23. 14

    Gideon Pope,

    Not sure, but that’s probably right. I always refer to the MPEP with dealing with any affidavits since I don’t get them often. I guess this explains why my first affidavit didn’t discuss diligence–he’d already made and sold the invention for over a year from filing, so no need to show diligence. Though it’s strange the attorney would catch that but miss that he was submitting evidence for an on-sale bar.

  24. 13

    “Not to be taken wrongly –

    If you’ve reduced to practice then diligence is not an issue.

    Anybody have a different take on that?”

    I think GP is right. Diligence is more of an issue in interference practice and not merely swearing behind a reference to overcome a 102 rejection. If you can show actual RTP before the reference, that’s all you really need.

  25. 12

    Not to be taken wrongly –

    If you’ve reduced to practice then diligence is not an issue.

    Anybody have a different take on that?

  26. 11

    I’ve never had any 131 affidavit submitted to me that was successful and I know several other examiners with the same experience–guys who have been examiners 10-20+ years. As Robert K S indicates above, a solid 131 affidavit takes a lot of work and frankly as much as attorneys like to complain about lazy/sloppy examiners, there are probably just as many lazy and sloppy attorneys/agents.

    The first affidavit submitted to me failed to prove or even discuss diligence. However, the evidence they submitted to me did nicely show that their claimed invention was on sale to the public for over a year from the effective filing date of the application. Whoops.

    Had another submitted where every single document that was submitted was unreadable and despite me repeatedly asking for an explanation of what it is I’m supposed to be looking at, they kept submitting the same stuff over and over again with no explanation as if the result would somehow change from last time. What was the definition of insanity again?

  27. 10

    Fyi, 6, I posted re that Ariad case while yours was coming around the other side of the barn (not sure where it disappered to). PatDocs has a bit on the follow-up Fed Cir case on their front page today.

  28. 9

    bleedingpen, the key part of the question is that it is a non-final rejection. As mentioned by Gideon Pope above (and in all caps, no less), showing diligence is difficult. A solid 1.131 affidavit must be accompanied by documentary evidence proving conception and diligence. Compiling, analyzing, and describing this evidence can be laborious and burdensome for both the practitioner(s) and the inventor(s). If the rejections can be successfully traversed through argument, by pointing out to the examiner exactly why the invention is neither anticipated by nor obvious over the cited reference(s), it seems to me that it would clearly be improper–perhaps even unethical–to needlessly bill the client for work to put together the evidentiary compilation that is a 1.131 when such work might be unnecessary.

    If, however, the rejection is final, the 1.131 must be prepared–there is no longer any question about it–because evidence submitted after filing a notice of appeal can be rejected if there cannot be made a showing of good and sufficient reasons why the evidence was not submitted earlier. See MPEP 1206 II.

  29. 8

    Those of you (looks like a majority) that distinguish against the reference, why? Seems to me like you are kicking up unnecessary prosecution history.

  30. 7

    Sometimes even I need to be reminded to consult the interwebz.

    linn written description patentlyo

    I’m feeling lucky did the job.

    The case was Ariad v. Eli Lilly

    link to patentlyo.com

    Indeed it is becoming a truism that all one really needs in life for information is for someone to stand beside you and say “consult the interwebz”.

    Thanks tho NWPA.

  31. 6

    Not sure if this is the one you are talking about, but here is a recent one that used the wd requirement to invalidate a patent. ICU Medical, Inc. v. Alaris Medical Systems, Inc. (Fed. Cir. 2009)(opinion by Moore).

    I don’t disagree with you Gideon Pope, but I think there is a trade off. How does it go: the client can control two of the three factors: cost, amount of time, and quality. With some flexibility in time the cost can be lowered and the quality can be improved.

  32. 5

    6 – I don’t, but I heard that same idiotic statement from a former PTO examiner a few years back.

    So I give him the classic example – –

    You file an application that is 100% about bicycles.

    2 years later, you file a preliminary amendment to claims for chewing gum while riding the bike. No gum was mentioned in original filing.

    Enabled? Of course.
    WD? No.

  33. 4

    “Can anyone remind me of that case that came out about 3 months ago where Judge Linn disagreed with the majority about there being a difference between written desc req and enablement req?”

    It’s hard to take a self-described black belt Google Ninja seriously when he asks a question like this. ๐Ÿ˜‰

  34. 3

    Can anyone remind me of that case that came out about 3 months ago where Judge Linn disagreed with the majority about there being a difference between written desc req and enablement req? Specifically iirc, Linn (or maybe it was Michel) said that there was only an enablement req, but the majority told him that no, there was a separate written desc req. Anyone remember the case?

  35. 2

    “””””That means when inventors talk to me I can tell them that there is a grace period so we can wait a bit before filing if they want.”””””

    IMO, this is really bad advice.

    When an inventor with just enough knowledge to be dangerous starts asking about the 1 year “grace” period, I always say . . .

    “Every day that passes is another day during which thousands of documents that count as 102(b) art are created, and there is no way to swear behind those. I counsel you to move diligently to prepare and file your application at the earliest possible date.”

    I don’t even get into the problem you’re going to created if the applicant has not reduced the invention to practice – in essence, w/o a RTP, you need to show diligence between concept and art date to swear behind.


    Anybody have a different experience.

  36. 1

    From my practice: I have sworn behind references before, but the bigger issue to me is that you can swear behind referneces if you have to.

    That means when inventors talk to me I can tell them that there is a grace period so we can wait a bit before filing if they want. Often it saves money and produces a better patent application when a few months can pass without being overly worried that someone else will file first.

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