Swearing Back under a revised US patent law: 37 CFR 1.131 equivalent in S515
Dennis Crouch, as part of his Patently O blog is circulating a survey that addresses the first-to-invent/first-to-file patentability requirements. He is doing so in conjunction with a larger survey addressing the extent to which applicants are able to swear-back of prior disclosures published in the one-year grace period before their US filing date. According to the US code of federal regulations applicable to patents, 37 CFR 1.131 provides as follows:
37 CFR 1.131 Affidavit or declaration of prior invention.
(a) 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 or activity on which the rejection is based……
A cited reference means a publication or a pending application filed by another party located by the examiner which does not claim the same invention but which nevertheless either discloses the same invention or renders the applicant’s invention obvious. Swearing-back of such a reference does not close the book on whether a valid patent will be granted. The other party may be the true first inventor and the cited reference may be associated with a public use that could eventually defeat the applicant’s eventual patent. But by forcing an applicant to make a 37 CFR 1.131 declaration, the patent office has at least applied the first-to-invent concept to the extent that the patent that will be granted is not clearly invalid: If you can’t swear back of a reference then you are not the first inventor!
Dennis Crouch has been gathering evidence on the extent to which reliance has been placed by applicants before the US patent office on this procedure. This goes to the heart of the issue as to whether a switch to the first-to-invent system would be appropriate for a revised United States patent law.
Meanwhile, bills are progressing through both the US House of Representatives and the Senate to revise the US patent law in certain fundamental respects. One of the proposed revisions will be to adopt a first-to-file system, more correctly described by its proponents as a first-inventor-to-file system. Not appreciated by virtually all of the commentators is that these two bills pending before Congress contain a remarkable provision for which there is no precedent anywhere in the world. Using Senate bill S515 as a reference, this bill includes a kind of echo of the existing 37 CFR 1.131 procedure. This legislation would amend Section 102 of the US patent law to explicitly provide as follows:
“102(b)
(b) Exceptions.–
(1) Prior inventor disclosure exception.–Subject matter that would otherwise qualify as prior art based upon a disclosure under subparagraph (B) of subsection (a)(1) shall not be prior art to a claimed invention under that subparagraph if the subject matter had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor.” Read the rest of this entry »