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.”
For convenience “subparagraph (B) of subsection (a)(1)” reads as follows:
“Conditions for patentability; novelty
(a) Novelty; Prior Art.–A person shall be entitled to a patent unless–
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public–
(A) more than 1 year before the effective filing date of the claimed invention; or
(B) 1 year or less before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor; or ……
Subsection (2) refers to the case where there is a description of a claimed invention in a pre-filed published application.
These provisions are the essential heart of the new novelty requirement that would be established under the revised US patent law. But they must be read as a whole, modified by exceptions. Because of section 102(b) Exceptions.– (1), above, anything that has “been publicly disclosed by the inventor …….” will function equivalently to a swearing-back affidavit. It will be removed from the prior art if it has been “publicly disclosed”.
There’s no precedent for this type of provision in the national patent law of any first-to-file country anywhere in the world. The provision of the exception of section 102(b)(1) as part of a first-to-file system is a very creative preservation of some of the principles of 37 CFR 1.131. The presence of this exception may go a long way towards easing the transition from first-to-invent to first-to-file. But it may require a shakedown period to develop relevant jurisprudence on the meaning of “publicly disclose”.
Public disclosures can be seen as falling into broad two classes namely, one based on the actual presentation of an embodiment of the invention, e.g. a public use or demonstration; and the other based on a communication, e.g. a written description, a seminar presentation, that is made available to the public. An advantage of the first in establishing either priority under a first-to-invent system or disclosure under a first-to-file system is that in the case of a presentation of an actual embodiment, all of the characteristics of the invention will be present in the embodiment. This will be true without the inventor having to reduced to writing a description of the invention. The second class of disclosure is strongly dependent on the ability of an author to perceive and described the invention fully. Patent jurisprudence is replete with examples of insufficient disclosures being incorporated into the written description of a patent specification.
I predict that there will be some robust US PTO proceedings, perhaps arising first by way of opposition or re-examination, on the issue as to whether and what has been “publicly disclosed” so as to fall within the above exception.
Postscript : The Senate bill S515 was reported from the Senate Judiciary committee to the Senate on May 12, 2009 and can be viewed by entering the following on Google: U.S. Senate Report No. 111-18