What are the requirements for disqualifying a patent or patent application publication under 37 CFR 1.131(c)?

To disqualify a U.S. patent or U.S. patent application publication as prior art under 37 CFR 1.131(c), the applicant or patent owner must submit two items:

1. A terminal disclaimer: This must be in accordance with 37 CFR 1.321(c).
2. An oath or declaration: This must state that:
   • The application or patent under reexamination and the patent or published application are currently owned by the same party
   • The inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013

The MPEP states: 37 CFR 1.131(c)(1) requires a terminal disclaimer in accordance with 37 CFR 1.321(c), and 37 CFR 1.131(c)(2) requires an oath or declaration stating, inter alia, that the inventor named in the application or patent under reexamination is the prior inventor under pre-AIA 35 U.S.C. 104.

It’s important to note that this procedure is only applicable in certain situations, such as when the rejection is under 35 U.S.C. 103 as in effect on March 15, 2013, and the inventions are not patentably distinct but are owned by the same party.

To learn more:

• 37 CFR 1.131(c)
• terminal disclaimer
• oath
• declaration
• prior art disqualification

To learn more:

• 37 CFR 1.131(c)