How does submitting a declaration under 37 CFR 1.131(a) help overcome a pre-AIA 35 U.S.C. 102(b) rejection?
Submitting a declaration under 37 CFR 1.131(a), also known as an affidavit or declaration of prior invention, can help overcome a pre-AIA 35 U.S.C. 102(b) rejection by establishing that the inventor had conceived and reduced the invention to practice before the critical date. This process is often referred to as “swearing behind” a reference.
The MPEP states:
When the reference is a U.S. patent or U.S. patent application publication claiming the same invention, applicant cannot employ an affidavit under 37 CFR 1.131(a) to swear behind the reference. In this situation, applicant may be able to submit an affidavit or declaration under 37 CFR 1.132 to disqualify the reference as prior art where the reference is not a statutory bar.
Source: MPEP 2133.02(a)
Key points about using a 37 CFR 1.131(a) declaration:
- It must show conception of the invention before the critical date.
- It must demonstrate diligence in reducing the invention to practice.
- It cannot be used to overcome statutory bars (e.g., public use or sale more than one year before the filing date).
- It is not effective against U.S. patents or published applications claiming the same invention.
By successfully submitting a 37 CFR 1.131(a) declaration, an applicant can establish an earlier date of invention, potentially overcoming certain types of prior art rejections under pre-AIA 35 U.S.C. 102(b).
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