Can affidavits be used in inter partes reexamination?

Yes, affidavits can be used in inter partes reexamination proceedings. The MPEP states:

“Affidavits under 37 CFR 1.131(a) and 1.132 may be utilized in a reexamination proceeding.”

However, there are limitations on the use of certain types of affidavits:

“Note, however, that an affidavit under 37 CFR 1.131(a) may not be used to ‘swear behind’ a reference patent if the reference patent is claiming the same invention as the patent undergoing reexamination.”

In such cases, the patent owner may consider other options:

• Filing an affidavit under 37 CFR 1.131(c) (see MPEP § 718)
• Initiating an interference proceeding via an appropriate reissue application (see MPEP § 1449.02)

Patent owners and third-party requesters should carefully consider the appropriate use of affidavits in inter partes reexamination to support their positions.

To learn more:

• affidavits
• inter partes reexamination
• 37 CFR 1.131
• 37 CFR 1.132
• swearing behind