37 CFR § 1.131 — Affidavit or declaration of prior invention (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.131 Affidavit or declaration of prior invention
This page consolidates MPEP guidance interpreting 37 CFR § 1.131, including 435 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
The 37 CFR 1.131 affidavit or declaration provides a legal mechanism for inventors to establish a prior invention date and potentially overcome existing prior art references.
What this section covers
- A legal mechanism for documenting an inventor's precise date of invention.
- A method for inventors to substantiate their invention timeline relative to existing prior art references.
Key obligations
- Provide sworn, credible evidence demonstrating the actual invention date predates a reference.
- Ensure the declaration contains sufficient factual details to support the claimed invention date.
Conditions and exceptions
- Recognize different evidentiary standards for pre-AIA and post-AIA patent applications.
Practice notes
- Carefully document the specific circumstances and timeline of the original invention.
- Ensure the declaration is signed by a party with direct knowledge of the invention.
Official MPEP § 1.131 — Affidavit or declaration of prior invention
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.
- (a) When any claim of an application or a patent
under reexamination is rejected, the applicant or patent owner 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.
The effective date of a U.S. patent, U.S. patent application
publication, or international application publication under
PCT Article
21(2)
is the earlier of its publication date
or the date that it is effective as a reference under
35 U.S.C.
102(e)
as in effect on March 15, 2013. Prior
invention may not be established under this section in any country
other than the United States, a NAFTA country, or a WTO member
country. Prior invention may not be established under this section
before December 8, 1993, in a NAFTA country other than the United
States, or before January 1, 1996, in a WTO member country other
than a NAFTA country. Prior invention may not be established under
this section if either:
- (1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application naming another inventor which claims interfering subject matter as defined in § 41.203(a) of this chapter, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this chapter; or
- (2) The rejection is based upon a statutory bar.
- (b) The showing of facts for an oath or declaration under paragraph (a) of this section shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained.
- (c) When any claim of an application or a
patent under reexamination is rejected under
35 U.S.C.
103
as in effect on March 15, 2013, on a U.S.
patent or U.S. patent application publication which is not prior
art under
35 U.S.C.
102(b)
as in effect on March 15, 2013, and
the inventions defined by the claims in the application or patent
under reexamination and by the claims in the patent or published
application are not identical but are not patentably distinct, and
the inventions are owned by the same party, the applicant or owner
of the patent under reexamination may disqualify the patent or
patent application publication as prior art. The patent or patent
application publication can be disqualified as prior art by
submission of:
- (1) A terminal disclaimer in accordance with § 1.321(c) ; and
- (2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that 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.
- (d) The provisions of this section apply to
any application for patent and to any patent issuing thereon, that
contains, or contained at any time:
- (1) A claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013; or
- (2) A specific reference under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to any patent or application that contains, or contained at any time, a claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013.
- (e) In an application for patent to which the provisions of § 1.130 apply, and to any patent issuing thereon, the provisions of this section are applicable only with respect to a rejection under 35 U.S.C. 102(g) as in effect on March 15, 2013.
[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; para. (a), 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar. 21, 1985; 53 FR 23733, June 23, 1988, effective Sept. 12, 1988; para. (a)(1) revised and para. (a)(2) added, 60 FR 21043, May 1, 1995, effective May 31, 1995; para. (a) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; heading and para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (a)(1) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a) introductory text revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (d) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
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