Swearing Back
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| Guidebook 700 » |  |
Examination of Applications |
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This section discusses swearing behind a reference with an affidavit or declaration under 37 C.F.R. 1.131(a). Swearing back, (also called an affidavit or declaration under 37 C.F.R. 1.131) may be used to overcome rejections where the prior art used to establish the rejection was not by “another”, but filed by the same inventor.
This section covers situations where 37 C.F.R. 1.131 affidavits or declarations can and cannot be used and the reference date to be overcome.
For applications subject to pre-AIA 35 U.S.C. 102, when the reference in question is a noncommonly owned U.S. patent or patent application publication claiming the same invention as applicant and its publication date is less than 1 year prior to the presentation of claims to that invention in the application being examined, applicant’s remedy, if any, must be by way of 37 CFR 41.202 instead of 37 CFR 1.131(a).
The essential thing to be shown under 37 CFR 1.131(a) is priority of invention and this may be done by any satisfactory evidence of the fact. This section outlines the evidence that may be submitted. For instance sketches, photographs, and models may be submitted as evidence.
In situations where the dates of the exhibits have been removed or blocked off, the matter of dates can be taken care of in the body of the oath or declaration.715.07(a). This section also covers three ways to show prior invention.
Where conception occurs prior to the date of the reference, but reduction to practice is afterward, it is not enough merely to allege that applicant or patent owner had been diligent. Rather, applicant must show evidence of facts establishing diligence.
The 37 CFR 1.131(a) affidavit or declaration must contain an allegation that the acts relied upon to establish the date prior to the reference or activity were carried out in this country or in a NAFTA country or WTO member country.
This section covers details of what constitutes a timely presentation. All admitted affidavits and declarations are acknowledged and commented upon by the examiner in his or her next succeeding action.
This section outlines the criteria applicable to evidence traversing rejections submitted by applicants, including affidavits under 37 C.F.R. 1.132.
This section provides specific details on double patenting. Essentially, double patenting seeks to prevent the unjustified extension of patent rights beyond the term of a patent. This section covers when double patenting is possible along with the requirements of double patenting rejections. Obviousness type nonstatutory double patenting is also discussed including two-way obviousness.
This section also discusses disclaimers which may be used to disclaim or dedicate part of a patent term. The topics discussed include terms, terminal disclaimers, statutory double patenting rejections, and nonstatutory rejections.
