1.31 and 1.32 Affidavits

Question 1

What does 37 CFR 1.131 do?

Answer 1

1. Swears behind activities, patents, and publications

2. Illustrates completion of invention before prior art

Question 2

What does 37 CFR 1.132 do?

Answer 2

1. Catch all provision

2. Presents any other evidence

Question 3

What is 37 CFR 1.131 effective against?

Answer 3

1. 102(a) prior art
2. 102 (e) prior art
3. 102 (g) prior art

NEVER AGAINST 102 (b) (Time limit is hard and fast)

Question 4

What is the content of a 1.131 declaration?

Answer 4

1. Signed by ALL inventors
2. Owner can sign in a reexamination
3. If inventor dead, unreachable, or refusing to sign appropriate measures must be taken to show this.

Question 5

When does 1.131 NOT apply?

Answer 5

1. 102 (b) i.e. more than 1 year later
2. 102(d) against inventors own ISSUED foreign patent FILED more than 1 year before.

Filed and but not issued not a problem.

3. 102 (g) interference…..only works against prior art.
4. Double patenting

Question 6

When to file 1.131 declaration?

Answer 6

1. Before final action
2. Make special Application then
   a. Before first office action
   b. Within 1 month after filing for accelerated examination.
3. Show reasons if filed later (RCE could be used to force consideration)

Question 7

When can a 103 rejection be overcome by a 1.131 declaration

Answer 7

1. 102(a) prior art rejection
2. 102(e) prior art rejection

Can antedate reference.

Question 8

What can 1.132 declarations show?

Answer 8

1. 102(a) or 102(e) reference is attributable to applicant.
   a. Useful when showing reference is applicants own work.
2. Rebuttal of 102 rejections
   a. Rebuts inherency in prior art
3. Rebuttal of 103 rejections
4. Rebuttal of 112 rejections

1.132 addresses issues of PATENTABILITY

Question 9

Who executes the 1.132 declaration?

Answer 9

1. Coauthors disclaiming inventorship
2. Inventor asserting
   a. He is inventor.
   b. Coauthors not inventors

Question 10

Post AIA

Answer 10

1. 1.131 will fade out of use
2. 1.132 will be used more
   a. Show derivation (the new interference)
   b. Show prior publication