Today was part two of our 131 affidavit lectures. One of the things that strikes me as incredibly interesting about the lectures on 131s is that it doesn’t seem to be straightforward. Perhaps I should explain.
When we first started learning about 102 rejections, one of the important points that was drilled in was that 102(b) is a statutory bar, whereas 102(a) and (e) can be overcome by swearing behind the reference (submitting an affidavit saying that the invention was actually conceived/created before the 102 reference). It was a simplified explanation, as was necessary to convey the important points to us. However, I always felt like there was an implied “just” right before the phrase “swearing behind.” It wasn’t until I was reading another forum or blog, and someone mentioned that it wasn’t, in fact, so easy to swear behind a reference that I started to wonder if my assumption was incorrect. Apparently it was.
Towards the end of the lecture today, we got some tips on avoiding 131 affidavits. Why avoid them? They cost lots of money for applicant. They are non-trivial to file. Our presenter pointed out that when the examiner cites only a 102(e) or (a) reference in the rejection, the implication is that the reference is the best art available, and that the date is what stands in the way of patentability. It would be… frustrating… to applicant to have them spend lots of money on the 131, only to come back with a 102(b) or well-reasoned 103 indicating that there was not, in fact, allowable subject matter.
Thanks for the comments on the last post, btw. I do appreciate the insights!