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!
~Relativity
I always tell the examiners that in any situation where it is possible to have their rejection overcome without amending (e.g., perfecting priority, 102(a or e), 103(c) exception, 132 attribution declaration, etc…), they should find a backup rejection, if possible. This way, in addition to what you said above about the applicants not assuming patentability upon filing their 131, 132, certified translation, etc…, the examiner can go final on 2nd action.
Of course, if the backup is “tighter” than the original, then they should make that one first and cite the other art as related art, to let the applicants know it is out there.
Relativity,
DS is correct. You should “back up” your rejection if your “best” rejection is 102(a) and/or (e). If you can. But please don’t make a silly “back up” rejection just to do so. See MPEP 706.02 I.(C).
I would just disagree with DS that you should “cite” the 102(a) and/or (e) art, and would argue that you really should apply it. Not all 102(a) and/or (e) art can be overcome. If it can’t, it really should be a “bar” to patentability (assuming it does in fact anticipate, or render obvious the claims).
And it’s more than an implication that the 102(a) and/or (e) art is your best art, it’s really Rule 104(c)(2), which states that the examiner “must” cite the best art at their command.
Rule 131 declarations can be very expensive as it requires the applicant to stop what they are doing, which is normally inventing something else, or further developing the invention claimed in the application, or seeking funding/marketing for their work (if they are what we call “solo” inventors), and go looking for the evidence of conception and reduction to practice. While that evidence may be readily available, it may not be. Searching for that evidence can be expensive.
Some practitioners never try to antedate 102(a) and/or (e) art on the theory that it’s simply easier, timlier, and cheaper to amend/argue around it. And if the art is later brought up in a litigation (e.g. in combination with a new reference), you can antedate it then, when money is no object.
As with all things in patent prosecution, the answer really is: it depends.
JD