Antedating in patent law
[Editor Note: This MPEP section and the provisions of 37 CFR 1.131(a) are not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U. It should be kept in mind that it is the rejection that is withdrawn and not the reference. SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS CAN BE USEDAffidavits or declarations under 37 CFR 1.131 may be used to overcome rejections in applications subject to pre-AIA 35 U.
While conception is the mental part of the inventive act, it must be capable of proof, such as by demonstrative evidence or by a complete disclosure to another. Acts occurring prior to the effective dates of NAFTA or URAA may be relied upon to show completion of the invention; however, a date of completion of the invention may not be established under 37 CFR 1.131(a) before December 8, 1993, in a NAFTA country or before January 1, 1996, in a WTO country other than a NAFTA country, in applications subject to pre-AIA 35 U. In addition, patent application publications and certain international application publications having an effective prior art date prior to the application being examined may be used in a rejection of the claims. Such a rejection may be overcome, in certain instances noted below, by filing of an affidavit or declaration under 37 CFR 1.131(a), known as “swearing behind” the reference. 102, and to overcome rejections under pre-AIA 35 U. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.] Under 37 CFR 1.131(a) which provides for the establishment of a date of completion of the invention in a NAFTA or WTO member country, as well as in the United States, an applicant or patent owner can establish a date of completion in a NAFTA member country on or after December 8, 1993, the effective date of section 331 of Public Law 103-182, the North American Free Trade Agreement Act, and can establish a date of completion in a WTO member country other than a NAFTA member country on or after January 1, 1996, the effective date of section 531 of Public Law 103-465, the Uruguay Round Agreements Act (URAA). Any printed publication or activity dated prior to an applicant’s or patent owner’s effective filing date, or any domestic patent of prior filing date, which is in its disclosure pertinent to the claimed invention, is available for use by the examiner as a reference in the rejection of the claims of the application or patent under reexamination. patent application publication reference is entitled to claim the benefit of an earlier filed application, its effective filing date is determined under pre-AIA 35 U. FORM PARAGRAPHSForm paragraphs 7.57- 7.64may be used to respond to 37 CFR 1.131(a) affidavits. See MPEP Chapter 2300 for information on initiating interference proceedings. 102(b) and thus cannot be overcome by an affidavit or declaration under 37 CFR 1.131(a).  The evidence submitted is insufficient to establish applicant’s alleged actual reduction to practice of the invention in this country or a NAFTA or WTO member country after the effective date of the  reference. [Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U. For additional information regarding effective dates of printed publications, see MPEP §§ 2128 - 2128.02. Activities An applicant may make an admission, or submit evidence of use of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was used or known by others in this country. The effective date of the activity used to reject the claim(s) is the date the activity was first known to have occurred. If the reference and this application are not commonly owned, the reference can only be overcome by establishing priority of invention through interference proceedings.  The evidence submitted is insufficient to establish diligence from a date prior to the date of reduction to practice of the  reference to either a constructive reduction to practice or an actual reduction to practice.