All
All
Parallel
Title
Appellant
Respondent
Lawyer
Parallel Search is an AI-driven legal research functionality that uses natural language understanding to find conceptually relevant case law, even without exact keyword matches.
Hi, I'm AMICUS. Your GPT powered virtual legal assistant.
Let's chat.
Log in
Sign Up
Select Country
India
UK
&
Ireland
AMICUS AI
CaseIQ
Keyword Research
Parallel Search
Browse
Commentaries
Columns
My Project
New chat
Federal
U.S. Supreme Court
Federal Circuit
1st Circuit
2d Circuit
3d Circuit
4th Circuit
5th Circuit
6th Circuit
7th Circuit
8th Circuit
9th Circuit
10th Circuit
11th Circuit
Court of Appeals for the D.C. Circuit
Board of Immigration Appeals
Special Courts
Bankruptcy
State
Alabama
Alaska
Arkansas
Arizona
California
Colorado
Connecticut
Delaware
District Of Columbia
Florida
Georgia
Guam
Hawaii
Iowa
Idaho
Illinois
Indiana
Kansas
Kentucky
Louisiana
Massachusetts
Maryland
Maine
Michigan
Minnesota
Missouri
Mississippi
Montana
Nebraska
North Carolina
North Dakota
New Hampshire
New Jersey
Northern Mariana Islands
New Mexico
Nevada
New York
Ohio
Oklahoma
Oregon
Pennsylvania
Puerto Rico
Rhode Island
South Carolina
South Dakota
Tennessee
Texas
Utah
Virginia
Vermont
Washington
Wisconsin
West Virginia
Wyoming
37 C.F.R. § 1.131 : Patents, Trademarks, and Copyrights — UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE — GENERAL — RULES OF PRACTICE IN PATENT CASES — NATIONAL PROCESSING PROVISIONS —AFFIDAVITS OVERCOMING REJECTIONS — Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art
Text
(a)
When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. The effective date of a U.S. patent, U.S. patent application publication, or international application publication under PCT Article 21(2) is the earlier of its publication date or the date that it is effective as a reference under
35 U.S.C. 102(e)
as in effect on March 15, 2013. Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. Prior invention may not be established under this section if either:
(1)
The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application naming another inventor which claims interfering subject matter as defined in §41.203(a) of this chapter, in which case an applicant may suggest an interference pursuant to §41.202(a) of this chapter; or
(2)
The rejection is based upon a statutory bar.
(b)
The showing of facts for an oath or declaration under paragraph (a) of this section shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained.
(c)
When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S. patent or U.S. patent application publication which is not prior art under
35 U.S.C. 102(b)
as in effect on March 15, 2013, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
(1)
A terminal disclaimer in accordance with §1.321(c); and
(2)
An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.
(d)
The provisions of this section apply to any application for patent and to any patent issuing thereon, that contains, or contained at any time:
(1)
A claim to an invention that has an effective filing date as defined in §1.109 that is before March 16, 2013; or
(2)
A specific reference under
35 U.S.C. 120
,
121
,
365(c)
, or
386(c)
to any patent or application that contains, or contained at any time, a claim to an invention that has an effective filing date as defined in §1.109 that is before March 16, 2013.
(e)
In an application for patent to which the provisions of §1.130 apply, and to any patent issuing thereon, the provisions of this section are applicable only with respect to a rejection under
35 U.S.C. 102(g)
as in effect on March 15, 2013.
37 C.F.R. §1.131
78 FR 11058, 2/14/2013, as amended at 78 FR 62405, 10/21/2013; 80 FR 17963, 4/2/2015
×