Antedating Prior Art in Reissue and Reexamination: Part 1

Takeaways

• Pre-AIA patents may be able to “swear behind” prior art applied in reissue and reexamination.
• “Swearing behind” has limits and obtaining sufficient evidence to establish prior invention may be difficult to obtain.

The need for patent reissue or reexamination often occurs late in the enforceable life of the patent or for a newer member of a patent family. Thus, many of the patents subject to reissue or reexamination have a filing or benefit date that predate the March 16, 2013 effective date of the America’s Invents Act (AIA). These patents fall under the prior first-to-invent system and may utilize a 37 C.F.R. § 1.131(a) affidavit or declaration to antedate or “swear behind” prior art used to reject the claims in reissue or reexamination. For these patents, §1.131(a) provides a vehicle for a patent applicant or owner to establish prior invention before the central reexamination unit (CRU) examiner. “Swearing behind” a prior art reference effectively removes that prior art from the body of prior art that can be applied against a claim. But there are limits, and obtaining sufficient evidence to establish prior invention may be difficult to obtain.

First, the prior art sought to be removed by §1.131(a) must qualify as prior art under pre-AIA 35 U.S.C. §§ 102(a) or (e). Prior invention may not be established if the rejection is based upon a statutory bar reference under pre-AIA 35 U.S.C. § 102(b). Further, prior invention may not be established if the rejection is based upon a U.S. patent/patent application publication naming another inventor and claiming interfering subject matter (as was defined under pre-AIA 35 U.S.C. § 102(g) and prior interference practice). Moreover, prior invention may not be established if the invention occurred in any country other than the United States, a NAFTA country, or a WTO member country.

Second, to be persuasive, a §1.131(a) showing must provide a showing of facts as proscribed in §1.131(b).

(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.

This showing is not a simple task. For the most part, the terms “conception,” “diligence,” and “reduction to practice” have the same meanings under 37 C.F.R. § 1.131(a) as they have in pre-AIA interference proceedings, an established and specialized body of law. And because the patents eligible for swearing behind were effectively filed almost 12 years ago, obtaining sufficient evidence may be difficult for patent owners. Broadly, the showing of fact for conception must establish possession of either the whole invention claimed, or something falling within the claim. In re Tanczyn, 347 F.2d 830, (CCPA 1965). Establishing diligence may be difficult as owners must show evidence of facts establishing diligence for the entire critical period in question—from conception to either actual (essentially a useable product or process) or constructive (filing of a patent application) reduction to practice. Diligence must be judged on the basis of the particular facts of each case. See In re Steed, 802 F.3d 1311, 1320, (Fed. Cir. 2015). Further, when relying upon actual reduction to practice, the showing must clearly explain which facts or data the applicant is relying on to evidence completion of the inventor’s invention prior to the critical date, else it amounts to nothing more than a “mere pleading.” In re Borkowski, 505 F.2d 713, (CCPA 1974).

Because swearing behind is not allowed for applications having effective filing dates that are post-AIA, antedating a prior art reference may be overlooked by owners and their counsel when facing new rejections in reissue and reexamination. Further, patent owners may only get one attempt to demonstrate enough evidence for antedating a prior art reference due to the CRU’s “special dispatch” mandate. And because the antedating practice is now rarely used, owners and counsel must be prepared for CRU examiners to challenge their evidentiary showings. When considering options, owners are well-served by experienced counsel familiar with these pre-AIA antedating practices.