Wednesday, March 24, 2010

Swear-behind declarations (Part I)

Takeaway: BPAI case law shows that a declaration simply stating that the invention was conceived or reduced to practice is not enough for a § 1.131 (swear-behind) declaration, even when coupled with exhibits. The declaration should explain how the attested facts show actual reduction to practice, and/or conception plus diligence, of the the claimed invention.

This is the first in a series of posts explaining what makes a sufficient § 1.131 declaration. Though I'm using BPAI cases to examine the issue, courts handle the analysis in the same way. In fact, the BPAI usually cites to Federal Circuit cases on this subject. So this information should be helpful in drafting swear-behind declarations that stand up in litigation.

I'll start with actual reduction and conception, then later I'll cover diligence. Today's post provides an overview of cases in which the § 1.131 declaration was found insufficient to antedate a reference.

Most of the decisions which find a declaration to be insufficient criticize the Applicant for not tying the swear-behind declaration to specific claim elements. It seems clear that a conclusory statement along the lines of "the exhibits show that the claimed invention was conceived before the critical date" is not enough.

Ex parte Sagar: The criticism in Sagar is typical:
[T]he Declaration does not address the limitations of the claims. Likewise, the evidence filed along with the Declaration does not address the limitation of the claims. It is not clear what features the “invention” referred to in the Declaration and evidence includes. As such the Declaration and evidence does not establish possession of every feature recited in the claim.
(Emphasis added.)

Ex parte Molander: The declaration stated that conception was evidenced by an invention disclosure "which describes the invention described and claimed in the subject application." The Board found the declaration insufficient because it "does not explain how Exhibit A, which is an Invention Disclosure Form, proves conception of each claim limitation."

Ex parte Draper: The declaration stated that the inventor "conceived of a system including each of the elements of my currently-pending claims." The Board found that the declaration insufficient because it "does not state what was done and how it relates to the claim elements. The declaration does not state with any specificity what was conceived or what was reduced to practice and how."

Ex parte Daniels: The Board characterized the sworn statement that the claimed invention was actually reduced to practice as a "bald assertion" and further noted that:
[T]he Appellants failed to point to the specific information [in the project planning and design documents] on which they rely to establish conception. Neither the '131 affidavit nor the arguments in the Brief establish facts sufficient to tie the information found in the charts and diagrams of the project documents to the claim limitations ... As such, the attached project documents are of little assistance in enabling the Patent Office to judge whether there was conception of the invention prior to the effective date of the prior art ... (Emphasis added.)

In at least one case (Ex parte Sharma), the declaration did not tie the disclosure to the claim language, but the Board nonetheless examined the supporting documents and performed some significant fact finding. In Sharma, the Board concluded that the declaration did not show conception because the supporting document (an invention disclosure) was missing eight claim limitations.

And in another decision (Ex parte NTP) the Board criticized the Applicant for too much information because this resulted in a confusing declaration. The declaration purported to be an element-by-element analysis, but the Board found this to be a "scavenger hunt":
NTP does not directly identify and explain the evidence which would show the conception and/or reduction to practice of the particular claim element. Indeed, NTP does not even separately address conception and actual reduction to practice. Rather it directs us to its proposed findings of fact, designated by “DF,” which in turn directs us to its exhibits and/or other proposed facts. The exhibits often direct us to still other exhibits. We are left to sort through NTP’s submissions to figure out the relevance of the documents and testimony. (Emphasis added.)

These BPAI decisions offer only general guidance about how to tie the supporting documents to the claims. The next post in this series will examine a few decisions that are more helpful in explaining where the Applicant went wrong.


  1. I'm so thankful that I will see guidance on what the PTO (maybe) wants to see. I don't know why the MPEP cannot be written to tell applicants exactly what is necessary to provide the proper declaration.

    The next step of course is to know how to provide a declaration that will hold up after issuance during an validity attack.

  2. >I don't know why the MPEP cannot be written to
    >tell applicants exactly what is necessary

    Section 715 of the MPEP discusses swear behinds. But the MPEP basically says "facts, not conclusions". Perhaps the problem is that the MPEP doesn't explain what this means.

    >how to provide a declaration that will hold up
    >after issuance during an validity attack

    Though my posts will be about BPAI review of declarations, the law is the same for the courts. I've updated my original post to make this point.

  3. <>

    I find section 715 hardly sufficient to tell the public, even a registered patent attorney, what is needed. (Note that the section only recites the term "facts" once, and that's in the quote of the CFR.) The section says when it is necessary to show diligence, but it does not indicate what would suffice as a showing.

    Your blog definitely serves a need, and I appreciate it.

  4. Thanks Karen, and all who are posting.

    Perhaps this would be a better issue to address in Part II, but how might we address the rejection of dependent claims? Assuming the declaration is sufficient, would removal of the primary reference in a 103 be sufficient to render the dependent claims allowable as well?

  5. >would removal of the primary reference in a 103
    >be sufficient to render the dependent claims

    I say Yes. Removing the reference also affects any dependent rejections that rely on that reference. I don't see anything declaration-specific here. It's the same as if you removed primary reference for any other reason -- not by another, app's effective filing date is earlier than the reference's, etc.

  6. thanks for the post, it would have been helpful to find this guidance instead in the MPEP or through specific citations by the examiner, we would not find ourselves fighting this battle in appeal briefs or after finals.