Thursday, September 15, 2011

BPAI reminds Applicant that formalities of swear-behind declaration are important

Takeaway: In evaluating a declaration under § 1.131 (swear-behind), the BPAI noted that the declaration did not comply with the required formalities. Specifically, the declaration named a single inventor as declarant but was signed by all four inventors. The Board went on to find that the declaration lacked sufficient evidence of both conception and diligence, and then affirmed the prior art rejection since the Applicant made no substantive arguments against obviousness.

Ex parte Bianchi
Appeal 200702938; Appl. No. 10/327,489; Tech. Center 3600
Decided  January 28, 2008

The Examiner rejected as obvious over a combination of references. In response, the Applicant swore behind the secondary reference by filing a declaration under § 1.131. The Examiner did not withdraw the rejection, and the Applicant appealed. In the Appeal Brief, the Applicant made no substantive arguments but instead argued that the rejection was deficient because the swear-behind declaration removed the secondary reference as prior art.

The Board affirmed the rejections, finding that the Applicant had not submitted sufficient evidence of conception and/or diligence. The Board also noted that the declaration did not comply with formalities required by § 1.131. Specifically, the declaration named a single inventor as declarant but was signed by all four inventors.

The Board indicated that
If the Appellants pursue the removal of Goodman as prior art by submitting an affidavit or declaration that fully complies with the requirements of 37 C.F.R. § 1.131, they should observe that the existing declaration ambiguously states that only one of the inventors is making the declaration in the text, while all inventors are signatories (FF 03 & 04). All of the inventors of the subject matter claimed must make the declaration. The Appellants should resolve this ambiguity by stating which of the inventors are actually making the declaration in any subsequent affidavit or declaration.

My two cents: Like the declaration of inventorship filed with an application, a § 1.131 declaration must be signed by all the inventors (with a few specific exceptions). But where the declaration of inventorship usually takes the form of a single document that names all inventors and is signed by all inventors, all the § 1.131 declarations I see use a different format. Specifically, a § 1.131 declaration is typically submitted as multiple documents, each signed by one inventor. All the documents include the same facts being attested to, and the same "information and belief" language. They differ only in the identification of the declarant/signatory.

As far as I know, you could submit a single document for a § 1.131, like a declaration of inventorship, as long as each declarant was named separately. The problem here was that one declarant was named as making the statements yet all inventors signed.

In an upcoming post, I'll discuss the sufficiency of the evidence and the timing of the declaration.


  1. I think another interesting aspect of this decision is within the Remarks section...e.g. the Board pointing the Examiner towards a new rejection.

  2. Karen,

    This case was decided more than three years ago so I'm curious as to how these older cases come to your attention for discussion here. Do they come up during prosecution? Do others bring them to your attention. As I said, just curious.

  3. Typically, the older cases I blog about are ones I run across when researching some issue of interest to me -- here, that was swear behind decs.

  4. Karen:

    Are there ways to challege 1.131 declarations? I was reading on the Post Grant blog about the variations to MPEP § 2258.01.

  5. >challege 1.131 declarations?

    In the context of an issued patent?

    I'm not a reexam expert, but I dont' see anything in the rules or even in the MPEP that says sufficiency of a swear-behind could *not* be a Substantial New Question of Patentability.

    OTOH, I can't point to a file history where a Requester tried that, much less succeeded.