Thursday, December 12, 2013

Example of a swear-behind (1.131) declaration executed by an assignee

Takeaway: A §1.131 declaration used to swear behind a reference must be signed by all the inventors, unless "it is not possible to produce the declaration of the inventor." (MPEP 715.04(I)(D).) In such cases, "an assignee or other party of interest" can sign. The MPEP doesn't give much additional guidance on how a swear-behind declaration executed by the assignee is any different than one executed by an inventor, but an example of an assignee swear-behind can be found in Reexam 90/009,435 (available on Public PAIR).


Appl. 90/009,435
Volterra Ex parte Reexamination
Filing Date: April 6, 2009
(File history available on Public PAIR.)

The Patentee in an ex-parte reexam submitted a declaration under §1.131 to swear behind a reference. However, because one of the two inventors was deceased, the Applicant accompanied the §1.131 Declaration with a Petition under §1.183 requesting waiver of the signature of the unavailable inventor. (See MPEP 715.04(I)). The §1.131 signed by the remaining inventor included a statement that his co-inventor was deceased. The §1.183 Petition explained those facts, then stated:
Thus, for at least these reasons, the Patent Owner submits that this is an extraordinary situation, in which justice requires suspension or waiver of any requirement that all inventors sign the declaration. The Patent Owner requests that a suspension of the rules be granted under 37 C.F.R. § 1.183 and that the declaration under 37 C.F.R. §1.131 be accepted with the signature of the sole surviving inventor, Andrew J. Burstein.
The Petitions Office denied the Petition because an "alternative avenue that complies with the rules is available to obtain the requested relief." The Petition Decision explained that §1.131 specifically allows the Patent Owner to sign the declaration during a reexam. The explanation in the Decision also referred to MPEP 715.04(I)(D), which indicated that "an assignee, or other party in interest" can sign the declaration "when it is not possible to produce the declaration of the inventor."

After the Petition was Denied, the Applicant then resubmitted the §1.131 declaration that was signed by the surviving inventor, and submitted a new §1.131 declaration that was executed by the assignee. The assignee declaration read as follows:
Declaration of Prior Invention by Volterra Semiconductor  under 37 C.F.R. §1.131

I, DAVID OH, hereby declare:
1. I am the General Counsel and Vice President of Legal Affairs of Volterra Semiconductor Corporation, the assignee of the entire right, title, and interest in each of U.S. Patents No. 6,278,264, ("Flip-Chip Switching Regulator") and No. 6,462,522 ("Transistor Pattern for Voltage Regulator"), henceforth "the Burstein Patents." I am empowered to act on behalf of Volterra Semiconductor Corporation.
2. Andrew J. Burstein and Charles Nickel are co-inventors of the Burstein Patents.
3. Charles Nickel is deceased. Because it is not possible to obtain or produce a declaration by Charles Nickel, and because the assignee may make such a declaration in a reexamination proceeding even if the inventors are available, I make this declaration on behalf of Volterra Semiconductor Corporation under 37 C.F.R. §1.131(a) and MPEP 715.04(I)(D).
4. On information and belief, Andrew J. Burstein and Charles Nickel conceived of the inventions described in the Burstein Patents in the United States, and reduced them to practice, prior to February l, 2000, as described in Andrew Burstein's declaration entitled, "REPLY DECLARATION OF ANDREW BURSTEIN IN SUPPORT OF VOLTERRA SEMICONDUCTOR CORPORATION'S MOTION FOR ENTRY OF PRELIMINARY INJUNCTION," ("the reply declaration") dated September 25, 2009, the entirety of which is incorporated into the present declaration. The reply declaration and its accompanying Exhibits A-P were filed in each of the above-referenced reexamination proceedings in conjunction with the DECLARATION OF PRIOR INVENTION OF ANDREW J. BURSTEIN UNDER 37 C.F.R. §1.131 ("the Burstein Rule 131 declaration") dated February 22, 2010.
5. A copy of the Burstein Rule 131 declaration and the reply declaration (with supporting Exhibits A-P) is attached and forms part of the present declaration, with all statements therein declared again in the present declaration.
[Final section acknowledging penalties for willful false statements, referring to 18 U.S.C. §1001.]
The Examiner found the §1.131 declaration to be sufficient to remove the reference.

My two cents:  In the Volterra case, the assignee declaration merely stated that the inventor was dead. The assignee declaration did not include documentary evidence (a death certificate?) although the declaration of the surviving co-inventor did include a corroborating statement.

Note that this lack of documentary evidence is a special circumstance peculiar to reexam. The §1.131 rule itself specifically allows "the owner of the patent under reexamination" to sign the declaration. Notably, the rule also distinguishes between the patent owner and other types of non-inventors allowed to sign: "party qualified under §§ 1.42 [dead inventor] , 1.43 [legally incapacitated inventor], or 1.47 [missing or uncooperative inventor]." 

So outside of reexam, a swear-behind executed by the assignee is submitted under the dead/legally incapacitated provision, or the missing/uncooperative provision. Which means you definitely need to do more than state "inventor can't be found." You need to explain why it's not possible for the inventor to sign, and submit documentary evidence supporting this. MPEP 715.04(I)(D) explains that the evidence is like that you'd submit under the missing/uncooperative provision of § 1.47.
 Proof that the non-signing inventor is unavailable or cannot be found similar to the proof required for a petition under 37 CFR 1.47 must be submitted with the petition under 37 CFR 1.183 (see MPEP § 409.03(d)). Petitions under 37 CFR 1.183 are decided by the Office of Petitions (see MPEP § 1002.02(b)).
As far as the contents of the assignee swear-behind declaration itself, I would look to this Voltera reexam as an example. The sections that differ from an inventor declaration are the description of the signer's position/role at the assignee, and the specific "empowered to act" statement (the first paragraph). And though it may seem a little strange for the signer (here, the General Counsel) to attest to actions of the inventor in the fourth paragraph, that's what a swear-behind is – attestation that the inventors conceived/reduced to practice. I note that in this particular example, the statement about inventor actions is made "on information and belief" and specifically refers to documentary evidence.

Finally, the Petition Decision also noted that "authority to take action by the assignee Volterra has already been established with the filing of a statement under 37 CFR 3.73(b)." In the Volterra case, this Right of Assignee statement was filed with the request for reexam. It's not clear whether you should file such a statement when submitting an assignee swear-behind during regular prosecution. I suppose it wouldn't hurt.

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