BPAI finds § 1.132 is improper mechanism for swear behind, even if some facts are within personal knowledge of attorney

Takeaway: In attempting to antedate (swear behind) a reference with a showing of conception then diligence, the Applicant first submitted a declaration under § 1.131 signed by the Applicant's attorney. When the Examiner indicated that a  § 1.131 declaration must be signed by the inventors, the Applicant refiled the attorney-signed declaration under § 1.132. The BPAI found both declarations to be insufficient, noting that the first was insufficient because it wasn't signed by an inventor, and the second because only a § 1.131 declaration is available for swearing behind a reference. (Ex parte Flynn, BPAI 2010.)

Details:

Ex parte Flynn
Appeal 2009008768; Appl. No. 11/550,050; Tech. Center 2100
Decided: March 11, 2010

The technology in the application on appeal involved a computer simulator for remote control locomotive systems. All claims were rejected as obvious. The Applicant attempted to remove a primary reference in one of the obviousness rejections by antedating, or swearing behind, the reference. One of the issues on appeal was whether the swear-behind declaration was effective.

In a first attempt to antedate the reference, the Applicant filed a § 1.131 declaration which purported to show conception "prior to 2002 and the March 2002 date of the Transport Technology reference" and diligence "from prior to 2002 to the filing of the parent application on June 25, 2002."  The declaration was filed with supporting documentation that included: a nine-page invention submission form; client correspondence authorizing the preparation of a patent application; and several more items of client correspondence with attached copies of a draft application, inventor comments, and a revised draft. Though the declaration was styled as a  § 1.131 declaration, it was executed by the Applicant's representative rather than the inventors.

In the next Office Action, the Examiner explained that the declaration was defective because a § 1.131 declaration must be executed by the inventors. The Examiner also found the evidence insufficient to establish conception or diligence.

In a second attempt to antedate the reference, the Applicant filed the same set of papers, once again executed by the Applicant's representative. But this time the declaration was styled as a § 1.132 declaration.

In the Answer, the Examiner found the § 1.132 declaration insufficient to swear behind the reference, explaining that § 1.131 is the only mechanism available for antedating. The Applicant did not file a Reply Brief.

The Board found both declarations to be ineffective in antedating the reference. The Board noted that plain language of § 1.131 requires an antedating declaration to be signed by all the inventors. Thus, the first declaration was ineffective. The Board found that the second declaration was also ineffective because § 1.132 is an improper mechanism for antedating:

A declaration under 37 C.F.R. § 1.132 is improper for antedating a prior art reference where such declarations are specifically provided for under 37 C.F.R. § 1.131. Rule 1.132 is essentially a default rule, allowing applicants to traverse rejections/objections where no other rule provides for a means (through declaration practice) to do so – “any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.” 37 C.F.R. § 1.132 (emphasis added). Rule 1.131 specifically provides the means by which a prior art reference may be antedated, i.e., it is a basis that is “otherwise provided for.”

The Board further explained that a § 1.132 declaration could be used in conjunction with a 1.131 declaration. That is, the Applicant could have submitted a § 1.131 declaration executed by the inventors, along with a § 1.132 declaration of facts within the personal knowledge of the representative. Finally, the Board noted that the Applicant could have used a § 1.183 petition to request a waiver of the invention signature requirement.

My two cents:  It appears that the attorney stuck to § 1.132 because some of the facts relating to diligence were facts within the personal knowledge of the attorney rather than the inventor. Even so, the rules seem pretty clear that § 1.131 is what you use for a swear-behind. And as the Board noted, you can file the § 1.131 in conjunction with a § 1.132 signed by the attorney and attesting to the attorney's personal knowledge (e.g., diligence).

I suppose an inventor could attest to facts of receiving a draft, responding with comments, and receiving a revised draft. But here, the attorney attested to "due diligence" being exercised from conception to filing. It does seem that the attorney rather than the inventor is the right person to attest to the legal conclusion of due diligence. So file two declarations, one by the inventor and one by the attorney.

The Board's suggestion of  a § 1.183 petition for waiver of the inventor signature requirement doesn't seem to fit the facts here. That is, there was nothing to suggest that the inventor couldn't or wouldn't sign. But it is useful to know this avenue is available.

Getting signatures from all the inventors during prosecution is probably difficult in a lot of cases because of the long delay between filing and appeal. I wonder if one of the reasons swear-behind isn't very common is that attorneys figure it would be too much trouble to track down inventors.