(a) When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. The effective date of a U.S. patent, U.S. patent application publication, or international application publication under PCT Article 21(2) is the earlier of its publication date or the date that it is effective as a reference under 35 U.S.C. 102(e) as in effect on March 15, 2013. Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. Prior invention may not be established under this section if either:
(1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application naming another inventor which claims interfering subject matter as defined in § 41.203(a) of this chapter, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this chapter; or
(2) The rejection is based upon a statutory bar.
(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.
(c) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.
(d) The provisions of this section apply to any application for patent and to any patent issuing thereon, that contains, or contained at any time:
(1) A claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013.
(e) In an application for patent to which the provisions of § 1.130 apply, and to any patent issuing thereon, the provisions of this section are applicable only with respect to a rejection under 35 U.S.C. 102(g) as in effect on March 15, 2013.
[78 FR 11058, Feb. 14, 2013, as amended at 78 FR 62405, Oct. 21, 2013; 80 FR 17963, Apr. 2, 2015]
Notes of Decisions
Cited in
91
cases (
5 in the last 5 years), 1962–2025 · leading case:
In re Hogan, 559 F.2d 595 (C.C.P.A. 1977).
In re Hogan, 559 F.2d 595 (C.C.P.A. 1977).
· cites it 4× “On claim 14, the examiner said that Nat-ta “is prior art” for the reasons given for claim 13, for the additional reasons cited above with respect to rejections (2) and (3), *601 and further because appellants’ affidavit under 37 CFR 1.131 (Rule 131) “does not establish reduction…”
In Re Enhanced Sec. Rsch., LLC, 739 F.3d 1347 (Fed. Cir. 2014).
· cites it 6× “Under 37 C.F.R. § 1.131 , a party may file an oath or declaration establishing that the invention described in his rejected claims predates the reference on which the rejection was based.”
Sun Studs, Inc. v. Ata Equip. Leasing, Inc., Applied Theory, Inc. & U.S. Nat. Resources, Inc., Defendants/cross-Appellants, 872 F.2d 978 (Fed. Cir. 1989).
· cites it 2× “Sun Studs told the district court, and its expert witness testified, that Mouat can be removed as a reference against the inventions claimed in Mason '968 and ’065 on a showing that these inventions predate the Mouat filing date, a procedure regulated by 37 C.F.R. § 1.131 during…”
In Re Ntp, Inc., 654 F.3d 1279 (Fed. Cir. 2011).
· cites it 4× “Second, it claims that the Board erred when it found that NTP could not antedate several references under 37 C.F.R. § 1.131 . Third, it asserts that Telenor, eight volumes of a printed publication titled “Mobile Data Networks Description,” is not a prior art reference because it…”
In Re: Steed, 802 F.3d 1311 (Fed. Cir. 2015).
· cites it 3× “After unsuccessfully attempting to distinguish the Evans Rejections on the merits, Steed undertook to remove Evans as a reference in accordance with 37 C.F.R. § 1.131 , a procedure called “swearing back” or “swearing behind” “under Rule 131,” whereby the Applicant establishes…”
Ati Tech. Ulc v. Iancu, 920 F.3d 1362 (Fed. Cir. 2019).
· cites it 3× “The antedating issue was treated in detail in the '053 opinion, and applied to the '871 and '369 patents in separate opinions.”
In Re Jacques Gosteli, Ivan Ernest & Robert B. Woodward, 872 F.2d 1008 (Fed. Cir. 1989).
· cites it 2× “Alternatively, Gosteli attempted to swear behind Menard by using declarations submitted under 37 C.F.R. § 1.131 (1988) (Rule 131). The Board rejected the use of Rule 131, because “the declaration does not .”
Trs. of Columbia Univ. v. Roche Diagnostics GmbH, 272 F. Supp. 2d 90 (D. Mass. 2002).
· cites it 4× “Instead, it argues that Columbia attorney John White intentionally misrepresented statements contained in the declarations filed by the inventors pursuant to 37 C.F.R. § 1.131 (“Rule 131 declarations”).”
Apple, Inc. v. Samsung Elec. Co., 877 F. Supp. 2d 838 (N.D. Cal. 2012).
· cites it 5× “Although the PTO initially found claims 1 and 8 anticipated by Pandit during reexamination of the '647 Patent, 4 it later allowed claims 1 and 8 after the applicants submitted a declaration pursuant to 37 C.F.R. § 1.131 to swear behind the Pandit reference as § 102(a) prior art.”
In Re Alex Zletz, 893 F.2d 319 (Fed. Cir. 1990).
· cites it 2× “2 Zletz provided affidavit evidence under Rule 131 ( 37 C.F.R. § 1.131 ) to show that the experimental work on which he relies predates these reference dates; he also relies on the disclosures of his parent patent applications filed in 1951 and 1952.”
Taurus IP, LLC v. Daimlerchrysler Corp., 726 F.3d 1306 (Fed. Cir. 2013).
“The only such evidence presented by Taurus, however, was (1) the creation date of June 10, 1996, printed on Appendix A, and (2) Mr.”
— 37 C.F.R. § 1.131(a) — 4 cases
Trs. of Columbia Univ. v. Roche Diagnostics GmbH, 272 F. Supp. 2d 90 (D. Mass. 2002).
“Instead, it argues that Columbia attorney John White intentionally misrepresented statements contained in the declarations filed by the inventors pursuant to 37 C.F.R. § 1.131 (“Rule 131 declarations”).”
Annotations are extracted automatically from the opinions in the
Syfert caselaw corpus and ranked by authority, recency, and
treatment. Dots show Syfertize treatment of the citing case itself.