[Federal Register Volume 60, Number 83 (Monday, May 1, 1995)]
[Rules and Regulations]
[Pages 21043-21045]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-10501]



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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. 950328079-5079-01]
RIN 0651-AA67


Revision of Affidavits Under 37 CFR 1.131

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Patent and Trademark Office (Office) is amending the rules 
of practice relating to submission of affidavits or declaration under 
37 CFR 1.131(a) to implement the relevant provisions of the North 
American Free Trade Agreement Act and the Uruguay Round Agreements Act, 
respectively. The change will allow an inventor to show a completion of 
the invention in this country or a NAFTA or WTO member country before 
the filing of the application on which the U.S. patent issued or before 
the date of the foreign patent, or before the date of the printed 
publication.

EFFECTIVE DATE: This final rule is effective May 31, 1995.

FOR FURTHER INFORMATION CONTACT:
Hiram Bernstein by telephone at (703) 305-9285 or by mail addressed to 
the Commissioner of Patents and Trademarks, Washington, DC 20231 marked 
to the attention of Mr. Bernstein, Office of the Deputy Assistant 
Commissioner for Patent Policy and Programs, or by FAX to (703) 308-
6916.

SUPPLEMENTARY INFORMATION: Section 331 of Public Law 103-182, 107 Stat. 
2057 (1993), the North American Free Trade Agreement Act, implementing 
the North American Free Trade Agreement (NAFTA), amended 35 U.S.C. 104 
to provide that for the purpose of obtaining a patent, an applicant may 
establish a date of invention in the United States, or in a NAFTA 
member country (Canada and Mexico), which occurred after the date of 
implementation (i.e., December 8, 1993). Section 531 of Public Law No. 
103-465, 108 Stat. 4809 (1994), the Uruguay Round Agreements Act, 
implementing the General Agreement on Tariffs and Trade (GATT), further 
amended 35 U.S.C. 104 to provide that for purposes of obtaining a 
patent, an applicant may establish a date of invention in the United 
States, or in a World Trade Organization (WTO) member country other 
than a NAFTA member country, that is no earlier than 12 months after 
the date of entry into force of the WTO agreement (i.e., January 1, 
1996).
    A notice of proposed rulemaking relating to Revision of Affidavits 
Under 37 CFR 1.131 was published in the Federal Register, 59 FR 49876 
(September 30, 1994), and in the Official Gazette, 1167 Off. Gaz. Pat. 
Office 96 (October 25, 1994). No written comments were received in 
response to this notice.
    The Office is amending 37 CFR 1.131(a), which is currently limited 
to facts showing a completion of the invention in the United States, to 
allow for a submission of facts in an affidavit or in a declaration 
that shows a completion of the invention in a NAFTA or in a WTO member 
country. The WTO is established under the GATT agreement to resolve 
disputes between signatories to the agreement. The facts presented must 
demonstrate a completion of the invention prior to the effective date 
of a reference thought to prevent the grant of a patent or overturn the 
patentability of a claim in a patent under reexamination.
    No substantive change has been made in 37 CFR 1.131(a)(1) relating 
to a NAFTA or a WTO member country.
    After further review and consideration of the proposed rule, the 
following modifications are made. [[Page 21044]] 
    First, ``person'' recited in 37 CFR 1.131(a)(1) in regard to 37 CFR 
1.42, 1.43 and 1.47 is being changed to ``party'' as 37 CFR 1.47(b) 
provides for corporate assignees to petition thereunder.
    Second, reference to 35 U.S.C. 102 (a) or (e) and 35 U.S.C. 103 has 
been added to more clearly identify the rejections that can be overcome 
(35 U.S.C. 102 (a), (b), (d) and (e) are the only sections that recite 
the use of a domestic or foreign patent and a printed publication 
referred to in 37 CFR 1.131 as capable of being overcome as 
references--section (b) (35 U.S.C. 102(b)) is precluded by the terms of 
37 CFR 1.131(a) and section (d) (35 U.S.C. 102(d) is applicant's own 
invention, MPEP 715).
    Additionally, the Office recognizes that there is a potential 
conflict between existing 37 CFR 1.131(a) and 37 CFR 1.602(a). Section 
1.131(a) prohibits affidavits or declarations thereunder when the same 
patentable invention, as defined in 37 CFR 1.601(n) (i.e., patentable 
indistinct inventions), is claimed. An interference under 35 U.S.C. 
135(a), rather than antedating under 37 CFR 1.131(a), is generally the 
available remedy. However, 37 CFR 1.602(a) provides that when the 
applications or the application and the patent are owned by a single 
party, interferences are not declared or continued unless ``good 
cause'' is shown. This can result in a hardship where there is an 
issued patent that can no longer be amended as by filing a 
continuation-in-part application. Where there are two or more pending 
applications, the conflict can be avoided by filing a continuation-in-
part application merging the conflicting inventions into a single 
application.
    The Office proposed amending 37 CFR 1.131 to broaden its 
application to a single party where claimed inventions in a pending 
application or in a patent undergoing reexamination and a patent owned 
by the party are patentably indistinct but not identical. Under the 
proposed addition to 37 CFR 1.131, an affidavit or declaration could be 
filed by a party to overcome a 35 U.S.C. 103 rejection based on a 35 
U.S.C. 102 (a) or (e) patent owned by that party, where the patent 
claimed an invention that was patentably indistinct, but not identical 
to an invention claimed in an application or patent undergoing 
reexamination.
    The proposed addition to 37 CFR 1.131 would not affect the use of 
the issued patent in a rejection of the pending application or the 
patent undergoing reexamination based on double patenting. A Rule 1.131 
affidavit or declaration would continue to be inappropriate where a 
claim in a pending application or a patent undergoing reexamination is 
subject to a double patenting rejection under 35 U.S.C. 101 because the 
pending application or the patent undergoing reexamination claims the 
identical invention in the issued patent. However, where patentably 
indistinct but not identical inventions are claimed, an obvious type 
double patenting rejection can be avoided by filing an appropriate 
terminal disclaimer. In addition, petitions under 37 CFR 1.183 would be 
entertained for waiver of 37 CFR 1.131 requirements in appropriate 
instances where two pending applications claiming patentable indistinct 
but not identical inventions are held by a single party.
    Third, the basis for requiring under proposed 37 CFR 1.131(a)(3) 
common ownership of the pending application or patent undergoing 
reexamination and the patent at the time the later invention was made 
rather than simply ownership by a single party as is used in 37 CFR 
1.602(a). Also it is questioned whether the proposed 37 CFR 1.131(a)(3) 
and existing 37 CFR 1.78 (c) and (d) were consistent or in-part 
duplicative.
    In view of the third consideration regarding the proposed 37 CFR 
1.131(a)(3) relating to the date of common ownership between a pending 
application or a patent undergoing reexamination and an issued patent, 
further study of the proposal is deemed warranted and the proposed 37 
CFR 1.131(a)(3) is not being adopted at this time.

Discussion of Specific Rules

    Section 1.131(a) as amended, contains paragraphs (a)(1) and (a)(2). 
Previous paragraph (a) is now designated as (a)(1) and amended to allow 
a 37 CFR 1.131 affiant or declarant to rely upon facts occurring in a 
NAFTA member country or a WTO member country to show completion of the 
invention. The term ``domestic'' is being changed to ``U.S.'' 
References to 35 U.S.C. 102 (a) and (e) and 35 U.S.C. 103 as the 
rejections to be overcome by the section have been added. The paragraph 
is being amended from a single sentence to three sentences.
    Section 1.131(a)(2) is being added, as proposed, to provide that a 
date of completion of the invention may not be established before 
December 8, 1993, in a NAFTA country, or before January 1, 1996, in a 
WTO Member country other than a NAFTA country.

Other Considerations

    This rule change is in conformity with the requirements of the 
Regulatory Flexibility Act, 5 U.S.C. 601 et seq., Executive Order 
12612, and the Paperwork Reduction Act at 1980, 44 U.S.C. 3501 et seq. 
It has been determined that the rule changes are not significant for 
the purposes of Executive Order 12866.
    The Assistant General Counsel for Legislation and Regulation of the 
Department of Commerce has certified to the Chief Counsel for Advocacy, 
Small Business Administration, that this rule change will not have a 
significant economic impact on a substantial number of small entities, 
Regulatory Flexibility Act, 5 U.S.C. 605(b), because the rule would 
affect only a small number of applications and would provide a 
streamlined and simplified procedure, eliminating the need for 
requesting waiver of the rules.
    The Patent and Trademark Office has also determined that this 
notice has no Federalism implications affecting the relationship 
between the National Government and the States outlined in Executive 
Order 12612.
    This rule change will not impose any additional burden under the 
Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq., since no 
record keeping or reporting requirements within the coverage of the Act 
are placed upon the public.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and record keeping requirements.

    For the reasons set forth in the preamble, and pursuant to the 
authority granted to the Commissioner of Patents and Trademarks by 35 
U.S.C. 6, Part 1 of Title 37 of the Code of Federal Regulations is 
amended as set forth below:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1, continues to read as 
follows:

    Authority: 35 U.S.C. 6, unless otherwise noted.

    2. Section 1.131 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.131  Affidavit or declaration of prior invention to overcome 
cited patent or publication.

    (a)(1) When any claim of an application or a patent under 
reexamination is rejected under 35 U.S.C. 102 (a) or (e), or 35 U.S.C. 
103 based on a U.S. patent to another which [[Page 21045]] is prior art 
under 35 U.S.C. 102 (a) or (e) and which substantially shows or 
describes but does not claim the same patentable invention, as defined 
in 37 CFR 1.601(n), or on reference to a foreign patent or to a printed 
publication, the inventor of the subject matter of the rejected claim, 
the owner of the patent under reexamination, or the party qualified 
under 37 CFR 1.42, 1.43 or 1.47, may submit an appropriate oath or 
declaration to overcome the patent or publication. The oath or 
declaration must include facts showing a completion of the invention in 
this country or in a NAFTA or WTO member country before the filing date 
of the application on which the U.S. patent issued, or before the date 
of the foreign patent, or before the date of the printed publication. 
When an appropriate oath or declaration is made, the patent or 
publication cited shall not bar the grant of a patent to the inventor 
or the confirmation of the patentability of the claims of the patent, 
unless the date of such patent or printed publication is more than one 
year prior to the date on which the inventor's or patent owner's 
application was filed in this country.
    (2) A date of completion of the invention may not be established 
under this section before December 8, 1993, in a NAFTA country, or 
before January 1, 1996, in a WTO Member country other than a NAFTA 
country.
* * * * *
    Dated: March 21, 1995.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 95-10501 Filed 4-28-95; 8:45 am]
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