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   131 Declarations
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Moto
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131 Declarations
« on: Mar 15th, 2006, 3:30pm »
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Is this right - a Rule 131 Declaration can only be used if the patent reference is not more than one year prior to Applicants effective filing date -  
 
how does that work if I have a provisional and a regular application?  Which date is the effective filing date for 131 purposes?
 
Why would there be a time limit of one year?
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JimIvey
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Re: 131 Declarations
« Reply #1 on: Mar 15th, 2006, 3:54pm »
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Here's 35 USC 102:
http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000102----0 00-.html
 
A Rule 131 Declaration is to establish an invention date prior to the filing date of an application.  Note that not all of the paragraphs of Section 102 pertain to date of invention.  Most notably, 102(b) pertains to one year prior to the date of filing of the application, not the date of invention.  So, proving an earlier filing date won't help you with respect to Section 102(b).
 
Regards.
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James D. Ivey
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SciGuy
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Re: 131 Declarations
« Reply #2 on: Mar 15th, 2006, 4:13pm »
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Q1:  If the ref is prior to 1 year from your filing date then it sounds like a rejection under 102(b).  If that is the case, then you are correct that 131 can't be used.  102(b) can only be traversed by perfecting priority, arguing that your claims are distinct from the ref, or amending the claims to make them distinct.
 
Q2:  If I understand you correctly, you have a non-provisional that has the priority of a provisional.  If so, then the effective filing date of the non-provisional/"regular" application is the filing date of the provisional.  If during prosecution of the non-prov you get a 102(a) or (e) rejection then you might be able to antedate the prior art ref  by using 131.  You would have to show that conception and/or actual reduction to practice by you occured before the ref (and that there was diligence).
 
Q3:  Since refs/acts under 102(b) can be by you (in contrast to 102(a) or (e), which must be by others), the effect is that you have to get on the ball and file an application within a year after you publish your findings, sell the invention, allow others to used it, etc.  In other words, you have a 1 year grace period to file after publishing or commercializing your invention.
 
Please keep in mind that I'm a novice.  If there are any inaccuracies in my post I hope others on the board point them out.
« Last Edit: Mar 15th, 2006, 5:17pm by SciGuy » IP Logged
frank10
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Re: 131 Declarations
« Reply #3 on: May 9th, 2006, 3:43pm »
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so what counts as a reduction to practice?  does a first draft of the patent application count?  Do you have to show diligence from the reduction to practice?
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Isaac
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Re: 131 Declarations
« Reply #4 on: May 9th, 2006, 4:25pm »
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on May 9th, 2006, 3:43pm, frank10 wrote:
so what counts as a reduction to practice?  does a first draft of the patent application count?  Do you have to show diligence from the reduction to practice?

 
A first draft is generally sufficient to show conception (for at least whatever is properly disclosed) but not to show reduction to practice.   For that matter, a detailed invention disclosure form migh constitute evidence of conception.    
 
A filed patent application is constructive reduction to practice as of its filing date, but that's not so for even a final form application sitting on your practitioner's desk.    
 
You don't have to show diligence after reduction to practice, but you cannot abandon, conceal, the invention.  The effective filing date is the date you filed adjusted for whatever priority you can claim.
 
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Isaac
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