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(Message started by: Moto on Mar 15th, 2006, 3:30pm)

Title: 131 Declarations
Post by Moto on Mar 15th, 2006, 3:30pm
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?
:-[

Title: Re: 131 Declarations
Post by JimIvey on Mar 15th, 2006, 3:54pm
Here's 35 USC 102:
http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000102----000-.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.

Title: Re: 131 Declarations
Post by SciGuy on Mar 15th, 2006, 4:13pm
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.

Title: Re: 131 Declarations
Post by frank10 on May 9th, 2006, 3:43pm
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?

Title: Re: 131 Declarations
Post by Isaac on May 9th, 2006, 4:25pm

on 05/09/06 at 15:43:33, 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.


Title: Re: 131 Declarations
Post by frank10 on May 9th, 2006, 4:35pm
Thanks for responding Isaac.  Does using a first draft to establish a conception date preclude later establishing an earlier conception date?  It would be easier to establish diligence from the first draft date than the earliest conception date or invention disclosure.

Title: Re: 131 Declarations
Post by Isaac on May 9th, 2006, 5:20pm

on 05/09/06 at 16:35:43, frank10 wrote:
Thanks for responding Isaac. Does using a first draft to establish a conception date preclude later establishing an earlier conception date? It would be easier to establish diligence from the first draft date than the earliest conception date or invention disclosure.


Establishing an easy conception date it does not preclude later making a more difficult effort to establish an earlier conception date.  

Title: Re: 131 Declarations
Post by frank10 on May 10th, 2006, 8:42am
so now i need to investigate whether there is reasonable diligence from that point to filing of the application.

The MPEP (2138.06) states that 6 days from execution of formal documents to filing is reasonable.  If I have more than a month or two, that puts me in a gray or dark gray area.

Title: Re: 131 Declarations
Post by ZoeyG on Aug 7th, 2007, 8:09pm
So does Frank10 need to submit evidence of diligence OR can he just aver due diligence prior to the reference date to the filing date of the application (constructive reduction to practice)?  THanks.

Title: Re: 131 Declarations
Post by Isaac on Aug 7th, 2007, 8:29pm

on 08/07/07 at 20:09:30, ZoeyG wrote:
So does Frank10 need to submit evidence of diligence OR can he just aver due diligence prior to the reference date to the filing date of the application (constructive reduction to practice)? THanks.


The latter.   (from just prior to the date of the reference till actual or constructive reduction to practice)

Title: Re: 131 Declarations
Post by JimIvey on Aug 8th, 2007, 1:56pm
My understanding is that you must aver something more than "Oh, and we were diligent from date A to date B; we really were."  I believe you can aver diligence but by avering facts that show diligence.

For example, cite minutes of a meeting in which an implementation was discussed; cite notes re a demo of basic functionality; aver diligent implementation in the time between those events; and note that the time between those events is not an unreasonable amount of time for diligent development.

Regards.

Title: Re: 131 Declarations
Post by Isaac on Aug 9th, 2007, 7:54am
Jim's right.  I completely missed the point of the question.  Sorry about that.



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