Editing MPEP 715
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{{Statute|37 CFR 1.131. Affidavit or declaration of prior invention.}} | {{Statute|37 CFR 1.131. Affidavit or declaration of prior invention.}} | ||
(a) When any claim of an application or a patent under reexamination | (a)When any claim of an application or a patent under reexamination | ||
is rejected, the inventor of the subject matter of the | is rejected, the inventor of the subject matter of the | ||
rejected claim, the owner of the patent under reexamination, or the | rejected claim, the owner of the patent under reexamination, or the | ||
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Prior invention may not be established under this section if either: | Prior invention may not be established under this section if either: | ||
<p style="padding-left: +20px;">(1) The rejection is based upon a U.S. patent or U.S. patent | <p style="padding-left: +20px;">(1)The rejection is based upon a U.S. patent or U.S. patent | ||
application publication of a pending or patented application to | application publication of a pending or patented application to | ||
another or others which claims the same patentable invention as | another or others which claims the same patentable invention as | ||
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suggest an interference pursuant to § 41.202(a) of this title; or</p> | suggest an interference pursuant to § 41.202(a) of this title; or</p> | ||
<p style="padding-left: +20px;">(2) The rejection is based upon a statutory bar.</p> | <p style="padding-left: +20px;">(2)The rejection is based upon a statutory bar.</p> | ||
(b) The showing of facts shall be such, in character and | (b)The showing of facts shall be such, in character and | ||
weight, as to establish reduction to practice prior to the effective | weight, as to establish reduction to practice prior to the effective | ||
date of the reference, or conception of the invention prior to the | date of the reference, or conception of the invention prior to the | ||
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Under 37 CFR 1.131(a), which provides for the | 37 CFR 1.131(a) has been amended to implement | ||
the relevant provisions of Public Law 103-182, | |||
107 | |||
Stat. 2057 (1993) (North American Free Trade | |||
Agreement Act), Public Law 103-465, 108 Stat. 4809 | |||
(1994) (Uruguay Round Agreements Act), and Public | |||
Law 106-113, 113 Stat. 1501 (1999) (American | |||
Inventors Protection Act), respectively. Under | |||
37 | |||
CFR 1.131(a) as amended, which provides for the | |||
establishment of a date of completion of the invention | establishment of a date of completion of the invention | ||
in a NAFTA or WTO member country, as well as in | in a NAFTA or WTO member country, as well as in | ||
the United States, an applicant can establish a date of | the United States, an applicant can establish a date of | ||
completion in a NAFTA member country on or after | completion in a NAFTA member country on or after | ||
December 8, 1993 | December 8, 1993, the effective date of section 331 of | ||
Agreement Act | Public Law 103-182, the North American Free Trade | ||
member country on or after January 1, 1996 | Agreement Act, and can establish a date of completion | ||
in a WTO member country other than a NAFTA | |||
member country on or after January 1, 1996, the | |||
effective date of section 531 of Public Law 103-465, | |||
the Uruguay Round Agreements Act (URAA). Acts | |||
occurring prior to the effective dates of NAFTA or | |||
URAA may be relied upon to show completion of the | |||
invention; however, a date of completion of the invention | |||
may not be established under 37 CFR 1.131before December 8, 1993 in a NAFTA country or | |||
before January 1, 1996 in a WTO country other than a | |||
NAFTA country. | |||
If a country joined the WTO after January 1, 1996, the effective date for proving inventive activity in that country for the purpose of 35 U.S.C. 104 and 37 CFR 1.131 is the date the country becomes a member of the WTO. See | If a country joined the WTO after January 1, 1996, | ||
the effective date for proving inventive activity in that | |||
country for the purpose of 35 U.S.C. 104 and 37 CFR | |||
1.131 is the date the country becomes a member of the | |||
WTO. See MPEP § 201.13 for a list that includes | |||
WTO member countries (the notation “Wo” indicates | |||
the country became a WTO member after January 1, | |||
1996). | |||
Any printed publication or activity dated prior to an | Any printed publication or activity dated prior to an | ||
applicant’s or patent owner’s effective filing date, or | |||
any domestic patent of prior filing date, which is in its | any domestic patent of prior filing date, which is in its | ||
disclosure pertinent to the claimed invention, is available | disclosure pertinent to the claimed invention, is available | ||
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application publications having an effective | application publications having an effective | ||
prior art date prior to the application being examined | prior art date prior to the application being examined | ||
may be used in a rejection of the claims. See | may be used in a rejection of the claims. See MPEP | ||
§ 706.02(a) and § 2136 - § 2136.03. | |||
Such a rejection may be overcome, in certain | Such a rejection may be overcome, in certain |