MPEP 2136.05(a)
Antedating a Pre-AIA 35 U.S.C. 102(e) Reference

Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020

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2136.05(a)    Antedating a Pre-AIA 35 U.S.C. 102(e) Reference [R-10.2019]

When a prior U.S. patent, U.S. patent application publication, or international application publication is not a statutory bar, a pre-AIA 35 U.S.C. 102(e) rejection can be overcome by antedating the filing date (see MPEP § 2136.03 regarding critical reference date of pre-AIA 35 U.S.C. 102(e) prior art) of the reference by submitting an affidavit or declaration under 37 CFR 1.131. The filing date of a pre-AIA 35 U.S.C. 102(e) reference can also be antedated by establishing priority to, or the benefit of, the filing date of an earlier application under 35 U.S.C. 119 or 35 U.S.C. 120.

I.    AFFIDAVIT OR DECLARATION UNDER 37 CFR 1.131

An affidavit or declaration under 37 CFR 1.131(a) can overcome a prior art rejection under pre-AIA 35 U.S.C. 102(e) by proving invention of the claimed subject matter by the inventor or at least one joint inventor prior to the effective date of the reference relied upon in the rejection.

When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration under 37 CFR 1.131(a) is not an acceptable method of overcoming the rejection. Under these circumstances, the examiner must determine whether a double patenting rejection or interference is appropriate. If there is a common assignee or inventor between the application and patent, a double patenting rejection must be made. See MPEP § 804. Note that a terminal disclaimer does not overcome a pre-AIA 35 U.S.C. 102(e) rejection. See, e.g., In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). If there is no common assignee or inventor and the rejection under pre-AIA 35 U.S.C. 102(e) is the only possible rejection, the examiner must determine whether an interference should be declared. See MPEP Chapter 2300 for more information regarding interferences.

For information on the required contents of a 37 CFR 1.131 affidavit or declaration and the situations in which such affidavits and declarations are permitted, see MPEP § 715 et seq.

An affidavit or declaration under 37 CFR 1.131 is not appropriate if the reference describes an inventor's or at least one joint inventor's own work. In this case, applicant must submit an affidavit or declaration under 37 CFR 1.132. See MPEP § 2136.05(b) for more information concerning the requirements of 37 CFR 1.132 affidavits and declarations.

II.    ESTABLISHING PRIORITY TO, OR THE BENEFIT OF, AN EARLIER FILING DATE

A rejection based on pre-AIA 35 U.S.C. 102(e) can be overcome by:

  • (A) Submitting a claim to priority under 35 U.S.C. 119(a) - (d) within the time period set in 37 CFR 1.55:
    • (1)
      • (a) for applications filed on or after September 16, 2012, by filing a corrected application data sheet under 37 CFR 1.76 which identifies a prior foreign application in accordance with 37 CFR 1.55, or
      • (b) for applications filed prior to September 16, 2012, by filing a corrected application data sheet under 37 CFR 1.76 which identifies a prior foreign application in accordance with 37 CFR 1.55 or by identifying the prior foreign application in the oath or declaration under pre-AIA 37 CFR 1.63,

      and

    • (2) by establishing that the prior foreign application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) (for applications filed on or after September 16, 2012), or 35 U.S.C. 112, first paragraph (for applications filed prior to September 16, 2012); or filing a grantable petition to accept an unintentionally delayed priority claim under 37 CFR 1.55. See MPEP §§ 213 - 216. The foreign priority filing date must antedate the reference and be perfected. The filing date of the priority document is not perfected unless applicant has filed a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55 ); and/or
  • (B) Submitting a benefit claim under 35 U.S.C. 119(e) or 120, within the time periods set in 37 CFR 1.78:
    • (1)
      • (a) for applications filed on or after September 16, 2012, filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78, or
      • (b) for applications filed prior to September 16, 2012, amending the specification of the application to contain a specific reference to a prior application or by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78,

      and

    • (2) establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) (for applications filed on or after September 16, 2012), or 35 U.S.C. 112, first paragraph (for applications filed prior to September 16, 2012) or filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78.

The filing date of a prior application cannot be used to antedate a reference if the application at issue is not entitled to claim the benefit of the prior application under 35 U.S.C. 119(e), 120, 121, or 365(c). In re Costello, 717 F.2d 1346, 219 USPQ 389 (Fed. Cir. 1983).