United States patent law Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...

, "swearing back of a reference" is a process where an

inventor An invention is a unique or novel device, method, composition, idea or process. An invention may be an improvement upon a machine, product, or process for increasing efficiency or lowering cost. It may also be an entirely new concept. If an ...

, in certain circumstances, can get a US

patent A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...

even though the

invention An invention is a unique or novel device, method, composition, idea or process. An invention may be an improvement upon a machine, product, or process for increasing efficiency or lowering cost. It may also be an entirely new concept. If an i ...

became public before the inventor filed an original

patent application A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and re ...

. This law has been substantially changed as of March 16, 2013, the effective date of the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), although this procedure is still available in patent applications entitled to effective filing dates before this date. The pre-AIA law granted a one-year grace period from when the invention became known in certain ways to when an inventor had to file their patent application.Pre-AIA 35 USC 102(b)
/ref> If, in the course of patent application examination, a

patent examiner A patent examiner (or, historically, a patent clerk) is an employee, usually a civil servant with a scientific or engineering background, working at a patent office. Major employers of patent examiners are the European Patent Office (EPO), the Unit ...

cites a reference that predates the filing date of the patent application by less than a year, an inventor may still get a US patent if they can swear back of the publication date of the reference.

Procedure

To effectively swear back of a reference, an inventor submits a declaration to the US patent office, with written evidence that shows they fully conceived of the invention before the effective date of the reference. They must also show they were diligent in either

reducing the invention to practice In United States patent law, the reduction to practice is the step in the formation of an invention beyond the conception thereof. Reduction to practice may be either actual (the invention is actually carried out and is found to work for its intende ...

or in filing a patent application.

Documentary evidence Documentary evidence is any evidence that is, or can be, introduced at a trial in the form of documents, as distinguished from oral testimony. Documentary evidence is most widely understood to refer to writings on paper (such as an invoice, a con ...

must support all factual assertions in the swear back. A copy of a

notebook A notebook (also known as a notepad, writing pad, drawing pad, or legal pad) is a book or stack of paper pages that are often ruled and used for purposes such as note-taking, journaling or other writing, drawing, or scrapbooking. History ...

page that describes the invention, signed by the inventor, dated, and preferably witnessed by a third party can serve as written evidence. A written declaration by a witness that attests to when the invention was conceived can also be adequate. Similar evidence may be used to support the assertion of diligence. It can be very difficult to demonstrate diligence. The inventor, for example, must work continuously on the invention. If the inventor works on another invention before the first one is reduced to practice, that destroys the continuity and the inventor is deemed to not have been sufficiently diligent to be entitled to a patent. Many other restrictions apply as well.

References

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External links

MPEP 715 Swearing Back of Reference - Affidavit or Declaration Under 37 CFR 1.131

Nowotarski, M, “Swearing back” at the Patent Office?, Insurance IP Bulletin, Vol 2005.5, Dec 2005
United States patent law