[Patentcenter] Declarations under 37 CFR 1.130 to Overcome 35 USC 102(a) rejections
Andrew Berks
andrew at berksiplaw.com
Fri Jan 12 10:59:46 EST 2024
Yes, thanks David. This is an interesting subject because overcoming a
rejection based on the inventor's own work that is within the scope of AIA
§102(b) seems to require a declaration under 1.130. The attorney can't
argue this.
Andrew Berks, Ph.D., J.D. | Partner
Patent Attorney and IP Licensing
FRESH IP PLC
28 Liberty St 6th Fl
New York NY 10005 (US)
Main office: 11710 Plaza America Drive, Suite 2000, Reston, VA 20190 USA
e: andrew at freship.com | w: www.freship.com berksiplaw.com
Direct: +1-845-558-7245 <http://voice.google.com/calls?a=nc,%2B18455587245>
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On Thu, Jan 11, 2024 at 5:39 PM Sarah Adriano <
sbadriano at adrianoassociates.com> wrote:
> Thanks David!
>
>
>
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> *From:* Patentcenter [mailto:patentcenter-bounces at oppedahl-lists.com] *On
> Behalf Of *David Boundy via Patentcenter
> *Sent:* Thursday, January 11, 2024 3:33 PM
> *To:* For bug reports, feature requests, and tips and tricks about Patent
> Center. <patentcenter at oppedahl-lists.com>
> *Cc:* David Boundy <DavidBoundyEsq at gmail.com>; Andrew Berks <
> andrew at berksiplaw.com>
> *Subject:* Re: [Patentcenter] Declarations under 37 CFR 1.130 to Overcome
> 35 USC 102(a) rejections
>
>
>
> Oh. Here's my longer essay on declarations/affidavits.
>
>
>
> A "declaration" is a statement opining to facts that ends with a
> penalty-of-perjury or 18 U.S.C. § 1001 paragraph. An "affidavit" is that
> plus a notarized signature.
>
> The dominant concern in declarations/affidavits, overshadowing and
> governing everything else, is inequitable conduct. The Federal Circuit has
> zero tolerance for error in declarations/affidavits--if something is
> provably wrong, then the Federal Circuit all but says that both materiality
> and intent are established. So if you are thinking about a
> declaration/affidavit, the first thing you must do is choose a path that
> guarantees zero risk of error, no matter what you don't know.
>
> If you were ever an engineer for Boeing, or if you were a compiler writer,
> or had some similar engineering role where small errors have outsize costs,
> you have the mindset and developed some techniques to ensure zero-defect
> engineering. You have to think the same way here.
>
> - Be sure you're spot on with the specific fact to hit the examiner's
> ground -- never use a declaration/affidavit to opine on something that's a
> millimeter off hitting the exact, smallest, most-precise nail exactly on
> the head. All declarations/affidavits are risky. An declaration/affidavit
> that addresses the wrong point, or that misses the right point by a
> millimeter is risk with no return. An declaration/affidavit has to inflict
> a mortal wound via a single thrust of a short, sharp stilletto into a vital
> organ , not 1000 hacks with a machete.
> - You can only use an declaration/affidavit for issues of FACT, not
> issues of LAW.
> - (Almost) never use an declaration/affidavit where attorney argument
> is legally sufficient (unless you have an examiner that is totally dug in
> to a factual error and doesn't understand the concept of "burden of proof"
> and you don't want to appeal). Attorney argument won't get you in
> inequitable conduct trouble.
> - Declarations/affidavits are especially warranted on issues where you
> have the burden of proof, and rarely worth the risk on issues where you
> don't.
> - Declarations/affidavits can be useful to say "Examiner Jones's
> Action states x. Examiner Jones is wrong." If you don't have the burden of
> proof, your affiant doesn't have to opine on the true fact, only explain
> falsity of the examiner's. Especially if the burden of proof is in your
> favor, if you have an declaration/affidavit to say the examiner is wrong,
> then your attorney argument controls the field.
> - Choose wisely whether a declaration/affidavit is or is not the right
> tool -- not every fact is suitable for treatment by declaration/affidavit.
> Some are very low risk, some are very high.
>
> · Declarations/affidavits are generally safe on issues where the
> examiner has all the same information the declarant has. The danger with a
> declaration/affidavit is where there's some possibility that during
> discovery some doc will show up that contradicts the declaration.
>
> · An expert's opinion on the ordinary usage of terms of art is low
> risk.
>
> · An expert's opinion on the interpretation of an ambiguity in a
> technical document is low risk.
>
> · An affidavit interpreting some other evidence, where all the
> relevant information is there on the face of the page, and the question is
> what it means, is almost always safe -- your affiant can't be accused of
> hiding or distorting, just offering an opinion.
>
> · An affidavit that opines that something didn't happen, and
> there's a micro-chance that, in discovery, some document will show that it
> actually did, is a high-risk affidavit. *eSpeed, Inc. v. BrokerTec
> USA, LLC*, 480 F. 3d 1129 (Fed. CIr. 2007)
> https://scholar.google.com/scholar_case?case=11175138575348740529
>
> · An affidavit on a fact where there might be a contradictory
> document that comes out in discovery is *extremely* dangerous.
>
> - Choose an affiant with first-hand knowledge -- NEVER rely on one
> affiant to report knowledge of some other person. See *eSpeed.*
> - Proceed with great respect and fear of your own fallibility, and
> things you might not know.
>
> Then the content of the affidavit (See 16/278,112 Reply of June 16, 2023,
> Exhibits A and B starting at pages 19 and 26. for examples):
>
> - Establish expertise or basis to testify.
> - If there's a milligram of potential conflict of interest, disclose
> it.
> - Be 1000% accurate. Affidavit error very quickly becomes affidavit
> fraud, and that makes the whole patent *family* unenforceable.
> - State enough basis (hard to give guidelines), and not one word
> more. Know who has the burden of proof on that fact, and say enough, and
> then stop. What you *don't* say is as important as what you do.
> Often, the point is "Examiner Jones is wrong" and you don't have to say
> very much about what's right. Usually, the less you say the better.
> - Word the statement using the relevant standard of proof. For
> example, if your affidavit is directed to an examiner's misreading of a
> claim, you have to address "broadest reasonable interpretation:" "In my
> opinion, Examiner Jones' interpretation is not just wrong, it it entirely
> unreasonable." or "In my opinion, no person [in my field] would reasonably
> understand the language as Examiner Jones posits." If you are opining on
> the *Wands* factors for enablement, use the very words of those
> factors, and walk through them one by one.
> - If something is the affiant's opinion, state it as "my opinion" --
> subjective opinion is unassailable fact, even if the opinion turns out to
> be wrong!
> - Nail the fact you need to nail. No dancing around it. Many patent
> attorneys, when confronting a plain old error by an examiner, dive deep
> into non-confrontational, deferential language. NOT HERE. In most cases,
> the purpose of an affidavit is to rebut an examiner's mistake. Use a
> hard-edged word in a short sentence that leaves no wiggle room: "in my
> opinion, Examiner Jones is wrong." Not "Few people would agree with
> Examiner Jones."
> - Close with the section 1001 paragraph.
>
> If you do a google search, you'll find good articles. E.g.
> https://www.foley.com/en/insights/publications/2018/01/three-things-to-know-about-rule-130-declarations
> and
> https://www.aipla.org/docs/default-source/committee-documents/bcp-files/bcp-130-declarations_kfonda.pdf?sfvrsn=7eea5de_2
>
> Examples:
>
> - 09/611,548, January 25, 2018 (understanding of terms to one of
> ordinary skill)
> - 11/024,729, November 16, 2008 (definitions, interpretation of a
> reference)
> - 15/068,899, June 7, 2022 (enablement)
> - 16/658,072, November 8, 2021 (obviousness secondary indicia)
> - 16/278,112 Reply of June 16, 2023, Exhibits A and B starting at
> pages 19 and 26 (ordinary meaning of claim terms, interpretation of
> references)
>
>
>
> On Thu, Jan 11, 2024 at 5:42 PM Andrew Berks via Patentcenter <
> patentcenter at oppedahl-lists.com> wrote:
>
> If anyone has filed a declaration under 37 CFR 1.130 to overcome a
> rejection under 35 USC §102(a)(1) or §102(a)(2) (or has seen such a
> declaration) (see also MPEP 2152.06), please send me a serial no. that I
> can pull from Patent Center.
>
>
>
> Thanks
>
>
>
> *Andrew Berks, Ph.D., J.D.* *| Partner*
>
> *Patent Attorney and IP Licensing*
>
> FRESH IP PLC
>
> 28 Liberty St 6th Fl
>
> New York NY 10005 (US)
>
> Main office: 11710 Plaza America Drive, Suite 2000, Reston, VA 20190 USA
> *e:* andrew at freship.com | *w: *www.freship.com berksiplaw.com
>
> *Direct*: +1-845-558-7245
>
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>
> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
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>
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