Law - Last Day To File and Swear Back To Reduction To Practice

If, during the prosecution of a U.S. patent application, a reference is cited by the Examiner that would otherwise render a claimed invention unpatentable ("anticipated" or "obvious"), the inventor can "swear behind" the reference by submitting evidence that he/she completed the invention (in the U.S., or in a NAFTA or WTO member country) before the effective date of the reference. In order to encourage early filing of U.S. patent applications, U.S. law bars swearing back of references with effective dates more than twelve months before his/her U.S. filing date, even if the reference is the inventor's own work. For this reason, Patent Partner automatically sets up a milestone when an inventor discloses the first "date of construction of invention," which date may be the completion date of the invention. Testing of the invention under conditions that reflect its intended, disclosed use might also be required, if testing would have been considered necessary to prove the utility of the invention to a person skilled in the art. In that even completion of an invention does not guarantee patentability in the U.S. (if the invention is abandoned, suppressed or concealed), this milestone is a warning that filing a patent application disclosing the invention (or making the invention known to the public) should occur in a timely manner.

The position of the USPTO on this issue is described in the following section(s) of the Manual of Patent Examining Procedure (MPEP):

MPEP 2138.03 - "By Another Who Has Not Abandoned, Suppressed or Concealed It"
MPEP 2138.01 - Interference Practice
MPEP 2138.02 - "The Invention Was Made in This Country"
MPEP 715 - Swearing Back of Reference-Affidavit or Declaration Under 37 CFR 1.131

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