Swear back of a reference

In United States patent law, "swearing back of a reference" is a process whereby an inventor in certain circumstances can get a US patent even though the invention became public before the inventor’s original patent application was filed.

Background and rationale

There is a common misconception that if an inventor can prove that he or she is the original inventor of an invention, then he/she deserves to get a patent. This is not necessarily true.

Patents are granted to inventors by national governments in order to promote the welfare of their respective nations. The rationale behind this is that the general welfare of given nation will be improved if inventions that would otherwise be kept secret are made public. Patents provide encouragement for this public disclosure by granting limited monopoly rights to inventors for the new and non-obvious aspects of their inventions that they describe in their patent applications.

Accordingly, if an invention has already been disclosed to the public before a patent application is filed, there is no longer any need for a government to provide an incentive to disclose the invention. Whether or not an inventor can "prove" that he or she made the original invention before someone else made it public is irrelevant. For almost every country in the world, an inventor is barred from getting a patent once the invention becomes public.

A critical exception is the United States. The United States grants a one-year grace period from when an invention first becomes public to when an inventor has to file their patent application. If, in the course of examination of a patent application, a patent examiner cites a reference that predates the filing date of said patent application by less than a year, an inventor may still get a US patent if he or she can swear back of the publication date of said reference.

Procedure

In order to effectively swear back of a reference, an inventor submits a declaration to the US patent office along with written evidence to show that they fully conceived of the invention before the effective date of the reference. They must also show that they were diligent in either reducing the invention to practice or in filing a patent application.

All factual assertions in the swear back declaration must be supported by documentary evidence. A copy of a notebook page describing the invention that is 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 evidence. 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.

ee also

* [http://www.uspto.gov/web/offices/pac/mpep/documents/0700_715.htm#sect715 MPEP 715 Swearing Back of Reference - Affidavit or Declaration Under 37 CFR 1.131]
* [http://marketsandpatents.com/IPB-12152005.mht Nowotarski, M, “Swearing back” at the Patent Office?, Insurance IP Bulletin, Vol 2005.5, Dec 2005]