Swear back of a reference
Encyclopedia
In United States patent law
, "swearing back of a reference" is a process where an inventor
, in certain circumstances, can get a US patent
even though the invention
became public before the inventor filed an original patent application
.
National governments grant patents to promote the welfare of their respective nations. The rationale behind this is that general welfare of a nation is improved if inventions that would otherwise be kept secret are made public. Patents encourage 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 need for a government incentive to disclose the invention. Whether or not an inventor can "prove" they made the original invention before someone else made it public is irrelevant. Almost every country in the world bars an inventor from getting a patent once the invention is 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 patent application examination, a patent examiner 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.
Documentary evidence
must support all factual assertions in the swear back. A copy of a notebook
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.
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, "swearing back of a reference" is a process where an inventor
Inventor (patent)
In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention and its case law, no explicit, accurate definition of who exactly is an...
, in certain circumstances, can get a US patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
even though the invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
became public before the inventor filed an original patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
.
Background and rationale
There is a common misconception that if an inventor can prove they are the original inventor of an invention, they deserve a patent. This is not necessarily true.National governments grant patents to promote the welfare of their respective nations. The rationale behind this is that general welfare of a nation is improved if inventions that would otherwise be kept secret are made public. Patents encourage public disclosure by granting limited monopoly
Monopoly
A monopoly exists when a specific person or enterprise is the only supplier of a particular commodity...
rights to inventors for the new
Novelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
and non-obvious
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
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 need for a government incentive to disclose the invention. Whether or not an inventor can "prove" they made the original invention before someone else made it public is irrelevant. Almost every country in the world bars an inventor from getting a patent once the invention is 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 patent application examination, a patent examiner 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 or in filing a patent application.Documentary evidence
Documentary evidence
Documentary evidence is any evidence introduced at a trial in the form of documents. Although this term is most widely understood to mean writings on paper , the term actually include any media by which information can be preserved...
must support all factual assertions in the swear back. A copy of a notebook
Inventor's notebook
An inventor's notebook is used by inventors, scientists and engineers to record their ideas, invention process, experimental tests and results and observations. It is not a legal document but is valuable, if properly organized and maintained, since it can help establish dates of conception and...
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.