In re Steed stems from inventors’ attempts to represent themselves before a patent examiner, the patent office board of appeals, and the U.S. Court of Appeals for the Federal Circuit (Federal Circuit). While the inventors put forth a valiant effort, their attempt to make use of a complex patent office procedure fell flat because both their arguments and their evidence were insufficiently crisp and clear.

What This Means to You

  • “Swearing behind” a reference can be a great tactic in patent prosecution to prevent problematic references from being considered by an examiner.
  • Ensure your arguments and evidence are clearly tied to the claims under consideration.
  • This tactic can only be used under the “old,” pre-AIA statutes, for patent applications filed before March 2013.

Case Background

Steed and his co-inventors filed a patent application to protect their debt management software, but ran into difficulties convincing the examiner their idea was different from that described by a patent application filed almost a year before their own application was filed. As an alternative to amending their claims to differentiate them from the earlier application, Steed and his co-inventors tried to “swear behind” the earlier application to demonstrate that their ideas predated the earlier application, even though their application was filed later.

Swearing behind a reference is an option available to applications under the old first-to-invent system where the invention date is the important date for patentability. This is different from the new (since 2013) first-inventor-to-file system where only the filing date of the application is relevant and the invention date is not considered.

Swearing behind requires a clear demonstration that the inventors either (1) created a working prototype implementing the claimed technology before the reference was filed/published, or (2) both (a) clearly conceived of each of the ideas set out in the pending claims before the reference was filed/published and, from a time before the reference was filed/published, were diligently working toward creating a working prototype or filing a patent application.

Decision Analysis

Steed and his co-inventors’ difficulties arose because their arguments and evidence did not clearly demonstrate either of the two conditions necessary to successfully swear behind. In fact, their arguments did not specifically identify which of the two they were attempting to satisfy. While they provided hundreds of pages of documentation that they said showed their conception of the ideas reflected in the claims and their work toward creating a working prototype of those ideas, they did not link their evidence to the individual limitations of the claims they were pursuing at the patent office.

Though the examiner explained the lack of clarity in the argument and evidence, they took the issue to the patent office’s internal appeal board. After the appeal board again explained the lack of clarity, Steed and his co-inventors again appealed, this time to the Federal Circuit. Unfortunately, the Federal Circuit also ruled against them, citing the lack of clarity.

Steed and his co-inventors now have an opportunity to return to the examiner and clarify the arguments and evidence, or amend the claims and try to differentiate them from the reference they were trying to swear behind.

Takeaways

Even routine procedures at the patent office can be difficult to navigate successfully without experience. A more complex procedure like swearing behind can be even more difficult. If you are prosecuting a patent application and determine that it may be best to swear behind a reference, you should certainly consider hiring an experienced patent attorney.

In addition, for either attorneys or inventors who are compiling arguments and evidence to swear behind, take care to ensure your argument identifies which of the conditions for swearing behind you are attempting to prove and that your evidence is clearly tied to the individual limitations of the claim.