Last Friday, the BPAI issued a decision reversing all rejections in the ex parte reexamination appeal of U.S. Patent 6,513,042. The patent is owned by Test.com and is directed to methods of on-line testing of students (test-takers). The patent was challenged back in April 5, 2006 by the Electronic Frontier Foundation.
The primary issue in this appeal was whether or not antedating declarations (swear behind) required all inventor signatures, or whether or not the declarations can be executed by a representative of the Patent Owner alone. The examiner pointed to aspects of MPEP 715.04 that seemed to imply that all inventors must sign an antedating declaration in both application prosecution and reexamination. The Patent Owner relied upon the language of 37 CFR 1.131 (rule) which stated that the patent owner or all inventors may sign in a reexamination. The BPAI found that the clear language of the rule trumped any perceived inconsistency in the MPEP.
This issue was also argued in the NTP reexamination briefs. In those decisions the Board did not appear to specifically comment on the issue, instead rejecting the substance of the antedating declarations (however in that case the an inventor was well known to be deceased). This decision removes any ambiguity (assuming there was any in the first place) as to the propriety of a Patent Owner declaration in reexamination.