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717.01   Affidavit or Declaration Under 37 CFR 1.130

MPEP SECTION SUMMARY This section covers 37 C.F.R. 1.130, affidavit or declaration of attribution or prior public disclosure under the AIA. 37 CFR 1.130 provides a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art in accordance with 35 U.S.C. 102(b). This section covers situations where 37 C.F.R. 1.130 affidavits or declarations can and cannot be used. It also covers situations where 37 C.F.R. 1.130(a) affidavits or declarations are not required.

 This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA.

37 CFR 1.130 provides a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art in accordance with 35 U.S.C. 102(b).

In other words, 37 CFR 1.130, like 37 CFR 1.131 and 37 CFR 1.132, provides a mechanism for the submission of evidence to disqualify a disclosure as prior art or otherwise traverse a rejection.

• An applicant’s or patent owner’s compliance with 37 CFR 1.130 means that the applicant or patent owner is entitled to have the evidence considered in determining the patentability of the claim(s) at issue.
• It does not mean that the applicant or patent owner is entitled as a matter of right to have the rejection of, or objection to, the claim(s) withdrawn.

37 CFR 1.130(a) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

• 37 CFR 1.130(a) pertains to the provisions of subparagraph (A) of 35 U.S.C. 102(b)(1) and 102(b)(2).

37 CFR 1.130(b) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

• 37 CFR 1.130(b) pertains to the provisions of subparagraph (B) of 35 U.S.C. 102(b)(1) and 102(b)(2).

37 CFR 1.130(c) provides that the provisions of 37 CFR 1.130 are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention.

• A disclosure made more than one year before the effective filing date of the claimed invention is prior art under 35 U.S.C. 102(a)(1), and does not meet the requirements for exception under 35 U.S.C. 102(b)(1).

37 CFR 1.130(d) provides that the provisions of 37 CFR 1.130 apply to any application for patent, and to any patent issuing thereon, that is subject to 35 U.S.C. 102 and 103.

I.   SITUATIONS WHERE 37 CFR 1.130 AFFIDAVITS OR DECLARATIONS CAN BE USED

Affidavits or declarations under 37 CFR 1.130 may be used, for example:

• (A) When a claim is under a prior art rejection, to disqualify a disclosure (e.g., reference, activity, or portion thereof) that is relied upon as prior art under 35 U.S.C. 102(a)(1) or (2) by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor, subject to certain restrictions, as discussed below in subsection II.
• (B) When a claim is under a prior art rejection, to disqualify a disclosure (e.g., reference, activity, or portion thereof) that is relied upon as prior art under 35 U.S.C. 102(a)(1) or (2) by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, subject to certain restrictions, as discussed below in subsection II.

If effective, the showing that the disclosure is not prior art under 35 U.S.C. 102(a) will make the disclosure unavailable to be applied in a rejection under either 35 U.S.C. 102(a) or 35 U.S.C. 103.

For example, an applicant or patent owner may overcome a 35 U.S.C. 103 rejection based on a combination of references by showing that the subject matter disclosed in only one of the references (or portion thereof) applied in the rejection is not prior art.

• The U.S. patents or U.S. patent application publications may continue to be applied under the judicially created doctrine of nonstatutory double patenting, statutory double patenting and may serve as evidence of the level of ordinary skill or evidence relevant to an enablement inquiry.

II.   SITUATIONS WHERE 37 CFR 1.130 AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE

An affidavit or declaration under 37 CFR 1.130 is not appropriate in the following situations:

• (A) When the disclosure that is applied in a rejection is:
  • (1) a U.S. patent or U.S. patent application publication that
  • (2) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and
  • (3) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent under examination. In this case, an applicant or patent owner may file a petition for a derivation proceeding.
• (B) If the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention.
  • A disclosure made more than one year before the effective filing date of the claimed invention is prior art under 35 U.S.C. 102(a)(1), and may not be disqualified under 35 U.S.C. 102(b)(1).
  • Note that the provisions of 37 CFR 1.130 are available to overcome a rejection under 35 U.S.C. 102(a)(2) which is based on subject matter in an application or patent that was effectively filed, but not published or made publicly available, more than one year before the effective filing date of the claimed invention under examination, where the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
    
    

III.   SITUATIONS WHERE 37 CFR 1.130(a) AFFIDAVITS OR DECLARATIONS ARE NOT REQUIRED

• (A) A declaration under 37 CFR 1.130(a) is not required when a public disclosure, subject to the exceptions of 35 U.S.C. 102(b)(1)(A), is by one or more joint inventor(s) or the entire inventive entity of the application under examination and does not name anyone else.

• (B) A declaration under 37 CFR 1.130(a) is not required when the inventive entity of a U.S. patent, U.S. patent application publication or a WIPO publication that designates the United States, subject to the exceptions of 35 U.S.C. 102(b)(2)(A), only includes one or more joint inventor(s), but not the entire inventive entity, of the application under examination.

 

• (C) A declaration under 37 CFR 1.130(a) is not required if the specification of the application under examination identifies the disclosure or the subject matter disclosed, that is subject to the exceptions of 35 U.S.C. 102(b)(1)(A) or 35 U.S.C. 102(b)(2)(A) as having been made by or having originated from one or more members of the inventive entity of the application under examination.
  
  

MPEP SECTION SUMMARY This section covers the attribution of declarations or affidavits under 37 C.F.R. 1.130(a).

 This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA.

37 CFR 1.130(a) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

35 U.S.C. 102(b)(1)(A) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under 35 U.S.C. 102(a)(1) if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, and 35 U.S.C. 102(b)(2)(A) provides that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

MPEP SECTION SUMMARY This section covers the prior public disclosure of declarations or affidavits under 37 C.F.R. 1.130(b).

 This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA.

37 CFR 1.130(b) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

37 CFR 1.130(b) pertains to the provisions of subparagraph (B) of 35 U.S.C. 102(b)(1) and 102(b)(2).

• 35 U.S.C. 102(b)(1)(B) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under 35 U.S.C. 102(a)(1) if the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
• 35 U.S.C. 102(b)(2)(B) provides that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if the subject matter disclosed had, before such subject matter was effectively filed under 35 U.S.C. 102(a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
  
  

MPEP SECTION SUMMARY This section discusses who may make a declaration or affidavit under 37 C.F.R. 1.130(a). Essentially, the applicant or patent owner may submit an affidavit or declaration. This section also covers the format requirements of affidavits and declarations and attached exhibits.

 This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA.

I.   WHO MAY MAKE AFFIDAVIT OR DECLARATION

Anyone who has knowledge of the facts discussed in the declaration may sign a declaration under 37 CFR 1.130.

• In accordance with 37 CFR 1.130, however, it is the applicant or patent owner who may submit (i.e., file) an affidavit or declaration.
• When an assignee, obligated assignee, or person showing sufficient proprietary interest is the applicant rather than the inventor, the inventor may sign an affidavit or declaration under 37 CFR 1.130 to disqualify a disclosure of the invention as prior art, but the declaration must be filed by a party having authority to take action in the application.
• Authority to file papers in an application generally does not lie with the inventor if the inventor is not the applicant.
  
  

II.   FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS AND ATTACHED EXHIBITS

An affidavit is a statement in writing made under oath before a notary public, magistrate, or officer authorized to administer oaths.

37 CFR 1.68 permits a declaration to be used instead of an affidavit. The declaration must include an acknowledgment by the declarant that willful false statements and the like are punishable by fine or imprisonment, or both and may jeopardize the validity of the application or any patent issuing thereon.

• The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.

Exhibits must comply with the requirements of 37 CFR 1.91 to be entered into an application file.

MPEP SECTION SUMMARY This section covers instances where a U.S. patent or application publication claims the same invention.

 This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA.

When a rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or patent owner may file a petition for a derivation proceeding of this title.

Permitting two different applicants to each aver or declare that an inventor named in the other application derived the claimed invention without a derivation proceeding to resolve who the true inventor is could result in the Office issuing two patents containing patentably indistinct claims to two different parties.

• Thus, the provisions of 37 CFR 1.130 are not available in certain situations to avoid the issuance of two patents containing patentably indistinct claims to two different parties.

The provisions of 37 CFR 1.130, however, would be available if:

• The rejection is based upon a disclosure other than a U.S. patent or U.S. patent application publication (such as non-patent literature or a foreign patent document);
• The rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application did not claim an invention that is the same or substantially the same as the applicant’s claimed invention; or
• The rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application that does claim an invention that is the same or substantially the same as the applicant’s claimed invention, but the affidavit or declaration under 37 CFR 1.130 does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent
  • e.g., an affidavit or declaration under 37 CFR 1.130 would be available if instead of alleging derivation the affidavit or declaration under 37 CFR 1.130 contends that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
    
    

MPEP SECTION SUMMARY The question of sufficiency of affidavits or declarations under 37 CFR 1.130 should be reviewed and decided by a primary examiner. Review of questions of formal sufficiency and propriety are by petition filed under 37 CFR 1.181. Review on the merits of a 37 CFR 1.130 affidavit or declaration is by appeal to the Patent Trial and Appeal Board.

MPEP SECTION SUMMARY This section explains that affidavits or declarations under 37 CFR 1.130 must be timely presented in order to be admitted. It further outlines the times when affidavits and declarations under 37 C.F.R. 1.139 may be submitted.

Affidavits or declarations under 37 CFR 1.130 must be timely presented in order to be admitted.

Affidavits and declarations submitted under 37 CFR 1.130 and other evidence traversing rejections are considered timely if submitted:

• (A) prior to a final rejection;
• (B) before appeal in an application not having a final rejection;
• (C) after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e); or
• (D) after the prosecution is closed (e.g., after a final rejection, after appeal, or after allowance) if applicant files the affidavit or other evidence with a request for continued examination (RCE) in a utility or plant application filed on or after June 8, 1995; or a continued prosecution application (CPA) in a design application.

All admitted affidavits and declarations are acknowledged and commented upon by the examiner in his or her next succeeding action.

• Review of an examiner’s refusal to enter an affidavit as untimely is by petition and not by appeal to the Patent Trial and Appeal Board.

 

» 2155 Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections