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

MPEP SECTION SUMMARY This section discusses using affidavits or declarations under 37 C.F.R. 1.130 to overcome prior art rejections. The Office has provided a mechanism in 37 CFR 1.130 for filing an affidavit or declaration to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b).

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

Under 37 CFR 1.130(a), an affidavit or declaration of attribution may be submitted to disqualify a disclosure as prior art because it 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.

Under 37 CFR 1.130(b), an affidavit or declaration of prior public disclosure may be submitted to disqualify an intervening disclosure as prior art if the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed in a U.S. patent, U.S. patent application publication, or WIPO published application, 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 explains that a grace period disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if the disclosure was made by the inventor or a joint inventor.

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if the disclosure was made by the inventor or a joint inventor.

• An applicant may show that a disclosure was made by the inventor or a joint inventor by way of an affidavit or declaration under 37 CFR 1.130(a) (an affidavit or declaration of attribution).

Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an “unequivocal” statement from the inventor or a joint inventor that he/she (or some specific combination of named inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary.

• However, a mere statement from the inventor or a joint inventor without any accompanying reasonable explanation may not be sufficient where there is evidence to the contrary.
  
  

MPEP SECTION SUMMARY This section explains that a grace period disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor.

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

AIA 35 U.S.C. 102(b)(1)(B) provides that a grace period disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor.

• Similarly, AIA 35 U.S.C. 102(b)(2)(B) provides that a disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed had, before such subject matter was effectively filed under AIA 35 U.S.C. 102(a)(2), been publicly disclosed by the inventor or a joint inventor.

An applicant may show that the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor before the disclosure or effective filing date of the subject matter on which the rejection was based by way of an affidavit or declaration under 37 CFR 1.130(b) (an affidavit or declaration of prior public disclosure).

• Specifically, the affidavit or declaration must identify the subject matter publicly disclosed and establish the date and content of their earlier public disclosure.
• If the earlier public disclosure is a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication in accordance with 37 CFR 1.130(b)(1).
• If the earlier disclosure is not a printed publication, the affidavit or declaration must describe the earlier disclosure with sufficient detail and particularity to determine that the earlier disclosure is a public disclosure of the subject matter, as required by 37 CFR 1.130(b)(2).

The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b)(2) is not critical.

MPEP SECTION SUMMARY This section explains instances showing that the disclosure was made, or than subject matter had been previously publicly disclosed, by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

AIA 35 U.S.C. 102(b)(1)(A), 102(b)(1)(B), 102(b)(2)(A), and 102(b)(2)(B) each provide similar treatment for disclosures of subject matter by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

• Specifically, AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if the disclosure was made by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, and AIA 35 U.S.C. 102(b)(2)(A) provides that a disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

In addition, AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) respectively provide that a grace period disclosure under AIA 35 U.S.C. 102(a)(1), and that a disclosure under AIA 35 U.S.C. 102(a)(2) shall not be prior art to a claimed invention, if the subject matter disclosed had, before such grace disclosure was made or before such subject matter was effectively filed according to 35 U.S.C. 102(a)(2), been publicly disclosed by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

• An applicant may also show that another obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor in an affidavit or declaration under 37 CFR 1.130(a) or (b).
• Thus, an applicant may establish a prior public disclosure by another during the grace period if the applicant can establish that subject matter disclosed originated with the inventor or a joint inventor and that the subject matter was communicated by the inventor or a joint inventor, directly or indirectly.
• Any documentation which provides evidence of the communication of the subject matter by the inventor or a joint inventor to the entity that made the disclosure of the subject matter directly or indirectly, such as by an assignee of the inventor, should accompany the affidavit or declaration.
  
  

MPEP SECTION SUMMARY This section discusses enablement. An affidavit or declaration under 37 CFR 1.130(a) or (b) need not demonstrate that the disclosure by the inventor, a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from an inventor or a joint inventor was an “enabling” disclosure of the subject matter within the meaning of 35 U.S.C. 112(a).

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

Rather, an affidavit or declaration under 37 CFR 1.130 must show that:

• the disclosure in question 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; or
• 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 In accordance with 37 CFR 1.130, the applicant or patent owner may submit an affidavit or declaration. This section covers further details concerning who may file an affidavit or declaration under 37 C.F.R. 1.130

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

When an assignee, obligated assignee, or person showing sufficient proprietary interest is the applicant under 35 U.S.C. 118 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.
  
  

MPEP SECTION SUMMARY 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. This section outlines further situations in which an affidavit or declaration is not available.

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

A disclosure made more than one year before the effective filing date of a claimed invention is prior art under AIA 35 U.S.C. 102(a)(1) that cannot be disqualified under AIA 35 U.S.C. 102(b)(1).

Additionally, the provisions of 37 CFR 1.130 may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication naming another inventor if:

• 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.

The provisions of 37 CFR 1.130 are not available if it would result in the Office issuing or confirming two patents containing patentably indistinct claims to two different parties.

 

» 718 Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c)