How should an examiner handle affidavits or declarations in an examiner’s answer?

When handling affidavits or declarations in an examiner’s answer for an inter partes reexamination proceeding, the examiner should follow the guidance provided in MPEP 2677. The key points are:

1. The examiner should report their conclusions on any affidavits, declarations, or exhibits that were admitted to the record.
2. Affidavits or declarations swearing behind a patent should be clearly identified as being considered under either 37 CFR 1.131(a) or 37 CFR 41.154(a).
3. The distinction between 37 CFR 1.131(a) and 37 CFR 41.154(a) affidavits or declarations is important because the Board will usually consider holdings on 37 CFR 1.131(a) affidavits or declarations but not holdings on 37 CFR 41.154(a) affidavits or declarations in appeal cases.

The MPEP states:

“The examiner should report his/her conclusions on any affidavits, declarations, or exhibits that were admitted to the record. Any affidavits or declarations in the file swearing behind a patent should be clearly identified by the examiner as being considered under either 37 CFR 1.131(a) or 37 CFR 41.154(a).”

Examiners should ensure that they properly categorize and address these affidavits or declarations in their answer, as this can impact how the Board considers them during the appeal process.

To learn more:

• examiner’s answer
• affidavits
• declarations
• inter partes reexamination
• patent examination