How does the USPTO determine if a disclosure is an inventor-originated disclosure?
The USPTO determines if a disclosure is an inventor-originated disclosure through a case-by-case analysis. According to the MPEP:
“What evidence is necessary to show that the disclosure is an inventor-originated disclosure requires case-by-case treatment, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is an inventor-originated disclosure.“
The USPTO considers a disclosure to be an apparent inventor-originated disclosure if:
- It was made one year or less before the effective filing date of the claimed invention
- It names the inventor or a joint inventor as an author or inventor
- It does not name additional persons as authors on a printed publication or joint inventors on a patent
If these conditions are not met, the applicant may need to provide additional evidence, such as an affidavit or declaration under 37 CFR 1.130(a), to establish that the disclosure falls under the grace period inventor-originated disclosure exception.
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