How can an applicant establish that a disclosure falls under the grace period inventor-originated disclosure exception?

An applicant can establish that a disclosure falls under the grace period inventor-originated disclosure exception in several ways:

1. Apparent from the disclosure itself: If the disclosure was made one year or less before the effective filing date, names the inventor or a joint inventor as an author, and does not name additional persons as authors, it is apparent that the disclosure is an inventor-originated disclosure.
2. Statement in the specification: As per the MPEP, “Applicants can include a statement identifying any grace period inventor-originated disclosures in the specification upon filing. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a).” This can expedite examination and save costs.
3. Affidavit or declaration: If it’s not apparent from the disclosure or specification, “the applicant may establish that the AIA 35 U.S.C. 102(b)(1)(A) exception applies by way of an affidavit or declaration under 37 CFR 1.130(a).“

The appropriate method depends on the specific circumstances of the disclosure and application.

To learn more:

• grace period
• inventor disclosure
• AIA
• prior art exception
• patent application
• affidavit
• declaration