How can an applicant use the grace period inventor’s disclosure exception to overcome a 102(a)(1) rejection?

How can an applicant use the grace period inventor’s disclosure exception to overcome a 102(a)(1) rejection?

An applicant can use the grace period inventor’s disclosure exception under 35 U.S.C. 102(b)(1)(A) to overcome a 102(a)(1) rejection. According to MPEP 2152.06:

“An applicant may overcome a rejection by filing an affidavit or declaration under 37 CFR 1.130(a) or (b).“

To use this exception:

1. The disclosure must have been made 1 year or less before the effective filing date of the claimed invention.
2. The disclosure must be by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.
3. The applicant must file an affidavit or declaration under 37 CFR 1.130(a) showing that the disclosure was made by the inventor or a joint inventor.

The affidavit or declaration should provide a reasonable explanation of the circumstances surrounding the disclosure and why the inventor or joint inventor is the source of the disclosure. This exception can be powerful in overcoming rejections based on the inventor’s own work published within the grace period.

To learn more:

• 102(a)(1) rejection
• grace period
• inventor’s disclosure
• 37 CFR 1.130