What is the difference between an inventor’s oath or declaration under 37 CFR 1.63 and a declaration under 37 CFR 1.130(a)?

An inventor’s oath or declaration under 37 CFR 1.63 and a declaration under 37 CFR 1.130(a) serve different purposes in the patent application process:

• Inventor’s oath or declaration (37 CFR 1.63):
  • Required for all non-provisional patent applications
  • Establishes the identity of the inventor(s) and their belief that they are the original inventor(s) of the claimed invention
  • Must be filed for the application to be considered complete
• Declaration under 37 CFR 1.130(a):
  • Used to attribute a prior art disclosure to the inventor or joint inventor
  • Filed in response to a prior art rejection to invoke an exception under 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A)
  • Specifically addresses the relationship between the inventor(s) and a particular prior art disclosure

The MPEP illustrates this distinction in Example 3:

“Ali’s 37 CFR 1.130(a) declaration does not state that Ali invented X, and there is also no inventor’s oath or declaration under 37 CFR 1.63 of record to establish that Ali invented X.”

This example shows that both types of declarations may be necessary in certain situations to establish inventorship and overcome prior art rejections.

To learn more:

• inventor’s oath
• declaration of attribution
• 37 CFR 1.63
• 37 CFR 1.130(a)