In what situations are the provisions of 37 CFR 1.130 available in patent applications?

According to MPEP 717.01(d), the provisions of 37 CFR 1.130 are available in the following situations:

1. When the rejection is based on a disclosure other than a U.S. patent or U.S. patent application publication, such as non-patent literature or a foreign patent document.
2. When the rejection is based on a U.S. patent or U.S. patent application, but the patent or pending application did not claim an invention that is the same or substantially the same as the applicant’s claimed invention.
3. When the rejection is based on a U.S. patent or U.S. patent application that does claim an invention that is the same or substantially the same as the applicant’s claimed invention, but the affidavit or declaration under 37 CFR 1.130 does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention.

The MPEP provides an example for the third situation: “an affidavit or declaration under 37 CFR 1.130 would be available if instead of alleging derivation the affidavit or declaration under 37 CFR 1.130 contends that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”

These provisions allow applicants to overcome certain prior art rejections by providing evidence of earlier invention or public disclosure.

To learn more:

• 37 CFR 1.130
• patent applications
• prior art
• public disclosure

To learn more:

• 37 CFR 1.130