What should be included in a 37 CFR 1.132 declaration when the reference is a U.S. patent or patent application publication?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
When the reference used in a rejection is a U.S. patent or patent application publication, a 37 CFR 1.132 declaration should include specific information to effectively overcome the rejection. MPEP 715.01(a) states:
Where the reference is a U.S. patent or patent application publication which includes a claim reciting the subject matter relied upon in a rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination, a declaration under 37 CFR 1.132 must also explain the presence of the additional inventor in the reference (e.g., the disclosure in claim 1 of the reference is relied upon to reject the claims; the affidavit or declaration explains that S is the sole inventor of claim 1, and the additional inventor and S are joint inventors of claim 2 of the reference).
In summary, the declaration should:
- Identify the specific subject matter in the reference that is being relied upon for the rejection
- Explain the inventorship of that specific subject matter
- Clarify the relationship between the inventors named in the reference and the inventor(s) of the application under examination
- Provide context and evidence to support the assertions made in the declaration