How can an applicant prove a disclosure is an inventor-originated disclosure?

An applicant can prove a disclosure is an inventor-originated disclosure in several ways, depending on whether it’s apparent from the disclosure itself or requires additional evidence. According to MPEP 2153.01(a):

1. Apparent from the disclosure: If the disclosure names the inventor or a joint inventor as an author and was made within the grace period, it may be apparent that it’s an inventor-originated disclosure.
2. Specification statement: “If the patent application specification contains a specific reference to a grace period inventor disclosure, the Office will consider it apparent from the specification that the prior disclosure is by the inventor or a joint inventor, provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary.”
3. Affidavit or declaration: “In the situations in which it is not apparent from the prior disclosure or the patent application specification that the prior disclosure is an inventor-originated disclosure, 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 MPEP § 2155.01 provides more details on using affidavits or declarations to show that a prior disclosure was an inventor-originated disclosure made during the grace period.

To learn more:

• inventor-originated disclosure
• grace period
• affidavit
• declaration
• patent application