MPEP § 2155.06 — Situations in Which an Affidavit or Declaration Is Not Available (Annotated Rules)
§2155.06 Situations in Which an Affidavit or Declaration Is Not Available
This page consolidates and annotates all enforceable requirements under MPEP § 2155.06, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Situations in Which an Affidavit or Declaration Is Not Available
This section addresses Situations in Which an Affidavit or Declaration Is Not Available. Primary authority: 35 U.S.C. 100, 35 U.S.C. 102, and 35 U.S.C. 102(a)(1). Contains: 2 prohibitions, 1 guidance statement, and 3 other statements.
Key Rules
Determining Whether Application Is AIA or Pre-AIA
The provisions of 37 CFR 1.130 are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. A disclosure made more than one year before the effective filing date of a claimed invention is prior art under AIA 35 U.S.C. 102(a)(1) that cannot be excepted as prior art under AIA 35 U.S.C. 102(b)(1).
The provisions of 37 CFR 1.130 are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. A disclosure made more than one year before the effective filing date of a claimed invention is prior art under AIA 35 U.S.C. 102(a)(1) that cannot be excepted as prior art under AIA 35 U.S.C. 102(b)(1).
Content of Patent Application Publication
Additionally, the provisions of 37 CFR 1.130 may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication naming another inventor if: (1) the patent or pending application claims an invention that is the same or substantially the same as the applicant's or patent owner's claimed invention; and (2) the affidavit or declaration contends that the inventor or a joint inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent. The provisions of 37 CFR 1.130 are not available if an affidavit or declaration would result in the Office issuing or confirming two patents containing patentably indistinct claims to two different parties. See In re Deckler, 977 F.2d 1449, 1451-52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) (35 U.S.C. 102, 103, and 135 “clearly contemplate—where different inventive entities are concerned—only one patent should issue for inventions which are either identical to or not patentably distinct from each other”) (quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977)). In this situation, an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401 et seq. (37 CFR 1.130(c)).
Additionally, the provisions of 37 CFR 1.130 may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication naming another inventor if: (1) the patent or pending application claims an invention that is the same or substantially the same as the applicant's or patent owner's claimed invention; and (2) the affidavit or declaration contends that the inventor or a joint inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent. The provisions of 37 CFR 1.130 are not available if an affidavit or declaration would result in the Office issuing or confirming two patents containing patentably indistinct claims to two different parties. See In re Deckler, 977 F.2d 1449, 1451-52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) (35 U.S.C. 102, 103, and 135 “clearly contemplate—where different inventive entities are concerned—only one patent should issue for inventions which are either identical to or not patentably distinct from each other”) (quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977)). In this situation, an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401 et seq. (37 CFR 1.130(c)).
Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138)
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131 – MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
Elements of Anticipation (MPEP 2131)
Additionally, the provisions of 37 CFR 1.130 may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication naming another inventor if: (1) the patent or pending application claims an invention that is the same or substantially the same as the applicant's or patent owner's claimed invention; and (2) the affidavit or declaration contends that the inventor or a joint inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent. The provisions of 37 CFR 1.130 are not available if an affidavit or declaration would result in the Office issuing or confirming two patents containing patentably indistinct claims to two different parties. See In re Deckler, 977 F.2d 1449, 1451-52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) (35 U.S.C. 102, 103, and 135 “clearly contemplate—where different inventive entities are concerned—only one patent should issue for inventions which are either identical to or not patentably distinct from each other”) (quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977)). In this situation, an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401 et seq. (37 CFR 1.130(c)).
Derivation Petition Requirements
Additionally, the provisions of 37 CFR 1.130 may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication naming another inventor if: (1) the patent or pending application claims an invention that is the same or substantially the same as the applicant's or patent owner's claimed invention; and (2) the affidavit or declaration contends that the inventor or a joint inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent. The provisions of 37 CFR 1.130 are not available if an affidavit or declaration would result in the Office issuing or confirming two patents containing patentably indistinct claims to two different parties. See In re Deckler, 977 F.2d 1449, 1451-52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) (35 U.S.C. 102, 103, and 135 “clearly contemplate—where different inventive entities are concerned—only one patent should issue for inventions which are either identical to or not patentably distinct from each other”) (quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977)). In this situation, an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401 et seq. (37 CFR 1.130(c)).
Citations
| Primary topic | Citation |
|---|---|
| Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138) | 35 U.S.C. § 100 |
| Content of Patent Application Publication Derivation Petition Requirements Elements of Anticipation (MPEP 2131) Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138) | 35 U.S.C. § 102 |
| Determining Whether Application Is AIA or Pre-AIA | 35 U.S.C. § 102(a)(1) |
| Determining Whether Application Is AIA or Pre-AIA | 35 U.S.C. § 102(b)(1) |
| Content of Patent Application Publication Derivation Petition Requirements Determining Whether Application Is AIA or Pre-AIA Elements of Anticipation (MPEP 2131) | 37 CFR § 1.130 |
| Content of Patent Application Publication Derivation Petition Requirements Elements of Anticipation (MPEP 2131) | 37 CFR § 1.130(c) |
| Content of Patent Application Publication Derivation Petition Requirements Elements of Anticipation (MPEP 2131) | 37 CFR § 42.401 |
| Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138) | MPEP § 2131 |
| Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138) | MPEP § 2138 |
| Prior Art Under Pre-AIA 35 U.S.C. 102 (MPEP 2131-2138) | MPEP § 2159 |
| Content of Patent Application Publication Derivation Petition Requirements Elements of Anticipation (MPEP 2131) | quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2155.06 — Situations in Which an Affidavit or Declaration Is Not Available
Source: USPTO2155.06 Situations in Which an Affidavit or Declaration Is Not Available [R-01.2024]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131–MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
The provisions of 37 CFR 1.130 are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. A disclosure made more than one year before the effective filing date of a claimed invention is prior art under AIA 35 U.S.C. 102(a)(1) that cannot be excepted as prior art under AIA 35 U.S.C. 102(b)(1).
Additionally, the provisions of 37 CFR 1.130 may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication naming another inventor if: (1) the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention; and (2) the affidavit or declaration contends that the inventor or a joint inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent. The provisions of 37 CFR 1.130 are not available if an affidavit or declaration would result in the Office issuing or confirming two patents containing patentably indistinct claims to two different parties. See In re Deckler, 977 F.2d 1449, 1451-52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) (35 U.S.C. 102, 103, and 135 “clearly contemplate—where different inventive entities are concerned—only one patent should issue for inventions which are either identical to or not patentably distinct from each other”) (quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977)). In this situation, an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401 et seq. (37 CFR 1.130(c)).