[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]

When subject matter disclosed in a patent or patent application publication (reference) naming an inventive entity including joint inventor S and another joint inventor is claimed in a later application naming sole inventor S without the joint inventor, the reference may be properly applied under pre-AIA 35 U.S.C. 102(a), (e), or (f) until overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132 traversing the rejection. An unequivocal declaration under 37 CFR 1.132 by S that S conceived or invented the subject matter that was disclosed but not claimed in the patent or application publication and relied on in the rejection has been sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982))(declaration corroborated by attached drawing). However, an affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship by an (joint) inventor who has an interest at stake and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the work of the inventive entity. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345, 123 USPQ2d 1146, 1149 (Fed. Cir. 2017) (The court found the declaration submitted by joint inventor Campbell more than twenty years after the invention insufficient to establish that he and Mr. Guth (deceased) alone invented the subject matter disclosed in a patent naming Campbell, Guth, Danziger, and Padron as joint inventors because "[n]othing in the declaration itself, or in addition to the declaration, provides any context, explanation, or evidence to lend credence to [Campbell’s] bare assertion."). 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 joint 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 joint inventor and S are joint inventors of claim 2 of the reference). Testimony or disclaimer from the other joint inventor(s) named in the reference is usually not required but, if submitted, should be considered by the examiner.

When subject matter disclosed in a patent or patent application publication (reference) naming an inventive entity including joint inventor S and another joint inventor is claimed in a later application naming sole inventor S without the joint inventor, the reference may be properly applied under pre-AIA 35 U.S.C. 102(a), (e), or (f) until overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132 traversing the rejection. An unequivocal declaration under 37 CFR 1.132 by S that S conceived or invented the subject matter that was disclosed but not claimed in the patent or application publication and relied on in the rejection has been sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982))(declaration corroborated by attached drawing). However, an affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship by an (joint) inventor who has an interest at stake and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the work of the inventive entity. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345, 123 USPQ2d 1146, 1149 (Fed. Cir. 2017) (The court found the declaration submitted by joint inventor Campbell more than twenty years after the invention insufficient to establish that he and Mr. Guth (deceased) alone invented the subject matter disclosed in a patent naming Campbell, Guth, Danziger, and Padron as joint inventors because "[n]othing in the declaration itself, or in addition to the declaration, provides any context, explanation, or evidence to lend credence to [Campbell’s] bare assertion."). 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 joint 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 joint inventor and S are joint inventors of claim 2 of the reference). Testimony or disclaimer from the other joint inventor(s) named in the reference is usually not required but, if submitted, should be considered by the examiner.

When subject matter disclosed in a patent or patent application publication (reference) naming an inventive entity including joint inventor S and another joint inventor is claimed in a later application naming sole inventor S without the joint inventor, the reference may be properly applied under pre-AIA 35 U.S.C. 102(a), (e), or (f) until overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132 traversing the rejection. An unequivocal declaration under 37 CFR 1.132 by S that S conceived or invented the subject matter that was disclosed but not claimed in the patent or application publication and relied on in the rejection has been sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982))(declaration corroborated by attached drawing). However, an affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship by an (joint) inventor who has an interest at stake and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the work of the inventive entity. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345, 123 USPQ2d 1146, 1149 (Fed. Cir. 2017) (The court found the declaration submitted by joint inventor Campbell more than twenty years after the invention insufficient to establish that he and Mr. Guth (deceased) alone invented the subject matter disclosed in a patent naming Campbell, Guth, Danziger, and Padron as joint inventors because "[n]othing in the declaration itself, or in addition to the declaration, provides any context, explanation, or evidence to lend credence to [Campbell’s] bare assertion."). 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 joint 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 joint inventor and S are joint inventors of claim 2 of the reference). Testimony or disclaimer from the other joint inventor(s) named in the reference is usually not required but, if submitted, should be considered by the examiner.

[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]

For applications subject to AIA 35 U.S.C. 102, see MPEP §§ 717 and 2155.01.

When subject matter disclosed in a patent or patent application publication (reference) naming an inventive entity including joint inventor S and another joint inventor is claimed in a later application naming sole inventor S without the joint inventor, the reference may be properly applied under pre-AIA 35 U.S.C. 102(a), (e), or (f) until overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132 traversing the rejection. An unequivocal declaration under 37 CFR 1.132 by S that S conceived or invented the subject matter that was disclosed but not claimed in the patent or application publication and relied on in the rejection has been sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982))(declaration corroborated by attached drawing). However, an affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship by an (joint) inventor who has an interest at stake and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the work of the inventive entity. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345, 123 USPQ2d 1146, 1149 (Fed. Cir. 2017) (The court found the declaration submitted by joint inventor Campbell more than twenty years after the invention insufficient to establish that he and Mr. Guth (deceased) alone invented the subject matter disclosed in a patent naming Campbell, Guth, Danziger, and Padron as joint inventors because "[n]othing in the declaration itself, or in addition to the declaration, provides any context, explanation, or evidence to lend credence to [Campbell’s] bare assertion."). 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 joint 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 joint inventor and S are joint inventors of claim 2 of the reference). Testimony or disclaimer from the other joint inventor(s) named in the reference is usually not required but, if submitted, should be considered by the examiner.

When subject matter disclosed in a patent or patent application publication (reference) naming an inventive entity including joint inventor S and another joint inventor is claimed in a later application naming sole inventor S without the joint inventor, the reference may be properly applied under pre-AIA 35 U.S.C. 102(a), (e), or (f) until overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132 traversing the rejection. An unequivocal declaration under 37 CFR 1.132 by S that S conceived or invented the subject matter that was disclosed but not claimed in the patent or application publication and relied on in the rejection has been sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982))(declaration corroborated by attached drawing). However, an affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship by an (joint) inventor who has an interest at stake and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the work of the inventive entity. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345, 123 USPQ2d 1146, 1149 (Fed. Cir. 2017) (The court found the declaration submitted by joint inventor Campbell more than twenty years after the invention insufficient to establish that he and Mr. Guth (deceased) alone invented the subject matter disclosed in a patent naming Campbell, Guth, Danziger, and Padron as joint inventors because "[n]othing in the declaration itself, or in addition to the declaration, provides any context, explanation, or evidence to lend credence to [Campbell’s] bare assertion."). 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 joint 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 joint inventor and S are joint inventors of claim 2 of the reference). Testimony or disclaimer from the other joint inventor(s) named in the reference is usually not required but, if submitted, should be considered by the examiner.

[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]

When subject matter disclosed in a patent or patent application publication (reference) naming an inventive entity including joint inventor S and another joint inventor is claimed in a later application naming sole inventor S without the joint inventor, the reference may be properly applied under pre-AIA 35 U.S.C. 102(a), (e), or (f) until overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132 traversing the rejection. An unequivocal declaration under 37 CFR 1.132 by S that S conceived or invented the subject matter that was disclosed but not claimed in the patent or application publication and relied on in the rejection has been sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982))(declaration corroborated by attached drawing). However, an affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship by an (joint) inventor who has an interest at stake and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the work of the inventive entity. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345, 123 USPQ2d 1146, 1149 (Fed. Cir. 2017) (The court found the declaration submitted by joint inventor Campbell more than twenty years after the invention insufficient to establish that he and Mr. Guth (deceased) alone invented the subject matter disclosed in a patent naming Campbell, Guth, Danziger, and Padron as joint inventors because "[n]othing in the declaration itself, or in addition to the declaration, provides any context, explanation, or evidence to lend credence to [Campbell’s] bare assertion."). 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 joint 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 joint inventor and S are joint inventors of claim 2 of the reference). Testimony or disclaimer from the other joint inventor(s) named in the reference is usually not required but, if submitted, should be considered by the examiner.

Note that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming a different inventive entity which claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05. See MPEP § 716.10 for a discussion of the use of 37 CFR 1.132 affidavits or declarations to overcome rejections by establishing that the subject matter relied on in the patent or application publication was the invention of the inventor or at least one joint inventor named in the application under examination.