MPEP § 715.10 — Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode (Annotated Rules)
§715.10 Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode
This page consolidates and annotates all enforceable requirements under MPEP § 715.10, 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.
Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode
This section addresses Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode. Primary authority: 35 U.S.C. 102(b), 35 U.S.C. 102, and 35 U.S.C. 112(a). Contains: 2 requirements and 1 prohibition.
Key Rules
On Sale Under AIA (MPEP 2152.02(d))
Any affidavits or declarations submitted under 37 CFR 1.131(a) and the accompanying evidence must be reviewed carefully by the examiner in order to determine whether they show that the claimed invention was “in public use” or “on sale” in this country more than one year prior to the effective filing date of the claimed invention, which acts constitute a statutory bar under pre-AIA 35 U.S.C. 102(b). Although the rejection based on the reference(s) or activity sought to be antedated may actually be overcome by such an affidavit or declaration, the effect of the applicant’s prior “public use” or “on sale” activities may not be overcome under 37 CFR 1.131(a). See MPEP § 2133.03 regarding rejections based on “public use” and “on sale” statutory bars under pre-AIA 35 U.S.C. 102.
Any affidavits or declarations submitted under 37 CFR 1.131(a) and the accompanying evidence must be reviewed carefully by the examiner in order to determine whether they show that the claimed invention was “in public use” or “on sale” in this country more than one year prior to the effective filing date of the claimed invention, which acts constitute a statutory bar under pre-AIA 35 U.S.C. 102(b). Although the rejection based on the reference(s) or activity sought to be antedated may actually be overcome by such an affidavit or declaration, the effect of the applicant’s prior “public use” or “on sale” activities may not be overcome under 37 CFR 1.131(a). See MPEP § 2133.03 regarding rejections based on “public use” and “on sale” statutory bars under pre-AIA 35 U.S.C. 102.
Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159)
[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.]
AIA vs Pre-AIA Practice
[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.]
Antedating Reference – Pre-AIA (MPEP 2136.05)
[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.]
Considerations for Best Mode (MPEP 2165.01)
Where the 37 CFR 1.131(a) evidence relies on an embodiment of the invention not disclosed in the application, the question of whether the application includes the “best mode” must be considered. However, a “best mode” rejection should not be made unless the record, taken as a whole, establishes by a preponderance of the evidence that applicant’s specification has not set forth the best mode contemplated by the inventor of carrying out the invention. See MPEP §§ 2165 – § 2165.04 regarding the best mode requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
Citations
| Primary topic | Citation |
|---|---|
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 35 U.S.C. § 100 |
| On Sale Under AIA (MPEP 2152.02(d)) | 35 U.S.C. § 102 |
| On Sale Under AIA (MPEP 2152.02(d)) | 35 U.S.C. § 102(b) |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 35 U.S.C. § 102(g) |
| Considerations for Best Mode (MPEP 2165.01) | 35 U.S.C. § 112 |
| Considerations for Best Mode (MPEP 2165.01) | 35 U.S.C. § 112(a) |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 37 CFR § 1.130 |
| Considerations for Best Mode (MPEP 2165.01) On Sale Under AIA (MPEP 2152.02(d)) | 37 CFR § 1.131(a) |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 37 CFR § 1.131(c) |
| Considerations for Best Mode (MPEP 2165.01) | 37 CFR § 2165.04 |
| On Sale Under AIA (MPEP 2152.02(d)) | MPEP § 2133.03 |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | MPEP § 2159 |
| Considerations for Best Mode (MPEP 2165.01) | MPEP § 2165 |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | MPEP § 717 |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | MPEP § 718 |
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 § 715.10 — Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode
Source: USPTO715.10 Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode [R-01.2024]
[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.]
Any affidavits or declarations submitted under 37 CFR 1.131(a) and the accompanying evidence must be reviewed carefully by the examiner in order to determine whether they show that the claimed invention was “in public use” or “on sale” in this country more than one year prior to the effective filing date of the claimed invention, which acts constitute a statutory bar under pre-AIA 35 U.S.C. 102(b). Although the rejection based on the reference(s) or activity sought to be antedated may actually be overcome by such an affidavit or declaration, the effect of the applicant’s prior “public use” or “on sale” activities may not be overcome under 37 CFR 1.131(a). See MPEP § 2133.03 regarding rejections based on “public use” and “on sale” statutory bars under pre-AIA 35 U.S.C. 102.
Where the 37 CFR 1.131(a) evidence relies on an embodiment of the invention not disclosed in the application, the question of whether the application includes the “best mode” must be considered. However, a “best mode” rejection should not be made unless the record, taken as a whole, establishes by a preponderance of the evidence that applicant’s specification has not set forth the best mode contemplated by the inventor of carrying out the invention. See MPEP §§ 2165 – § 2165.04 regarding the best mode requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.