37 CFR § 1.130 — Affidavit or declaration of attribution or prior (MPEP Index) – BlueIron IP
37 CFR § 1.130 Affidavit or declaration of attribution or prior
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 1.130, including 293 rules 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.
Summary
37 CFR 1.130 provides a procedural mechanism for patent applicants to submit supplemental evidence and declarations to address prior art rejections and establish inventorship claims during patent prosecution.
What this section covers
- Legal mechanism for submitting supplementary evidence to overcome prior art rejections in patent applications.
- Process for attributing inventorship and challenging existing prior art references through formal declarations.
Key obligations
- Provide clear, substantive evidence directly addressing the specific grounds of rejection in affidavits or declarations.
- Comply with formal documentation requirements, including proper signatures and detailed evidentiary support.
Conditions and exceptions
- Affidavits must meet specific legal standards to be considered valid evidence in patent prosecution.
Practice notes
- Draft affidavits to precisely address specific examiner rejections with factual evidence.
- Understand nuanced requirements for different types of declarations, especially in AIA (America Invents Act) contexts.
Official MPEP § 1.130 — Affidavit or declaration of attribution or prior
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.130 Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act.
- (a) Affidavit or declaration of attribution. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
- (b)
Affidavit or declaration of prior public
disclosure.
When any claim of an application or a
patent under reexamination is rejected, the applicant or patent
owner may submit an appropriate affidavit or declaration to
disqualify a disclosure as prior art by establishing that the
subject matter disclosed had, before such disclosure was made or
before such subject matter was effectively filed, been publicly
disclosed by the inventor or a joint inventor or another who
obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor. An affidavit or declaration under
this paragraph must identify the subject matter publicly disclosed
and provide the date such subject matter was publicly disclosed by
the inventor or a joint inventor or another who obtained the
subject matter disclosed directly or indirectly from the inventor
or a joint inventor.
- (1) If the subject matter publicly disclosed on that date was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication.
- (2) If the subject matter publicly disclosed on that date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on that date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
- (c) When this section is not available. The provisions of this section 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. The provisions of this section may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, 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 the affidavit or declaration contends that an 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, in which case an applicant or a patent owner may file a petition for a derivation proceeding pursuant to § 42.401 et seq. of this title.
- (d)
Applications and patents to which this section is
applicable.
The provisions of this section apply to
any application for patent, and to any patent issuing thereon, that
contains, or contained at any time:
- (1) A claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013; or
- (2) A specific reference under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to any patent or application that contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013.
[Added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; heading and para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (b) removed and reserved, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; para. (d) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
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