Question 1

What types of evidence can support a declaration under 37 CFR 1.130(a)?

Accepted Answer

A declaration under 37 CFR 1.130(a) can be supported by various types of evidence. While the MPEP 717.01(a)(1) doesn't provide an exhaustive list, it suggests that evidence should demonstrate how the subject matter was publicly disclosed. Types of evidence may include:

Copies of publications or presentations
Dated laboratory notebooks or research records
Email correspondence or meeting minutes
Witness statements corroborating the disclosure
Documentation of public demonstrations or exhibitions

The MPEP emphasizes the importance of explaining the disclosure:

The declaration must identify the subject matter disclosed with sufficient specificity and particularity to determine what subject matter is relied upon as the inventor's own work.

The evidence should clearly connect the disclosed subject matter to the inventor's work and the timing of the disclosure. The strength and relevance of the evidence will be evaluated by the examiner to determine the sufficiency of the declaration.

To learn more:

37 CFR 1.130(a)

Question 2

What should be included in a declaration to show an inventor-originated disclosure?

Accepted Answer

A declaration to show an inventor-originated disclosure under 37 CFR 1.130(b) should include specific elements to effectively disqualify a disclosure as prior art. According to MPEP 717.01(b)(1), the declaration should:

Identify the subject matter publicly disclosed.
Provide the date of the public disclosure.
Identify the names of the inventors responsible for the public disclosure.
Provide a reasonable explanation of the presence of additional authors in the prior art disclosure, if applicable.
Include evidence supporting the declaration, such as copies of the public disclosure.

The MPEP states:

"The evidence submitted with the declaration or affidavit should establish that the prior art disclosure is an inventor-originated disclosure. To do so, the declaration or affidavit should provide a reasonable explanation of the presence of additional authors of the prior art subject matter."

It's crucial that the declaration clearly shows how the disclosure originated from the inventor or someone who obtained the information from the inventor.

To learn more:

37 CFR 1.130(b)

Question 3

What is the significance of the grace period in evaluating declarations under 37 CFR 1.130(b)?

Accepted Answer

What is the significance of the grace period in evaluating declarations under 37 CFR 1.130(b)?

The grace period is crucial when evaluating declarations under 37 CFR 1.130(b). As explained in MPEP 717.01(b)(1):

"If the declaration provides sufficient evidence that the publicly disclosed 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 within the grace period as defined under 35 U.S.C. 102(b)(1), and the reference is not to a statutory bar, then the rejection should be withdrawn."

Key points about the grace period:

It extends one year prior to the effective filing date of the claimed invention
Disclosures made within this period by the inventor or derived from the inventor may not be used as prior art
The declaration must show that the public disclosure occurred within this grace period
If successful, the rejection based on the reference should be withdrawn

Understanding the grace period is essential for both applicants preparing declarations and examiners evaluating them under 37 CFR 1.130(b).

To learn more:

Question 4

What is the purpose of a declaration under 37 CFR 1.130(b)?

Accepted Answer

A declaration under 37 CFR 1.130(b) serves to disqualify a disclosure as prior art by establishing that the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor before the date of the disclosure being used as prior art. As stated in MPEP 717.01(b):

"Where the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor before the date of the intervening disclosure, the applicant may establish by way of an affidavit or declaration that the subject matter disclosed, which was also publicly disclosed by the intervening disclosure, had been publicly disclosed by the inventor or a joint inventor before the date of the intervening disclosure."

This declaration helps inventors protect their inventions from being considered prior art due to disclosures made after their own public disclosure but before the effective filing date of their application.

To learn more:

37 CFR 1.130(b)

Question 5

What is the purpose of a declaration or affidavit under 37 CFR 1.130(b)?

Accepted Answer

A declaration or affidavit under 37 CFR 1.130(b) serves to disqualify a disclosure as prior art by establishing that the subject matter disclosed had 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 joint inventor, before the date of the disclosure being relied upon as prior art.

According to MPEP 717.01(b)(1):

"The purpose of a declaration or affidavit submitted under 37 CFR 1.130(b) is to establish 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."

To learn more:

37 CFR 1.130(b)

Question 6

What is the purpose of a declaration or affidavit under 37 CFR 1.130(b)?

Accepted Answer

A declaration or affidavit under 37 CFR 1.130(b) is used to show that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by: (1) the inventor or a joint inventor; or (2) another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

As stated in the MPEP: In making a submission under 37 CFR 1.130(b), the applicant or patent owner is attempting to show that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by: (1) the inventor or a joint inventor; or (2) another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

To learn more:

37 CFR 1.130(b)

Question 7

What is the purpose of a declaration or affidavit under 37 CFR 1.130(b)?

Accepted Answer

A declaration or affidavit under 37 CFR 1.130(b) serves to disqualify a disclosure as prior art by establishing that the subject matter disclosed had 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 joint inventor, before the date of the reference or intervening disclosure.

According to MPEP 717.01(b): "The provision of 37 CFR 1.130(b) is not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention." This means that the declaration or affidavit is used to establish a grace period disclosure, effectively removing certain disclosures from being considered as prior art against the claimed invention.

To learn more:

Question 8

What is the purpose of a declaration or affidavit under 37 CFR 1.130(b)?

Accepted Answer

A declaration or affidavit under 37 CFR 1.130(b) serves to attribute the subject matter disclosed in a grace period inventor disclosure to the inventor or a joint inventor. Its purpose is to establish 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.

According to MPEP 717.01(b)(1):

"The evidence necessary to show that the disclosure is 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 requires an affidavit or declaration under 37 CFR 1.130(b)."

This declaration helps overcome certain prior art rejections by showing that the disclosed subject matter originated from the inventor(s) themselves.

To learn more:

Question 9

What is the purpose of 37 CFR 1.130(b)?

Accepted Answer

37 CFR 1.130(b) provides a mechanism for applicants or patent owners to disqualify certain disclosures as prior art. Specifically, it allows them to establish that the subject matter disclosed had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor before the disclosure was made or effectively filed.

As stated in the MPEP: 37 CFR 1.130(b) provides that 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.

To learn more:

37 CFR 1.130(b)

Question 10

What is the process for handling confidential materials in reexamination proceedings?

Accepted Answer

In reexamination proceedings open to the public under 37 CFR 1.11(d), confidential materials submitted under MPEP § 724.02 are handled as follows:

Materials are sealed from public view and kept separate from the main reexamination file
A petition to expunge should accompany the submission or be filed shortly after
The examiner determines the materiality of the information to patentability
If found not material, the petition to expunge is granted
If found material, the petition is denied, and the information becomes public

The MPEP states: 'Any materials, i.e., information, properly submitted under MPEP § 724.02 in a reexamination proceeding will be sealed from public view. The submitted information will be maintained separate from the reexamination file and will not be publicly available until a determination has been made as to whether or not the information is material to patentability.'

It's crucial to note: 'If the petition to expunge is not filed in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process, or the petition is filed, and denied/dismissed, then the materials submitted under MPEP § 724.02 will be released to the public with any other papers in the reexamination file.'

This process aims to protect confidential information while maintaining the public nature of reexamination proceedings.

To learn more:

Question 11

What information must be included in a declaration under 37 CFR 1.130(b)?

Accepted Answer

A declaration under 37 CFR 1.130(b) must include specific information to be considered effective. The key elements are:

Identification of the subject matter publicly disclosed
The date of the public disclosure
If the disclosure was in a printed publication, a copy must be provided
If not in a printed publication, a detailed description of the subject matter disclosed

The MPEP states: The declaration or affidavit must identify the subject matter publicly disclosed and provide the date of the public disclosure of such subject matter 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. Additionally, If the subject matter publicly disclosed on the earlier 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 the earlier date.

To learn more:

37 CFR 1.130(b)

Question 12

What information about patent applications can be disclosed to the public?

Accepted Answer

The USPTO can disclose limited information about patent applications to the public, as outlined in 37 CFR 1.14(a)(2):

Whether the application is pending, abandoned, or patented
Whether the application has been published
The application's numerical identifier
Whether another application claims benefit of the application

This information can only be disclosed if the application is identified in a published patent document or in another application as specified in 37 CFR 1.14(a)(1)(i) through (a)(1)(vi).

Question 13

In what situations are the provisions of 37 CFR 1.130 available in patent applications?

Accepted Answer

According to MPEP 717.01(d), the provisions of 37 CFR 1.130 are available in the following situations:

When the rejection is based on a disclosure other than a U.S. patent or U.S. patent application publication, such as non-patent literature or a foreign patent document.
When the rejection is based on a U.S. patent or U.S. patent application, but the patent or pending application did not claim an invention that is the same or substantially the same as the applicant's claimed invention.
When the rejection is based on a U.S. patent or U.S. patent application that does claim an invention that is the same or substantially the same as the applicant's claimed invention, but the affidavit or declaration under 37 CFR 1.130 does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention.

The MPEP provides an example for the third situation: "an affidavit or declaration under 37 CFR 1.130 would be available if instead of alleging derivation the affidavit or declaration under 37 CFR 1.130 contends 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."

These provisions allow applicants to overcome certain prior art rejections by providing evidence of earlier invention or public disclosure.

To learn more:

37 CFR 1.130
patent applications
prior art
public disclosure

To learn more:

37 CFR 1.130

Question 14

How does an examiner evaluate the scope of the subject matter disclosed in a declaration under 37 CFR 1.130(b)?

Accepted Answer

How does an examiner evaluate the scope of the subject matter disclosed in a declaration under 37 CFR 1.130(b)?

When evaluating a declaration under 37 CFR 1.130(b), the examiner must carefully consider the scope of the subject matter disclosed. According to MPEP 717.01(b)(1):

"The examiner will determine whether the subject matter disclosed in the disclosure of the reference is commensurate in scope with the subject matter 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."

This evaluation involves:

Comparing the scope of the subject matter in the reference to the scope of the public disclosure
Ensuring that the public disclosure covers all the features of the subject matter used in the rejection
Determining if the disclosure in the reference goes beyond what was publicly disclosed

If the subject matter in the reference exceeds the scope of the public disclosure, the declaration may be insufficient to overcome the rejection.

To learn more:

37 CFR 1.130(b)

Question 15

How does a provisional application affect public disclosure of an invention?

Accepted Answer

How does a provisional application affect public disclosure of an invention?

Filing a provisional application does not automatically result in public disclosure of your invention. The MPEP 201.04 states: 'A provisional application will not be published, and, therefore, no publication fee is required.'

This means that your invention remains confidential when you file a provisional application. However, it's crucial to understand that:

The confidentiality only applies to the USPTO's handling of your application.
If you publicly disclose your invention yourself, it could affect your ability to obtain patents in some countries.
The 12-month grace period for filing a nonprovisional application starts from the provisional filing date, not from any public disclosure you might make.

Always consult with a patent attorney before making any public disclosures about your invention, even after filing a provisional application.

For more information on provisional application, visit: provisional application.

For more information on public disclosure, visit: public disclosure.

Question 16

How are confidential materials handled in reissue applications open to the public?

Accepted Answer

Confidential materials submitted under MPEP § 724.02 in reissue applications open to the public under 37 CFR 1.11(b) are handled as follows:

Materials are kept separate from the main application file
They are not publicly available until a determination of materiality to patentability is made
If found not material, they can be expunged upon petition
If found material, the petition to expunge is denied, and the materials become part of the public record

The MPEP states: 'If any portion or all of the submitted information is found to be material to patentability, the petition to expunge will be denied and the information will thereafter become a permanent part of the reissue application file and open to the public.'

However, there is a provision for redaction: 'Where a submission containing protected material is found to be material to patentability, it still may be possible to redact the submission to eliminate the protected material while retaining the important material.'

This process balances the need for public disclosure in reissue applications with the protection of genuinely confidential information.

To learn more:

Patent Law FAQ

Here’s the complete FAQ:

MPEP 101-General (1)

What information about patent applications can be disclosed to the public?

MPEP 200 - Types and Status of Application; Benefit and Priority (1)

How does a provisional application affect public disclosure of an invention?

How does a provisional application affect public disclosure of an invention?

MPEP 201 - Types of Applications (1)

How does a provisional application affect public disclosure of an invention?

How does a provisional application affect public disclosure of an invention?

Patent Law (2)

What information about patent applications can be disclosed to the public?

How does a provisional application affect public disclosure of an invention?

How does a provisional application affect public disclosure of an invention?

Patent Procedure (2)

What information about patent applications can be disclosed to the public?

How does a provisional application affect public disclosure of an invention?

How does a provisional application affect public disclosure of an invention?