How can an applicant show that a reference is describing an inventor’s own work to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132. The MPEP states: “A rejection based on pre-AIA 35 U.S.C. 102(e) can be overcome by filing an affidavit or declaration…
Read MoreHow can an applicant establish common ownership under Pre-AIA 35 U.S.C. 103(c)?
How can an applicant establish common ownership under Pre-AIA 35 U.S.C. 103(c)? To establish common ownership under Pre-AIA 35 U.S.C. 103(c), an applicant must provide evidence or a statement to show that the claimed invention and the prior art reference were owned by the same person or subject to an obligation of assignment to the…
Read MoreIs diligence or reduction to practice required when showing that a reference describes an inventor’s own work?
When showing that a reference describes an inventor’s own work to overcome a pre-AIA 35 U.S.C. 102(e) rejection, the applicant does not need to show diligence or reduction to practice. The MPEP clearly states: “When the reference reflects an inventor’s or at least one joint inventor’s own work, evidence of diligence or reduction to practice…
Read MoreCan affidavits be used in inter partes reexamination?
Yes, affidavits can be used in inter partes reexamination proceedings. The MPEP states: “Affidavits under 37 CFR 1.131(a) and 1.132 may be utilized in a reexamination proceeding.” However, there are limitations on the use of certain types of affidavits: “Note, however, that an affidavit under 37 CFR 1.131(a) may not be used to ‘swear behind’…
Read MoreWhat are the special considerations for actions based on affidavit or declaration evidence in patent examination?
Actions based on affidavit or declaration evidence are among the exceptions to partial signatory authority in patent examination, as specified in MPEP 1005. These actions require the signature of a primary examiner, Technology Center Director, or practice specialist, even if the examiner has partial signatory authority. MPEP 1005 specifically mentions several types of actions based…
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