How can I overcome a pre-AIA 35 U.S.C. 102(e) rejection?
There are two main ways to overcome a pre-AIA 35 U.S.C. 102(e) rejection: Antedating the filing date of the reference: This can be done by submitting an affidavit or declaration under 37 CFR 1.131. As stated in the MPEP, “An affidavit or declaration under 37 CFR 1.131(a) can overcome a prior art rejection under pre‑AIA…
Read MoreWhat are the main ways to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection?
There are several ways to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection, as outlined in MPEP 2152.06: Submitting a benefit claim under 35 U.S.C. 120 or 119(e) Submitting a claim to priority under 35 U.S.C. 119(a)-(d) Filing an affidavit or declaration under 37 CFR 1.130 Establishing common ownership or evidence of a Joint Research…
Read MoreDoes the manner of prior public disclosure matter when submitting an affidavit or declaration?
No, the manner of prior public disclosure is not critical when submitting an affidavit or declaration under 37 CFR 1.130(b). The MPEP states: The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b)(2) is not critical. Just as the prior art provision of AIA 35 U.S.C. 102(a)(1) encompasses…
Read MoreWhat are the two main scenarios covered by 37 CFR 1.130 affidavits?
The MPEP 2155.04 outlines two main scenarios that can be addressed by affidavits or declarations under 37 CFR 1.130: Inventor or Joint Inventor Disclosure (37 CFR 1.130(a)): “The disclosure in question was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a…
Read MoreHow can an applicant establish that a disclosure falls under the grace period inventor-originated disclosure exception?
An applicant can establish that a disclosure falls under the grace period inventor-originated disclosure exception in several ways: Apparent from the disclosure itself: If the disclosure was made one year or less before the effective filing date, names the inventor or a joint inventor as an author, and does not name additional persons as authors,…
Read MoreHow can an applicant establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a)(2)?
An applicant can establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a)(2) by using an affidavit or declaration. The MPEP states: Thus, if the subject matter in a U.S. patent document upon which the rejection is based is by another who obtained the subject matter from the inventor or a joint…
Read MoreWhat documentation should accompany an affidavit or declaration under 37 CFR 1.130?
When submitting an affidavit or declaration under 37 CFR 1.130 to show that another obtained the subject matter directly or indirectly from the inventor or a joint inventor, it’s important to include supporting documentation. The MPEP advises: “Any documentation which provides evidence of the communication of the subject matter by the inventor or a joint…
Read MoreWhat is an affidavit or declaration under 37 CFR 1.130 and how can it overcome a 35 U.S.C. 102 rejection?
An affidavit or declaration under 37 CFR 1.130 is a sworn statement that can be used to overcome a 35 U.S.C. 102 rejection by establishing that a disclosure is not prior art. There are two types: Affidavit or declaration of attribution (37 CFR 1.130(a)) Affidavit or declaration of prior public disclosure (37 CFR 1.130(b)) MPEP…
Read MoreWhat is the significance of an affidavit or declaration under 37 CFR 1.131(a) in overcoming a pre-AIA 35 U.S.C. 102(e) rejection?
An affidavit or declaration under 37 CFR 1.131(a) can be used to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving prior invention. However, it’s important to note that this method has limitations. The MPEP states: “An affidavit or declaration under 37 CFR 1.131(a) can overcome a prior art rejection under pre‑AIA 35 U.S.C. 102(e)…
Read MoreDoes an affidavit under 37 CFR 1.130 need to demonstrate enablement?
No, an affidavit or declaration under 37 CFR 1.130 does not need to demonstrate enablement. The MPEP 2155.04 clearly states: “An affidavit or declaration under 37 CFR 1.130(a) or (b) need not demonstrate that the disclosure by the inventor, a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from an…
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