When is an affidavit or declaration under 37 CFR 1.131(a) not appropriate?
An affidavit or declaration under 37 CFR 1.131(a) is not appropriate in several situations, including: When the reference is claiming interfering subject matter as defined in 37 CFR 41.203(a) When the reference is a statutory bar under pre-AIA 35 U.S.C. 102(b) The MPEP states: An affidavit or declaration under 37 CFR 1.131(a) is not appropriate…
Read MoreWhat is ‘swearing behind’ a reference?
‘Swearing behind’ a reference refers to the process of filing an affidavit or declaration under 37 CFR 1.131(a) to overcome a rejection in certain patent applications. This process allows an applicant or patent owner to establish a date of completion of the invention prior to the effective date of a reference used in a rejection.…
Read MoreWhat is an affidavit or declaration under 37 CFR 1.132?
An affidavit or declaration under 37 CFR 1.132 is a form of evidence submitted to traverse rejections or objections in a patent application or reexamination. The MPEP states: When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a…
Read MoreHow does the USPTO handle prior art rejections when the reference names a different inventive entity with at least one common inventor?
When the USPTO handles prior art rejections where the reference names a different inventive entity with at least one common inventor, the following process is typically followed: The examiner will treat the reference as prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g). The applicant can overcome this rejection by filing an affidavit or…
Read MoreWhat is the significance of ‘same invention’ in MPEP 715.01(a)?
The concept of ‘same invention’ in MPEP 715.01(a) is crucial for understanding when a prior art reference can be disqualified. The MPEP states: ‘If the rejection is based on a U.S. patent or U.S. patent application publication of a different inventive entity which claims the same invention or an obvious variant, and there is at…
Read MoreWhat are the requirements for filing an affidavit or declaration under 37 CFR 1.131(a)?
An affidavit or declaration under 37 CFR 1.131(a) may be necessary even when there is common ownership between a reference and an application. According to MPEP 715.01(b): The mere fact that the reference patent or application publication which shows but does not claim certain subject matter and the application which claims it are owned by…
Read MoreWhat is the purpose of a declaration or affidavit under 37 CFR 1.130(a)?
A declaration or affidavit under 37 CFR 1.130(a) is used to show 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. As stated in the MPEP, In other words, the affidavits or declarations are seeking…
Read MoreWhat is the purpose of a declaration or affidavit under 37 CFR 1.130(b)?
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…
Read MoreWhat is the purpose of a declaration or affidavit under 37 CFR 1.130(a)?
A declaration or affidavit under 37 CFR 1.130(a) serves to attribute a disclosure that might otherwise qualify as prior art to the inventor or joint inventor. Its purpose is to establish that the disclosure was made by the inventor or joint inventor, or obtained directly or indirectly from them. As stated in MPEP 717.01(a)(1): The…
Read MoreWhat is the purpose of a declaration or affidavit under 37 CFR 1.130(b)?
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…
Read More