Can an affidavit under MPEP 715.01(a) overcome a double patenting rejection?
An affidavit filed under MPEP 715.01(a) is primarily intended to overcome prior art rejections under 35 U.S.C. 102(e). However, it’s important to note that such an affidavit may not be sufficient to overcome a double patenting rejection. The MPEP states: ‘Note that subject matter which is prior art under 35 U.S.C. 102(f) or (g) is…
Read MoreHow does an affidavit or declaration of commercial success relate to patent claims?
An affidavit or declaration of commercial success must establish a clear nexus between the claimed invention and the commercial success. Simply attributing success to a product or process “constructed according to the disclosure and claims” is not sufficient to establish this nexus. The MPEP 716.03(a) states: “An affidavit or declaration attributing commercial success to a…
Read MoreCan an affidavit or declaration under 37 CFR 1.131(a) be used to swear behind a U.S. patent or U.S. patent application publication?
An affidavit or declaration under 37 CFR 1.131(a) cannot be used to swear behind a U.S. patent or U.S. patent application publication that claims the rejected invention. The MPEP clearly states: ’37 CFR 1.131(a) is not available if the reference is a U.S. patent or U.S. patent application publication of a pending or patented application…
Read MoreCan acts performed in non-NAFTA/WTO countries be used in a 37 CFR 1.131 affidavit?
Can acts performed in non-NAFTA/WTO countries be used in a 37 CFR 1.131 affidavit? No, acts performed in non-NAFTA/WTO countries cannot be used in a 37 CFR 1.131 affidavit. The MPEP 715.07(c) clearly states: “The provisions of 35 U.S.C. 104 and 37 CFR 1.131(a) specifically refer to acts which occurred in a NAFTA or WTO…
Read MoreWhat must be shown in a 37 CFR 1.131(a) affidavit or declaration?
A 37 CFR 1.131(a) affidavit or declaration must establish possession of either the whole invention claimed or something falling within the claim. According to MPEP 715.02: The 37 CFR 1.131(a) affidavit or declaration must establish possession of either the whole invention claimed or something falling within the claim (such as a species of a claimed…
Read MoreCan an inventor use a 37 CFR 1.131(a) affidavit to overcome a rejection based on a commonly owned patent or application?
No, an inventor cannot use a 37 CFR 1.131(a) affidavit to overcome a rejection based on a commonly owned patent or application. This is because such references are not considered prior art that can be antedated. According to MPEP 715.01(a): “Where the reference is a U.S. patent or patent application publication of a common assignee…
Read More