What is the purpose of an affidavit or declaration under 37 CFR 1.130?
An affidavit or declaration under 37 CFR 1.130 serves to disqualify a disclosure as prior art by either: Establishing that the disclosure was made by the inventor or joint inventor, or the subject matter was obtained from the inventor or joint inventor (37 CFR 1.130(a)) Establishing that the subject matter disclosed had been publicly disclosed…
Read MoreWhat is the purpose of an affidavit or declaration under 37 CFR 1.131(a)?
An affidavit or declaration under 37 CFR 1.131(a) serves to establish that the inventor or at least one joint inventor had possession of the subject matter of the rejected claim before the effective date of the reference or activity on which the rejection is based. The MPEP states: ‘The purpose of a 37 CFR 1.131(a)…
Read MoreWhat is the purpose of an affidavit or declaration under 37 CFR 1.130?
An affidavit or declaration under 37 CFR 1.130 serves to disqualify a disclosure as prior art by establishing 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 MPEP 717.01: An applicant or…
Read MoreWhat evidence can be submitted to show prior invention under 37 CFR 1.131(a)?
According to MPEP 715.07, evidence to show prior invention under 37 CFR 1.131(a) can include: Attached sketches Attached blueprints Attached photographs Attached reproductions of notebook entries An accompanying model Attached supporting statements by witnesses Testimony given in an interference Documents submitted under the Disclosure Document Program (discontinued February 1, 2007) The MPEP states: Evidence in…
Read MoreHow can an inventor overcome a rejection based on their own published work?
An inventor can overcome a rejection based on their own published work by showing that the publication was made by the inventor, at least one joint inventor, or on their behalf. This can be done through an affidavit or declaration under 37 CFR 1.132. As stated in MPEP 715.01(c): Unless it is a statutory bar,…
Read MoreHow can an applicant overcome prior art rejections using a 37 CFR 1.132 affidavit?
An applicant can overcome certain prior art rejections using a 37 CFR 1.132 affidavit by proving that the subject matter relied upon in the reference or activity was the inventor’s or at least one joint inventor’s own invention. This is particularly useful in situations where the reference qualifies as prior art only under specific sections…
Read MoreHow can an applicant overcome a rejection based on prior use or knowledge under MPEP 715.01(d)?
MPEP 715.01(d) provides two main ways for an applicant to overcome a rejection based on prior use or knowledge: Affidavit or declaration under 37 CFR 1.131(a): The MPEP states: “a rejection under pre-AIA 35 U.S.C. 102 or 103 based on an activity showing that the claimed invention was used or known prior to the filing…
Read MoreHow does the MPEP address inventions made jointly by employees of different organizations?
The MPEP addresses inventions made jointly by employees of different organizations in MPEP 715.01(a). It states: ‘Where the reference and the application or patent under reexamination are commonly owned, and the inventions claimed in the application or patent under reexamination and in the reference are not identical but are not patentably distinct, a terminal disclaimer…
Read MoreHow does the AIA affect the use of 37 CFR 1.131 affidavits for NAFTA/WTO acts?
How does the AIA affect the use of 37 CFR 1.131 affidavits for NAFTA/WTO acts? The America Invents Act (AIA) has significantly impacted the use of 37 CFR 1.131 affidavits, including those relying on acts in NAFTA/WTO countries. The MPEP 715.07(c) notes: “The provisions of 35 U.S.C. 104, as in effect on March 15, 2013,…
Read MoreHow can an applicant establish that a disclosure is not prior art under AIA 35 U.S.C. 102(b)?
Applicants can establish that a disclosure is not prior art under AIA 35 U.S.C. 102(b) by filing an affidavit or declaration. The MPEP provides guidance on this process: The Office has provided a mechanism in 37 CFR 1.130 for filing an affidavit or declaration to establish that a disclosure made no earlier than one year…
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