What types of evidence can an applicant submit to support enablement?
Applicants can submit various types of evidence to support enablement claims. According to MPEP 2164.05: Factual affidavits under 37 CFR 1.132 References showing what one skilled in the art knew at the time of filing Declarations or affidavits containing factual evidence In chemical and biotechnical applications, evidence submitted to the FDA for clinical trial approval…
Read MoreHow are requests for extensions of time after Action Closing Prosecution (ACP) handled?
Requests for extensions of time after Action Closing Prosecution (ACP) in inter partes reexamination are handled with caution, especially when related to submitting affidavits. Key points include: Granting an extension does not guarantee acceptance of the affidavit. Examiners may question why the affidavit was not presented earlier. Insufficient showings may result in denial of affidavit…
Read MoreWhat is the purpose of 37 CFR 1.130 affidavits or declarations?
The purpose of affidavits or declarations under 37 CFR 1.130 is to overcome prior art rejections by establishing that: The disclosure was made by the inventor or joint inventor (1.130(a) declaration) The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor (1.130(a) declaration) The subject matter disclosed had been…
Read MoreHow can an inventor prove a prior public disclosure for the AIA 35 U.S.C. 102(b)(2)(B) exception?
To prove a prior public disclosure for the AIA 35 U.S.C. 102(b)(2)(B) exception, inventors can use affidavits or declarations. The MPEP provides guidance on this: “MPEP § 2155.02 discusses the use of affidavits or declarations to show a prior public disclosure of the subject matter by the inventor or a joint inventor, and MPEP §…
Read MoreAre there specific rules for submitting patents and patent-related documents in supplemental examination?
Yes, there are specific rules for submitting patents and patent-related documents in supplemental examination. According to MPEP 2807: “Patents, patent application publications, and third-party-generated affidavits or declarations must not be reduced in size or otherwise modified in the manner described in this paragraph.” This means that unlike court documents and non-patent literature, which may be…
Read MoreHow should an examiner handle affidavits or declarations in an examiner’s answer?
When handling affidavits or declarations in an examiner’s answer for an inter partes reexamination proceeding, the examiner should follow the guidance provided in MPEP 2677. The key points are: The examiner should report their conclusions on any affidavits, declarations, or exhibits that were admitted to the record. Affidavits or declarations swearing behind a patent should…
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 MoreHow are affidavits used in computer programming patent cases?
Affidavits play a crucial role in computer programming patent cases, particularly when addressing enablement issues. The MPEP provides guidance on how these affidavits should be analyzed: The skill level and qualifications of the affiant should be critically analyzed in relation to the person of ordinary skill in the art. Affidavits must provide factual evidence to…
Read MoreHow are affidavits treated after an Action Closing Prosecution (ACP) in inter partes reexamination?
According to MPEP 2673, affidavits submitted after an Action Closing Prosecution (ACP) in inter partes reexamination are treated similarly to amendments submitted after an ACP. The MPEP states: “Affidavits submitted after an ACP are subject to the same treatment as amendments submitted after an ACP. This is analogous to the treatment of affidavits submitted after…
Read MoreCan affidavits or declarations accompany a 37 CFR 1.501 submission?
Yes, affidavits or declarations can accompany a 37 CFR 1.501 submission. According to MPEP 2205: “Affidavits or declarations or other written evidence relating to the submitted documents may accompany the 37 CFR 1.501 submission to explain the contents or pertinent dates in more detail.“ Examples of acceptable accompanying documents include: A commercial success affidavit tied…
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