What is the difference between reviewing sufficiency and reviewing merits of an affidavit?
The review process for affidavits or declarations under 37 CFR 1.130 involves two distinct aspects: sufficiency and merits. According to MPEP 717.01(e): Sufficiency: The question of sufficiency of affidavits or declarations under 37 CFR 1.130 should be reviewed and decided by a primary examiner. Merits: Review on the merits of a 37 CFR 1.130 affidavit…
Read MoreWhat is the difference between 37 CFR 1.131(a) and 37 CFR 1.132 affidavits in patent applications?
The main difference between 37 CFR 1.131(a) and 37 CFR 1.132 affidavits lies in their purpose and timing: 37 CFR 1.131(a) affidavits are used to antedate a reference by showing prior invention. They are typically filed before final rejection. 37 CFR 1.132 affidavits are used for various purposes, including showing unexpected results, commercial success, or…
Read MoreWhat is the difference between 37 CFR 1.130(a) declarations and 37 CFR 1.132 affidavits?
The main difference between 37 CFR 1.130(a) declarations and 37 CFR 1.132 affidavits lies in their applicability to different versions of patent law: 37 CFR 1.130(a) declarations are used for applications subject to the first inventor to file provisions of the AIA (America Invents Act). 37 CFR 1.132 affidavits are used for applications subject to…
Read MoreHow can an applicant demonstrate unexpected results in a 37 CFR 1.132 affidavit?
Demonstrating unexpected results in a 37 CFR 1.132 affidavit can be a powerful way to support patentability. MPEP 716.02 provides guidance on how to effectively present such evidence: ‘Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ…
Read MoreHow can the presumption of operability be challenged in a patent?
The presumption of operability in a patent can be challenged through affidavits or declarations that provide evidence of inoperability. However, MPEP 716.07 sets a high standard for such challenges: ‘Affidavits or declarations attacking the operability of a patent cited as a reference must rebut the presumption of operability by a preponderance of the evidence.’ This…
Read MoreHow can one appeal the merits of a 37 CFR 1.130 affidavit or declaration?
If you wish to appeal the merits of a 37 CFR 1.130 affidavit or declaration, the process is specified in MPEP 717.01(e): Review on the merits of a 37 CFR 1.130 affidavit or declaration is by appeal to the Patent Trial and Appeal Board. See MPEP § 1201. This means that if you disagree with…
Read MoreWhen is a 37 CFR 1.131(a) affidavit appropriate in a patent application?
A 37 CFR 1.131(a) affidavit is appropriate when an applicant needs to antedate a reference cited against their patent application. Specifically, it’s used to show prior invention before the effective date of the cited reference. According to MPEP 715.01: “An affidavit or declaration under 37 CFR 1.131(a) may be used, in the context of a…
Read MoreWhen is a declaration under 37 CFR 1.130(b) not available?
A declaration under 37 CFR 1.130(b) is not available in certain situations. The MPEP outlines two specific cases: If the disclosure was made more than one year before the effective filing date of the claimed invention. When the disclosure applied in a rejection is a U.S. patent or U.S. patent application publication that claims an…
Read MoreHow does the USPTO weigh evidence in affidavits or declarations under 37 CFR 1.132?
The United States Patent and Trademark Office (USPTO) carefully considers evidence presented in affidavits or declarations under 37 CFR 1.132. According to MPEP 716: ‘The weight to be given any objective evidence is made on a case-by-case basis. The mere fact that an applicant has presented evidence does not mean that the evidence is dispositive…
Read MoreHow does the USPTO evaluate the credibility of affidavits or declarations?
How does the USPTO evaluate the credibility of affidavits or declarations? The United States Patent and Trademark Office (USPTO) carefully evaluates the credibility of affidavits or declarations submitted as evidence in patent applications. The MPEP 716.01(c) provides guidance on this matter: In assessing the probative value of an expert opinion, the examiner must consider the…
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