What are the requirements for exhibits filed with affidavits or declarations in patent applications?
Exhibits filed as part of affidavits or declarations in patent applications must comply with specific requirements. According to MPEP 715.07(d), “Exhibits, such as those filed as part of an affidavit or declaration under 37 CFR 1.131(a), must comply with the requirements of 37 CFR 1.91 to be entered into an application file.” This means that…
Read MoreHow does the USPTO handle partial disqualification of prior art through a 37 CFR 1.130(b) declaration?
The USPTO allows for partial disqualification of prior art through a 37 CFR 1.130(b) declaration. If the declaration shows that only a portion of the intervening disclosure was previously publicly disclosed by the inventor, the remaining portion may still be available as prior art. The MPEP states: Any remaining portion of an intervening grace period…
Read MoreHow can an inventor overcome a rejection based on a reference with a different inventive entity?
An inventor can overcome a rejection based on a reference with a different inventive entity in several ways: By filing an affidavit or declaration under 37 CFR 1.131(a) showing prior invention By filing an affidavit or declaration under 37 CFR 1.132 The MPEP states: An unequivocal declaration under 37 CFR 1.132 by S that he/she…
Read MoreWhat options are available if an examiner refuses to enter an affidavit as untimely?
If a patent examiner refuses to enter an affidavit or declaration under 37 CFR 1.130 as untimely, the applicant has a specific recourse. According to MPEP 717.01(f): Review of an examiner’s refusal to enter an affidavit as untimely is by petition and not by appeal to the Patent Trial and Appeal Board. In re Deters,…
Read MoreWhat is the purpose of MPEP 715.01(a)?
MPEP 715.01(a) provides guidance on how to handle situations where a reference (patent or published application) names a different inventive entity with at least one common inventor compared to the application under examination. It specifically addresses how to overcome rejections based on such references using affidavits or declarations. The section states: When subject matter disclosed…
Read MoreCan affidavits or evidence be submitted after a final rejection?
Yes, affidavits or other evidence can be submitted after a final rejection, but under specific conditions. According to MPEP 714.12: An affidavit or other evidence submitted after a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§…
Read MoreHow do affidavits or declarations support nonobviousness in patent applications?
Affidavits or declarations play a crucial role in supporting nonobviousness in patent applications. According to MPEP 716.01(a): “Affidavits or declarations, when timely presented, containing evidence of criticality or unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc., must be considered by the examiner in determining the issue of obviousness…
Read MoreWhat is the role of affidavits in challenging the operability of a prior art reference?
What is the role of affidavits in challenging the operability of a prior art reference? Affidavits can play a crucial role in challenging the operability of a prior art reference. According to MPEP 716.07, “Where the affidavit or declaration presented asserts inoperability in features of the reference which are not relied upon, the reference is…
Read MoreWhat happens if an affidavit or declaration is submitted after a final rejection?
If an affidavit or declaration under 37 CFR 1.130 is submitted after a final rejection, it can still be considered timely under certain conditions. According to MPEP 717.01(f): Affidavits and declarations submitted under 37 CFR 1.130 and other evidence traversing rejections are considered timely if submitted: […] (C) after final rejection, but before or on…
Read MoreCan affidavits or declarations be submitted after the prosecution is closed?
Yes, affidavits or declarations under 37 CFR 1.130 can be submitted after the prosecution is closed, but only under specific circumstances. According to MPEP 717.01(f): Affidavits and declarations submitted under 37 CFR 1.130 and other evidence traversing rejections are considered timely if submitted: […] (D) after the prosecution is closed (e.g., after a final rejection,…
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