Who can file an affidavit or declaration under 37 CFR 1.130?
According to MPEP 2155.05, “the applicant or patent owner may submit an affidavit or declaration” under 37 CFR 1.130. This means that the person or entity who filed the patent application or owns the patent has the authority to file such documents. However, there’s an important distinction when the applicant is not the inventor: “When…
Read MoreHow can an applicant show that the subject matter was previously publicly disclosed?
An applicant can show that the subject matter was previously publicly disclosed by the inventor or a joint inventor before the disclosure or effective filing date of the subject matter on which the rejection was based by submitting an affidavit or declaration under 37 CFR 1.130(b). According to the MPEP: An applicant may show that…
Read MoreHow can an applicant show that a disclosure was made by the inventor or a joint inventor?
An applicant can show that a disclosure was made by the inventor or a joint inventor by submitting an affidavit or declaration under 37 CFR 1.130(a), also known as an affidavit or declaration of attribution. The MPEP states: “An applicant may show that a disclosure was made by the inventor or a joint inventor by…
Read MoreWhat is the role of affidavits or declarations in establishing the grace period inventor-originated disclosure exception?
Affidavits or declarations play a crucial role in establishing the grace period inventor-originated disclosure exception when it’s not apparent from the disclosure itself or the patent application specification. The MPEP states: “The Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130) to establish that a disclosure is not prior…
Read MoreWhat is the purpose of 37 CFR 1.130 in patent examination?
37 CFR 1.130 provides a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art under the America Invents Act (AIA). Specifically, it allows applicants to overcome prior art rejections by showing that: The disclosure was made by the inventor or joint inventor (37 CFR 1.130(a)) The subject matter…
Read MoreHow can an applicant show that another obtained the subject matter directly or indirectly from the inventor?
An applicant can demonstrate that another obtained the subject matter directly or indirectly from the inventor or a joint inventor through an affidavit or declaration under 37 CFR 1.130(a) or (b). The MPEP states: “An applicant may also show that another obtained the subject matter disclosed directly or indirectly from the inventor or a joint…
Read MoreHow can an applicant show that a reference is describing an inventor’s own work to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132. The MPEP states: “A rejection based on pre-AIA 35 U.S.C. 102(e) can be overcome by filing an affidavit or declaration…
Read MoreHow can an applicant prove a disclosure is an inventor-originated disclosure?
An applicant can prove a disclosure is an inventor-originated disclosure in several ways, depending on whether it’s apparent from the disclosure itself or requires additional evidence. According to MPEP 2153.01(a): Apparent from the disclosure: If the disclosure names the inventor or a joint inventor as an author and was made within the grace period, it…
Read MoreHow can an applicant show that a disclosure was made by the inventor before an intervening disclosure?
How can an applicant show that a disclosure was made by the inventor before an intervening disclosure? To show that a disclosure was made by the inventor before an intervening disclosure, the applicant must provide evidence that establishes the inventor’s prior public disclosure. The MPEP 2155.02 outlines several ways this can be done: An affidavit…
Read MoreHow can an applicant overcome a rejection under pre-AIA 35 U.S.C. 102(e)?
An applicant can overcome a rejection under pre-AIA 35 U.S.C. 102(e) through several methods: Persuasively arguing that the claims are patentably distinguishable from the prior art Amending the claims to patentably distinguish over the prior art Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another” Filing…
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