What 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…

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How 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…

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How 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…

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How 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…

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How 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…

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How 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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