How does the USPTO evaluate the sufficiency of evidence in a 37 CFR 1.130(a) declaration?
The USPTO evaluates the sufficiency of evidence in a 37 CFR 1.130(a) declaration on a case-by-case basis. According to MPEP 717.01(a): ‘The evidence necessary to show that the disclosure is by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor…
Read MoreCan a 37 CFR 1.130(a) declaration be used to overcome a 35 U.S.C. 102(a)(2) rejection?
Can a 37 CFR 1.130(a) declaration be used to overcome a 35 U.S.C. 102(a)(2) rejection? Yes, a declaration under 37 CFR 1.130(a) can be used to overcome a rejection under 35 U.S.C. 102(a)(2). The MPEP 717.01(a) provides guidance on this matter: “37 CFR 1.130(a) provides a mechanism for filing an affidavit or declaration to establish…
Read MoreWhat types of affidavits or declarations can be filed under 37 CFR 1.130?
Under 37 CFR 1.130, two types of affidavits or declarations can be filed: Affidavit or declaration of attribution (37 CFR 1.130(a)): This is used to establish that a disclosure was made by the inventor or joint inventor, or that the subject matter disclosed was obtained directly or indirectly from the inventor or joint inventor. Affidavit…
Read MoreCan a 37 CFR 1.130(a) declaration be used for disclosures made more than one year before the effective filing date?
No, a 37 CFR 1.130(a) declaration cannot be used for disclosures made more than one year before the effective filing date of the claimed invention. MPEP 717.01(a) clearly states: The provisions of 37 CFR 1.130(a) are not available if the rejection is based upon a disclosure made more than one year before the effective filing…
Read MoreWhat are the requirements for disqualifying a patent or patent application publication under 37 CFR 1.131(c)?
To disqualify a U.S. patent or U.S. patent application publication as prior art under 37 CFR 1.131(c), the applicant or patent owner must submit two items: A terminal disclaimer: This must be in accordance with 37 CFR 1.321(c). An oath or declaration: This must state that: The application or patent under reexamination and the patent…
Read MoreWhat are the requirements for filing an affidavit or declaration under 37 CFR 1.131(a)?
An affidavit or declaration under 37 CFR 1.131(a) may be necessary even when there is common ownership between a reference and an application. According to MPEP 715.01(b): The mere fact that the reference patent or application publication which shows but does not claim certain subject matter and the application which claims it are owned by…
Read MoreWhat is the purpose of a declaration or affidavit under 37 CFR 1.130(a)?
A declaration or affidavit under 37 CFR 1.130(a) is used to show that: The disclosure was made by the inventor or a joint inventor, or The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. As stated in the MPEP, In other words, the affidavits or declarations are seeking…
Read MoreWhat is the purpose of a declaration or affidavit under 37 CFR 1.130(b)?
A declaration or affidavit under 37 CFR 1.130(b) serves to attribute the subject matter disclosed in a grace period inventor disclosure to the inventor or a joint inventor. Its purpose is to establish that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly…
Read MoreWhat is the purpose of a declaration or affidavit under 37 CFR 1.130(a)?
A declaration or affidavit under 37 CFR 1.130(a) serves to attribute a disclosure that might otherwise qualify as prior art to the inventor or joint inventor. Its purpose is to establish that the disclosure was made by the inventor or joint inventor, or obtained directly or indirectly from them. As stated in MPEP 717.01(a)(1): The…
Read MoreWhat is the purpose of a declaration or affidavit under 37 CFR 1.130(b)?
A declaration or affidavit under 37 CFR 1.130(b) serves to disqualify a disclosure as prior art by establishing that the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor, before the date of…
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