What types of evidence can an applicant submit to support enablement?
Applicants can submit various types of evidence to support enablement claims. According to MPEP 2164.05: Factual affidavits under 37 CFR 1.132 References showing what one skilled in the art knew at the time of filing Declarations or affidavits containing factual evidence In chemical and biotechnical applications, evidence submitted to the FDA for clinical trial approval…
Read MoreWhat is the purpose of 37 CFR 1.130 affidavits or declarations?
The purpose of affidavits or declarations under 37 CFR 1.130 is to overcome prior art rejections by establishing that: The disclosure was made by the inventor or joint inventor (1.130(a) declaration) The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor (1.130(a) declaration) The subject matter disclosed had been…
Read MoreHow can an inventor prove a prior public disclosure for the AIA 35 U.S.C. 102(b)(2)(B) exception?
To prove a prior public disclosure for the AIA 35 U.S.C. 102(b)(2)(B) exception, inventors can use affidavits or declarations. The MPEP provides guidance on this: “MPEP § 2155.02 discusses the use of affidavits or declarations to show a prior public disclosure of the subject matter by the inventor or a joint inventor, and MPEP §…
Read MoreAre there specific rules for submitting patents and patent-related documents in supplemental examination?
Yes, there are specific rules for submitting patents and patent-related documents in supplemental examination. According to MPEP 2807: “Patents, patent application publications, and third-party-generated affidavits or declarations must not be reduced in size or otherwise modified in the manner described in this paragraph.” This means that unlike court documents and non-patent literature, which may be…
Read MoreHow should an examiner handle affidavits or declarations in an examiner’s answer?
When handling affidavits or declarations in an examiner’s answer for an inter partes reexamination proceeding, the examiner should follow the guidance provided in MPEP 2677. The key points are: The examiner should report their conclusions on any affidavits, declarations, or exhibits that were admitted to the record. Affidavits or declarations swearing behind a patent should…
Read MoreWhat evidence is required in a 37 CFR 1.130(a) declaration?
A 37 CFR 1.130(a) declaration requires evidence to establish that the disclosure was made by the inventor or joint inventor, or that the subject matter was obtained directly or indirectly from the inventor or joint inventor. The evidence may include: Inventor’s affidavit or declaration stating the facts Corroborating documents (e.g., emails, lab notebooks) Evidence of…
Read MoreWhat is the difference between 37 CFR 1.130(a) and 1.130(b) declarations?
The main difference between 37 CFR 1.130(a) and 1.130(b) declarations lies in the nature of the disclosure being addressed: 1.130(a) declaration: Used when the disclosure was made by the inventor or joint inventor, or the subject matter was obtained directly or indirectly from the inventor or joint inventor. 1.130(b) declaration: Used when the subject matter…
Read MoreHow does the AIA one-year grace period affect 37 CFR 1.130 declarations?
The AIA one-year grace period is closely related to 37 CFR 1.130 declarations. It allows inventors to file patent applications within one year of their own public disclosures or disclosures derived from them. This grace period is reflected in the use of 1.130 declarations: 1.130(a) declarations can be used to establish that a disclosure within…
Read MoreCan affidavits or declarations accompany a 37 CFR 1.501 submission?
Yes, affidavits or declarations can accompany a 37 CFR 1.501 submission. According to MPEP 2205: “Affidavits or declarations or other written evidence relating to the submitted documents may accompany the 37 CFR 1.501 submission to explain the contents or pertinent dates in more detail.“ Examples of acceptable accompanying documents include: A commercial success affidavit tied…
Read MoreCan 37 CFR 1.130 declarations be used for non-public disclosures?
37 CFR 1.130 declarations are primarily designed to address public disclosures that could be considered prior art under AIA 35 U.S.C. 102(a). However, they can also be used in certain situations involving non-public disclosures: 1.130(a) declarations can address subject matter obtained directly or indirectly from the inventor, which may include non-public disclosures. 1.130(b) declarations are…
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