When can an affidavit or declaration under 37 CFR 1.130(a) be used?
An affidavit or declaration under 37 CFR 1.130(a), also known as an affidavit or declaration of attribution, can be used in two specific situations: To establish that a disclosure was made by the inventor or joint inventor. To establish that the subject matter disclosed was obtained directly or indirectly from the inventor or joint inventor.…
Read MoreWhen does the best mode requirement apply in patent applications?
The best mode requirement applies at the time of filing the patent application. It requires inventors to disclose the best way they know of carrying out their invention at that specific point in time. MPEP 2165.02 clarifies this timing: “If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor]…
Read MoreCan an applicant voluntarily identify grace period inventor-originated disclosures?
Yes, an applicant can voluntarily identify grace period inventor-originated disclosures. The MPEP encourages this practice: “Applicants can include a statement identifying any grace period inventor-originated disclosures in the specification upon filing. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). An applicant is not required to identify any prior inventor-originated disclosures or to use the format…
Read MoreHow does the USPTO determine if a disclosure is by the inventor or a joint inventor?
The USPTO determines if a disclosure is by the inventor or a joint inventor by examining the evidence provided and the circumstances of the disclosure. According to MPEP 2155.02: “The Office is not required to evaluate the sufficiency of the declaration or affidavit beyond ensuring that the declaration or affidavit addresses the subject matter of…
Read MoreHow does the USPTO determine if a disclosure is an inventor-originated disclosure?
The USPTO determines if a disclosure is an inventor-originated disclosure through a case-by-case analysis. According to the MPEP: “What evidence is necessary to show that the disclosure is an inventor-originated disclosure requires case-by-case treatment, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is an inventor-originated…
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 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 MoreWhat is the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(B)?
The Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(B) provides an exception to prior art under AIA 35 U.S.C. 102(a)(2). This exception applies to subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or someone who obtained the subject matter directly or…
Read MoreWhat are the two main scenarios covered by 37 CFR 1.130 affidavits?
The MPEP 2155.04 outlines two main scenarios that can be addressed by affidavits or declarations under 37 CFR 1.130: Inventor or Joint Inventor Disclosure (37 CFR 1.130(a)): “The disclosure in question was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a…
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