When does diligence become a factor in patent examination?
Diligence becomes a factor in patent examination when an inventor is attempting to establish prior invention under 37 CFR 1.131(a). The MPEP states, In determining the sufficiency of a 37 CFR 1.131(a) affidavit or declaration, diligence need not be considered unless conception of the invention prior to the effective date is clearly established, pursuant to…
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 evidence can be submitted to show prior invention under 37 CFR 1.131(a)?
According to MPEP 715.07, evidence to show prior invention under 37 CFR 1.131(a) can include: Attached sketches Attached blueprints Attached photographs Attached reproductions of notebook entries An accompanying model Attached supporting statements by witnesses Testimony given in an interference Documents submitted under the Disclosure Document Program (discontinued February 1, 2007) The MPEP states: Evidence in…
Read MoreHow should facts be presented in affidavits or declarations for antedating a reference?
When presenting facts in affidavits or declarations for antedating a reference, it’s crucial to follow the guidelines outlined in MPEP 715.07. The key points are: Present specific facts, not conclusions Provide clear and convincing evidence of prior invention Include dates of conception and reduction to practice Explain any delay between conception and reduction to practice…
Read MoreHow does a 37 CFR 1.131(a) affidavit overcome a pre-AIA 35 U.S.C. 103 rejection?
A 37 CFR 1.131(a) affidavit can overcome a pre-AIA 35 U.S.C. 103 rejection by showing completion of the invention prior to the effective date of the reference(s) cited in the rejection. The MPEP 715.02 states: Applicant may overcome a pre-AIA 35 U.S.C. 103 rejection based on a combination of references by showing completion of the…
Read MoreHow can an applicant overcome a rejection based on prior use or knowledge under MPEP 715.01(d)?
MPEP 715.01(d) provides two main ways for an applicant to overcome a rejection based on prior use or knowledge: Affidavit or declaration under 37 CFR 1.131(a): The MPEP states: “a rejection under pre-AIA 35 U.S.C. 102 or 103 based on an activity showing that the claimed invention was used or known prior to the filing…
Read MoreWhat types of evidence are acceptable for proving prior invention under 37 CFR 1.131?
What types of evidence are acceptable for proving prior invention under 37 CFR 1.131? According to MPEP 715.07, various types of evidence can be used to prove prior invention under 37 CFR 1.131. The MPEP states: ‘Acceptable types of evidence… include facts concerning reduction to practice, facts concerning conception coupled with due diligence from a…
Read MoreCan a 37 CFR 1.131(a) affidavit be sufficient if it doesn’t show the identical disclosure of the reference?
Yes, a 37 CFR 1.131(a) affidavit can be sufficient even if it doesn’t show the identical disclosure of the reference. The MPEP 715.02 states: Further, a 37 CFR 1.131(a) affidavit is not insufficient merely because it does not show the identical disclosure of the reference(s) or the identical subject matter involved in the activity relied…
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