Can 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 that a disclosure is not prior art in accordance with 35 U.S.C. 102(b)(1)(A) for a claimed invention under 35 U.S.C. 102(a)(1) or 102(b)(2)(A) for a claimed invention under 35 U.S.C. 102(a)(2).”
This means that if a rejection is based on a disclosure in a U.S. patent, U.S. patent application publication, or WIPO publication of an international application (which falls under 102(a)(2)), an inventor can use a 1.130(a) declaration to attribute the disclosure to themselves or a joint inventor. This effectively disqualifies the disclosure as prior art under the exception in 35 U.S.C. 102(b)(2)(A).
It’s important to note that the declaration must provide evidence that the subject matter disclosed originated from the inventor or a joint inventor. This could include providing details about the conception of the invention, reduction to practice, or other relevant facts that show the inventor(s) as the source of the disclosed subject matter.
To learn more:
To learn more: