Can a 37 CFR 1.131(a) affidavit be used to overcome all types of prior art references?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
No, a 37 CFR 1.131(a) affidavit cannot be used to overcome all types of prior art references. The MPEP 715 outlines specific limitations on the use of these affidavits:
- U.S. Patents and Applications: Cannot be used against U.S. patents or published applications naming another inventor with an earlier effective filing date.
- Statutory Bars: Cannot overcome statutory bars under pre-AIA 35 U.S.C. 102(b).
- Derivation: Not applicable in cases of derivation.
- Interference Proceedings: Not used in interference proceedings.
The MPEP states:
‘An affidavit or declaration under 37 CFR 1.131(a) is not appropriate where the reference is a statutory bar under pre-AIA 35 U.S.C. 102(b)… [and] is not appropriate where the reference is a U.S. patent or U.S. patent application publication of a pending or patented application to another or others which claims the same patentable invention as defined in 37 CFR 41.203(a).’
It’s crucial to understand these limitations when considering whether to file a 37 CFR 1.131(a) affidavit to overcome a prior art rejection.