How can co-authorship affect a pre-AIA 35 U.S.C. 102 rejection?
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.
When an inventor or at least one joint inventor is a co-author of a publication cited against an application, MPEP 715.01(c) outlines two ways to overcome a rejection under pre-AIA 35 U.S.C. 102(a) or (e):
- Filing an affidavit or declaration under 37 CFR 1.131(a).
- Filing a specific affidavit or declaration under 37 CFR 1.132 establishing that the publication describes the inventor’s or inventors’ own work.
The section notes: An uncorroborated affidavit or declaration by a single inventor indicating the inventor to be the sole inventor and the other co-authors to have been merely working under their direction has been sufficient to remove the publication as a reference under pre-AIA 35 U.S.C. 102(a).
However, it’s important to note that a bare assertion of inventorship without context or evidence may be insufficient, as demonstrated in the EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc. case.