How can co-authorship affect a pre-AIA 35 U.S.C. 102 rejection?

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):

1. Filing an affidavit or declaration under 37 CFR 1.131(a).
2. 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.

To learn more:

• Co-authorship
• Pre-AIA
• 35 U.S.C. 102
• Affidavit
• Declaration

To learn more:

• 35 U.S.C. 102