What is the significance of 37 CFR 1.132 affidavits in overcoming pre-AIA 35 U.S.C. 102 or 103 rejections?

37 CFR 1.132 affidavits play a crucial role in overcoming rejections based on pre-AIA 35 U.S.C. 102 or 103 when the reference cited is a publication of the inventor’s or a joint inventor’s own invention. MPEP 715.01(c) states:

See MPEP § 716.10 regarding 37 CFR 1.132 affidavits submitted to show that the reference is a publication of the inventor’s or a joint inventor’s own invention to overcome a rejection based on pre-AIA 35 U.S.C. 102 or 103.

These affidavits are used to establish that the content in the cited reference is the inventor’s own work. However, it’s important to note that mere assertions of inventorship are not sufficient. The MPEP cautions:

An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship by an inventor who has an interest at stake and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.

This guidance is based on the EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc. case, emphasizing the need for context, explanation, or evidence to support inventorship claims.

To learn more:

• 37 CFR 1.132
• Affidavits
• Pre-AIA
• 35 U.S.C. 102
• 35 U.S.C. 103

To learn more:

• 37 CFR 1.132
• 35 U.S.C. 102
• 35 U.S.C. 103