When are the provisions of 37 CFR 1.130 not available in patent applications?

The provisions of 37 CFR 1.130 are not available in certain situations to avoid the issuance of two patents containing patentably indistinct claims to two different parties. According to MPEP 717.01(d), these provisions are not available when:

• A rejection is based on a U.S. patent or U.S. patent application publication naming another inventor
• The patent or application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention
• An affidavit or declaration contends that an inventor named in the U.S. patent or application publication derived the claimed invention from the inventor or joint inventor named in the application or patent

The MPEP cites case law to support this: “See In re Deckler, 977 F.2d 1449, 1451–52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) (35 U.S.C. 102, 103, and 135 ‘clearly contemplate—where different inventive entities are concerned—that only one patent should issue for inventions which are either identical to or not patentably distinct from each other’)”

In such cases, a derivation proceeding is the appropriate course of action to resolve who the true inventor is.

To learn more:

• 37 CFR 1.130
• patent applications
• derivation
• patentably indistinct claims

To learn more:

• 37 CFR 1.130