717.01    Affidavit or Declaration Under 37 CFR 1.130 [R-10.2019]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note)  and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102  and pre-AIA 35 U.S.C. 103, see MPEP § 715 et seq. for affidavits or declarations under 37 CFR 1.131(a), MPEP § 718 for affidavits or declarations under 37 CFR 1.131(c), and MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

37 C.F.R. 1.130  Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act.

  • (a) Affidavit or declaration of attribution. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
  • (b) Affidavit or declaration of prior public disclosure. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. An affidavit or declaration under this paragraph must identify the subject matter publicly disclosed and provide the date such subject matter was publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
    • (1) If the subject matter publicly disclosed on that date was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication.
    • (2) If the subject matter publicly disclosed on that date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on that date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
  • (c) When this section is not available. The provisions of this section are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. The provisions of this section may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or a patent owner may file a petition for a derivation proceeding pursuant to § 42.401  et seq. of this title
  • (d) Applications and patents to which this section is applicable. The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
    • (1) A claim to a claimed invention that has an effective filing date as defined in § 1.109  that is on or after March 16, 2013; or
    • (2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c)  to any patent or application that contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109  that is on or after March 16, 2013.

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37 CFR 1.130  provides a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art in accordance with 35 U.S.C. 102(b). In other words, 37 CFR 1.130, like 37 CFR 1.131  and 37 CFR 1.132, provides a mechanism for the submission of evidence to disqualify a disclosure as prior art or otherwise traverse a rejection. An applicant’s or patent owner’s compliance with 37 CFR 1.130  means that the applicant or patent owner is entitled to have the evidence considered in determining the patentability of the claim(s) at issue. It does not mean that the applicant or patent owner is entitled as a matter of right to have the rejection of, or objection to, the claim(s) withdrawn. See Changes To Implement the Patent Business Goals, 65 FR 54604, 54640 (Sept. 8, 2000) (discussing procedural nature of 37 CFR 1.131  and 37 CFR 1.132 ).

37 CFR 1.130(a)  provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(a)  pertains to the provisions of subparagraph (A) of 35 U.S.C. 102(b)(1)  and 102(b)(2).

37 CFR 1.130(b)  provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(b)  pertains to the provisions of subparagraph (B) of 35 U.S.C. 102(b)(1)  and 102(b)(2).

37 CFR 1.130(c)  provides that the provisions of 37 CFR 1.130  are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. A disclosure made more than one year before the effective filing date of the claimed invention is prior art under 35 U.S.C. 102(a)(1)  and does not meet the requirements for exception under 35 U.S.C. 102(b)(1).

37 CFR 1.130(d)  provides that the provisions of 37 CFR 1.130  apply to any application for patent, and to any patent issuing thereon, that is subject to 35 U.S.C. 102  and 103.

I.    SITUATIONS WHERE 37 CFR 1.130 AFFIDAVITS OR DECLARATIONS CAN BE USED

Affidavits or declarations under 37 CFR 1.130  may be used, for example:

  • (A) When a claim is under a prior art rejection, to show a disclosure (e.g., reference, activity, or portion thereof) that is relied upon as prior art under 35 U.S.C. 102(a)(1)  or (2)  is eligible to be excepted under 35 U.S.C. 102(b)(1)  or (2)  by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor, subject to certain restrictions, as discussed below in subsection II.
  • (B) When a claim is under a prior art rejection, to show a disclosure (e.g., reference, activity, or portion thereof) that is relied upon as prior art under 35 U.S.C. 102(a)(1)  or (2)  is eligible to be excepted under 35 U.S.C. 102(b)(1)  or (2)  by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, subject to certain restrictions, as discussed below in subsection II.

If effective, the showing that the disclosure is not prior art under 35 U.S.C. 102(a)  will make the disclosure unavailable to be applied in a rejection under either 35 U.S.C. 102(a)  or 35 U.S.C. 103. For example, an applicant or patent owner may overcome a 35 U.S.C. 103  rejection based on a combination of references by showing that the subject matter disclosed in only one of the references (or portion thereof) applied in the rejection is not prior art. The U.S. patents or U.S. patent application publications may continue to be applied under the judicially created doctrine of nonstatutory double patenting, statutory double patenting and may serve as evidence of the level of ordinary skill or evidence relevant to an enablement inquiry.

II.    SITUATIONS WHERE 37 CFR 1.130 AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE

An affidavit or declaration under 37 CFR 1.130  is not appropriate in the following situations:

  • (A) When the disclosure that is applied in a rejection is:
    • (1) a U.S. patent or U.S. patent application publication that
      • (a) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and
      • (b) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent under examination.

    In this case, an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401  et seq.

  • The provisions of 37 CFR 1.130, however, would be available if:
    • (1) The rejection is based upon a disclosure other than a U.S. patent or U.S. patent application publication (such as non-patent literature or a foreign patent document);
    • (2) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application did not claim an invention that is the same or substantially the same as the applicant’s claimed invention; or
    • (3) the rejection is based upon a U.S. patent or U.S. patent application and while the patent or pending application does claim an invention that is the same or substantially the same as the applicant’s claimed invention, the affidavit or declaration under 37 CFR 1.130  does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent under examination (e.g., an affidavit or declaration under 37 CFR 1.130  would be available if instead of alleging derivation, the affidavit or declaration under 37 CFR 1.130  contends that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor).
  • (B) If the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. A disclosure made more than one year before the effective filing date of the claimed invention is prior art under 35 U.S.C. 102(a)(1)  and may not be excepted under 35 U.S.C. 102(b)(1). Note that the provisions of 37 CFR 1.130  are available to overcome a rejection under 35 U.S.C. 102(a)(2)  which is based on subject matter in an application or patent that was effectively filed, but not published or made publicly available, more than one year before the effective filing date of the claimed invention under examination, where the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. See also, MPEP § 2155.06.

III.    SITUATIONS WHERE 37 CFR 1.130(a) AFFIDAVITS OR DECLARATIONS ARE NOT REQUIRED

  • (A) A declaration under 37 CFR 1.130(a)  is not required when a public disclosure, subject to the exceptions of 35 U.S.C. 102(b)(1)(A), is by one or more joint inventor(s) or the entire inventive entity of the application under examination and does not name anyone else. For example, if an application names A, B, and C as the inventive entity, a journal publication names as authors A and B, and the publication date is one year or less before the effective filing date of the claimed invention, then the publication should not be applied in a prior art rejection because it is apparent that the disclosure is a grace period disclosure. Where a disclosure involves a patent document, a declaration under 37 CFR 1.130(a)  is not required where the inventive entity of the patent document, subject to the exceptions of 35 U.S.C. 102(b)(1)(A), only includes one or more joint inventor(s) or the entire inventive entity of the application under examination. For example, if the application names A, B, and C as the inventive entity, the patent document names A and B as the inventive entity, and the public availability date of the patent document is one year or less before the effective filing date of the claimed invention under examination, then the patent document should not be applied in a prior art rejection under 35 U.S.C. 102(a)(1)  because it is apparent that the patent document disclosure is a grace period disclosure.
  • (B) A declaration under 37 CFR 1.130(a)  is not required when the inventive entity of a U.S. patent, U.S. patent application publication, or a WIPO publication that designates the United States, subject to the exceptions of 35 U.S.C. 102(b)(2)(A), only includes one or more joint inventor(s), but not the entire inventive entity, of the application under examination. For example, if the application under examination names as the inventive entity A, B, and C, and the 35 U.S.C. 102(a)(2)  reference names A and B as the inventive entity, then the reference should not be applied in a prior art rejection because it is apparent that the subject matter disclosed was obtained from one or more members of the inventive entity, either directly or indirectly. The exceptions under 35 U.S.C. 102(b)(1)(A)  and 35 U.S.C. 102(b)(2)(A)  both have to do with disclosures of material that originated with the inventor or a joint inventor. However, the 35 U.S.C. 102(b)(2)(A)  exception is not limited to the grace period.
  • (C) A declaration under 37 CFR 1.130(a)  is not required if the specification of the application under examination identifies the disclosure or the subject matter disclosed that is subject to the exceptions of 35 U.S.C. 102(b)(1)(A)  or 35 U.S.C. 102(b)(2)(A)  as having been made by or having originated from one or more members of the inventive entity of the application under examination. See 37 CFR 1.77(b)(6)  and MPEP § 2153.01(a).

IV.    PRIOR ART DATE OF THE DISCLOSURE UNDER AIA 35 U.S.C. 102(a)

For determining the prior art date of a disclosure under AIA 35 U.S.C. 102(a)(1), see MPEP § 2152.02(a) et seq.

For determining the prior art date of a disclosure under AIA 35 U.S.C. 102(a)(2), see MPEP § 2154.01 et seq.

V.    FORM PARAGRAPHS

¶ 7.67.aia    Affidavit or Declaration Under 37 CFR 1.130: Effective to Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)

The [1] under 37 CFR 1.130  [2] filed on [3] is sufficient to overcome the rejection of claim [4] based on [5]. [6]

Examiner Note:

1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 /103  as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.

2. In bracket 1, insert either --affidavit-- or --declaration--.

3. In bracket 2, insert either --(a)-- or --(b)--.

4. In bracket 3, insert the filing date of the affidavit or declaration

5. In bracket 4, insert the affected claim or claims.

6. In bracket 5, insert the specific reference applied under 35 U.S.C. 102  or 103  that the affidavit or declaration has disqualified as prior art.

7. In bracket 6, insert the explanation of how the affidavit/declaration provides evidence of reliance on one of the exception provisions of 35 U.S.C. 102(b)(1)  or 102(b)(2).

¶ 7.68.aia    Affidavit or Declaration Under 37 CFR 1.130: Ineffective to Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)

The [1] under 37 CFR 1.130  [2] filed [3] is insufficient to overcome the rejection of claim [4] based upon [5] as set forth in the last Office action because [6]:

Examiner Note:

1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 /103  as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia .

2. In bracket 1, insert either --affidavit-- or --declaration--.

3. In bracket 2, insert either --(a)-- or --(b)--.

4. In bracket 3, insert the filing date of the affidavit or declaration.

5. In bracket 4, insert the affected claim or claims.

6. In bracket 5, insert the rejection that has not been overcome, including statutory grounds.

7. In bracket 6, insert the explanation of how the affidavit or declaration fails to provide evidence of reliance on one of the exception provisions of 35 U.S.C. 102(b)(1)  or 102(b)(2).

717.01(a)    Declarations or Affidavits under 37 CFR 1.130(a) – Attribution [R-11.2013]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note)  and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102  and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

37 CFR 1.130(a)  provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(a)  pertains to the provisions of subparagraph (A) of 35 U.S.C. 102(b)(1) ) and 102(b)(2). 35 U.S.C. 102(b)(1)(A)  provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under 35 U.S.C. 102(a)(1)  if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, and 35 U.S.C. 102(b)(2)(A)  provides that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2)  if the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

717.01(a)(1)    Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) [R-10.2019]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note)  and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102  and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

In making a submission under 37 CFR 1.130(a), the applicant or patent owner is attempting to show that: (1) the disclosure was made by the inventor or a joint inventor; or (2) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. In other words, the affidavits or declarations are seeking to attribute an activity, a reference, or part of a reference to the inventor(s) to show that the disclosure is not available as prior art under 35 U.S.C. 102(a). Such declarations or affidavits will be similar to affidavits or declarations under 37 CFR 1.132  for application subject to pre-AIA 35 U.S.C. 102(a)  or 102(e). See MPEP § 716.10 and In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982). Affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102  remain as affidavits or declarations under 37 CFR 1.32. Thus, the Office will treat affidavits or declarations of attribution for applications subject to the current 35 U.S.C. 102  as affidavits or declarations under 37 CFR 1.130, and affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102  as affidavits or declarations under 37 CFR 1.132, regardless of whether the affidavit or declaration is designated as an affidavit or declaration under 37 CFR 1.130, 1.131, or 1.132.

In evaluating whether a declaration under 37 CFR 1.130(a)  is effective, Office personnel will consider the following criteria:

  • (A) Whether the disclosure, which was applied in the rejection and is addressed in the affidavit or declaration, is subject to the exceptions of 35 U.S.C. 102(b)(1)(A)  or 102(b)(2)(A). The provision of 37 CFR 1.130(a)  is not available:
    • (1) If the disclosure was made (e.g., patented, described in a printed publication, or in public use, on sale, or otherwise available to the public) more than one year before the effective filing date of the claimed invention. See MPEP § 2152.01 to determine the effective filing date. For example, if a public disclosure by the inventor or which originated with the inventor is not within the grace period of 35 U.S.C. 102(b)(1), it would qualify as prior art under 35 U.S.C. 102(a)(1)  and could not be excepted under 35 U.S.C. 102(b)(1).
    • (2) When the disclosure that is applied in a rejection is
      • (a) a U.S. patent or U.S. patent application publication that
      • (b) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and
      • (c) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent.
    • See MPEP § 717.01, subsection II., for more information on when declarations or affidavits pursuant to 37 CFR 1.130(a)  are not available.
  • (B) Whether the affidavit or declaration shows sufficient facts, in weight and character, to establish that
    • (1) the disclosure was made by the inventor or a joint inventor, or
    • (2) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

    Some factors to consider are the following:

    • (1) Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an "unequivocal" statement from the inventor or a joint inventor that he/she (or some specific combination of named joint inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982).
    • (2) A mere statement from the inventor or a joint inventor, without any accompanying reasonable explanation, may not be sufficient where there is evidence to the contrary, such as a contrary statement from another named author that was filed in another application on behalf of another party. See Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (affirming rejection notwithstanding declarations by the alleged actual inventors as to their inventorship in view of a non-applicant author submitting a letter declaring the non-applicant author’s inventorship).
  • (C) Whether the formal requirements of a declaration or affidavit are met. See MPEP § 717.01(c)
  • (D) Whether the affidavit or declaration is timely presented. See MPEP § 717.01(f) .

There is no requirement that the affidavit or declaration demonstrate that the disclosure by the inventor, a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from an inventor or a joint inventor was an "enabling" disclosure of the subject matter within the meaning of 35 U.S.C. 112(a). See MPEP § 2155.04.

The evidence necessary to show that the disclosure is by the inventor or a joint inventor or another who obtained the subject matter disclosed from the inventor or a joint inventor requires case-by-case analysis, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is an inventor originated disclosure. See MPEP §§ 2155.01 and 2155.03 for more information. This determination is similar to the current process for disqualifying a publication as not being by "others" discussed in MPEP § 2132.01, except that 35 U.S.C. 102(b)(1)(A)  requires only that the disclosure originated from an inventor or a joint inventor.

37 CFR 1.130  does not contain a provision that "[o]riginal exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained" in contrast to the requirement for such exhibits in 37 CFR 1.131(b), because in some situations an affidavit or declaration under 37 CFR 1.130  does not necessarily need to be accompanied by such exhibits (e.g., a statement by the inventor or a joint inventor may be sufficient). However, in situations where additional evidence is required, such exhibits must accompany an affidavit or declaration under 37 CFR 1.130. In addition, an affidavit or declaration under 37 CFR 1.130  must be accompanied by any exhibits that the applicant or patent owner wishes to rely upon. See MPEP § 717.01(c) for more information on the formal requirements for a declaration or affidavit and any attached exhibits.

717.01(b)    Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure [R-11.2013]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note)  and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102  and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

37 CFR 1.130(b)  provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(b)  pertains to the provisions of subparagraph (B) of 35 U.S.C. 102(b)(1)  and 102(b)(2). 35 U.S.C. 102(b)(1)(B)  provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under 35 U.S.C. 102(a)(1)  if the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. 102(b)(2)(B)  provides that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2)  if the subject matter disclosed had, before such subject matter was effectively filed under 35 U.S.C. 102(a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

717.01(b)(1)    Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) [R-10.2019]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note)  and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102  and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

In making a submission under 37 CFR 1.130(b), the applicant or patent owner is attempting to show that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by: (1) the inventor or a joint inventor; or (2) another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

In evaluating whether a declaration under 37 CFR 1.130(b)  is effective to disqualify a disclosure on which the rejection is based, Office personnel will consider the following criteria:

  • (A) Whether the disclosure, which was applied in the rejection and is addressed in the affidavit or declaration, is subject to the exceptions of 35 U.S.C. 102(b)(1)(B)  or 102(b)(2)(B). The provision of 37 CFR 1.130(b)  is not available:
    • (1) If the disclosure was made (e.g., patented, described in a printed publication, or in public use, on sale, or otherwise available to the public) more than one year before the effective filing date of the claimed invention. See MPEP § 2152.01 to determine the effective filing date.
    • (2) When the disclosure that is applied in a rejection is (1) a U.S. patent or U.S. patent application publication that (2) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and (3) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent.
  • See MPEP § 717.01, subsection II, for more information on when the exceptions of 35 U.S.C. 102(b)(1)(B)  or 102(b)(2)(B)  are not available.

In the situation where the previous public disclosure by the inventor (or which originated with the inventor) was not within the grace period but was effective to disqualify an intervening disclosure as prior art by invoking the exception of 35 U.S.C. 102(b)(1)(B)  or 102(b)(2)(B), the previous public disclosure by, or originating with, the inventor would qualify as prior art under 35 U.S.C. 102(a)(1)  and could not be excepted under 35 U.S.C. 102(b)(1)(A).

  • (B) Whether the affidavit or declaration shows sufficient facts, in weight and character, to establish that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by: (1) the inventor or a joint inventor; or (2) another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Some factors to consider are the following:
    • (1) The declaration or affidavit must identify the subject matter publicly disclosed and provide the date of the public disclosure of such subject matter by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
    • (2) If the subject matter publicly disclosed on the earlier date by the inventor or a joint inventor, or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication. See 37 CFR 1.130(b)(1). The Office requires a copy to determine not only whether the inventor is entitled to disqualify the disclosure under 35 U.S.C. 102(b), but also because, if the rejection is based on a U.S. patent application publication or WIPO publication of an international application to another and such application is also pending before the Office, this prior disclosure may be prior art under 35 U.S.C. 102(a)  to the other earlier filed application, and this information may be useful in examination of both applications.
    • (3) If the subject matter publicly disclosed on the earlier date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on the earlier date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
    • (4) If the subject matter publicly disclosed on the earlier date is the same as the subject matter in the disclosure applied in a prior art rejection. See MPEP § 717.01(b)(2).
  • (C) Whether the formal requirements of a declaration or affidavit are met. See MPEP § 717.01(c).
  • (D) Whether the affidavit or declaration is timely presented. See MPEP § 717.01(f).

There is no requirement under 35 U.S.C. 102(b)(1)(B)  that the mode of disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor (e.g., patenting, publication, public use, sale activity) be the same as the mode of disclosure of the intervening grace period disclosure.

There is also no requirement that the disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening grace period disclosure. See In re Kao, 639 F.3d 1057, 1066, 98 USPQ2d 1799, 1806 (Fed. Cir. 2011) (subject matter does not change as a function of how one chooses to describe it).

There is no requirement that the affidavit or declaration demonstrate that the disclosure by the inventor, a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from an inventor or a joint inventor was an enabling disclosure of the subject matter within the meaning of 35 U.S.C. 112(a). See MPEP § 2155.04.

Any remaining portion of an intervening grace period disclosure that was not previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor is available as prior art under 35 U.S.C. 102(a)(1). For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening grace period disclosure discloses elements A, B, C, and D, then only element D of the intervening grace period disclosure is available as prior art under 35 U.S.C. 102(a)(1).

The evidence necessary to show that the subject matter of a disclosure was previously disclosed by, or originated with, an inventor or a joint inventor requires case-by-case analysis.

37 CFR 1.130  does not contain a provision that "[o]riginal exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained" in contrast to the requirement for such exhibits in 37 CFR 1.131(b), because in some situations an affidavit or declaration under 37 CFR 1.130  does not necessarily need to be accompanied by such exhibits (e.g., a statement by the inventor or a joint inventor may be sufficient). However, in situations where additional evidence is required, such exhibits must accompany an affidavit or declaration under 37 CFR 1.130. In addition, an affidavit or declaration under 37 CFR 1.130  must be accompanied by any exhibits that the applicant or patent owner wishes to rely upon. See MPEP § 717.01(d) for more information on the formal requirements for a declaration or affidavit and any attached exhibits.

Finally, neither 35 U.S.C. 102(b)(1)(B)  nor 102(b)(2)(B)  discusses "the claimed invention" with respect to either the subject matter of the previous inventor-originated disclosure or the subject matter of the subsequent intervening disclosure. Any inquiry with respect to the claimed invention is whether or not the subject matter in the prior art disclosure being relied upon anticipates or renders obvious the claimed invention. A determination of whether the exception in 35 U.S.C. 102(b)(1)(B)  or 102(b)(2)(B)  is applicable to subject matter in an intervening disclosure does not involve a comparison of the subject matter of the claimed invention to either the subject matter of the previous inventor-originated disclosure or to the subject matter of the subsequent intervening disclosure.

717.01(b)(2)    Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated Prior Public Disclosure [R-10.2019]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note)  and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102  and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

I.    "SAME" IS NOT "OBVIOUS"

The exceptions of 35 U.S.C. 102(b)(1)(B)  or 102(b)(2)(B)  are only applicable when the subject matter of the intervening disclosure is the same as the subject matter of the earlier inventor-originated prior public disclosure (e.g., a disclosure by an inventor or joint inventor, or another who obtained directly or indirectly from the inventor or a joint inventor). In other words, even if an intervening disclosure by a third party is obvious over an inventor-originated prior public disclosure, it would NOT be a disclosure of the same subject matter and the exceptions under 35 U.S.C. 102(b)(1)(B)  and 102(b)(2)(B)  do not apply. Any showing that the intervening disclosure is the same subject matter as earlier disclosed by the inventor, joint inventor, or another who obtained it directly or indirectly from the inventor(s) must be sufficient, in character and weight, to establish that the two disclosures are to the same subject matter.

II.    ONLY A PORTION MAY BE EXCEPTED AS PRIOR ART

Only the portion of the third party’s intervening disclosure that was previously in an inventor-originated disclosure (i.e., the same subject matter) is excepted as prior art under 35 U.S.C. 102(a). In other words, any portion of the third party’s intervening disclosure that was not part of the previous inventor-originated disclosure is still available for use in a prior art rejection. Therefore, examiners should be aware that a declaration under 37 CFR 1.130(b)  may only disqualify a portion of a disclosure that was applied in a rejection in an Office action, and that other portions of the disclosure may still be available as prior art. For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses elements A, B, C, and D, then element D of the intervening U.S. patent, U.S. patent application publication, or WIPO published application is still available as prior art under 35 U.S.C. 102(a)(2).

III.    MANNER OR MODES OF DISCLOSURES ARE NOT RELEVANT

The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b)  is not critical. Just as the prior art provision of 35 U.S.C. 102(a)(2)  encompasses any disclosure that renders a claimed invention available to the public, any manner of disclosure may be evidenced in an affidavit or declaration under 37 CFR 1.130(b). That is, when using an affidavit or declaration under 37 CFR 1.130(b)  to disqualify an intervening disclosure as prior art based on a prior public disclosure by an inventor or a joint inventor, it is not necessary for the subject matter to have been disclosed in the same manner or using the same words. In other words, there is no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply.

There is also no requirement that the mode (e.g., patenting, publication, public use, sale activity) of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure. For example, the inventor or a joint inventor may have publicly disclosed the subject matter in question via a slide presentation at a scientific meeting, while the intervening disclosure of the subject matter may have been made in a journal article.

A difference in the mode of disclosure or differences in the words used to describe the subject matter will not preclude the inventor from submitting an affidavit or declaration under 37 CFR 1.130(b)  to disqualify the intervening disclosure as prior art.

IV.    SPECIES/GENUS, GENUS/SPECIES, AND SPECIES/SPECIES DISCLOSURES

The exception to 35 U.S.C. 102(a)(2)  applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Specifically, if subject matter of an intervening U.S. patent, U.S. patent application publication, or WIPO published application is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, the exception in 35 U.S.C. 102(b)(2)(B)  applies to such subject matter of the intervening U.S. patent, U.S. patent application publication, or WIPO published application disclosure. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent, U.S. patent application publication, or WIPO published application is not available as prior art under 35 U.S.C. 102(a)(2). Conversely, the exception may not apply to subject matter of the intervening disclosure that is more specific than the subject matter previously publicly disclosed by the inventor or a joint inventor or that is directed to a different species. For example, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses a species, the disclosure of the species in the subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application would be available as prior art under 35 U.S.C. 102(a)(2). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening U.S. patent, U.S. patent application publication, or WIPO published application would be available as prior art under 35 U.S.C. 102(a)(2).

717.01(c)    Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations [R-07.2015]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note)  and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102  and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

I.    WHO MAY MAKE AFFIDAVIT OR DECLARATION

Anyone who has knowledge of the facts discussed in the declaration may sign a declaration under 37 CFR 1.130. In accordance with 37 CFR 1.130, however, it is the applicant or patent owner who may submit (i.e., file) an affidavit or declaration. When an assignee, obligated assignee, or person showing sufficient proprietary interest is the applicant under 35 U.S.C. 118  rather than the inventor, the inventor may sign an affidavit or declaration under 37 CFR 1.130  to disqualify a disclosure of the invention as prior art, but the declaration must be filed by a party having authority to take action in the application. Authority to file papers in an application generally does not lie with the inventor if the inventor is not the applicant.

II.    FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS AND ATTACHED EXHIBITS

An affidavit is a statement in writing made under oath before a notary public, magistrate, or officer authorized to administer oaths. See 602 et seq. for additional information regarding formal requirements of affidavits.

37 CFR 1.68  permits a declaration to be used instead of an affidavit. The declaration must include an acknowledgment by the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001 ) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.

Exhibits, such as those filed as part of an affidavit or declaration under 37 CFR 1.130, must comply with the requirements of 37 CFR 1.91  to be entered into an application file. Exhibits that do not comply with the requirements of 37 CFR 1.91  will be disposed of or returned to applicant at the discretion of the Office. See also MPEP § 608.03(a).

717.01(d)    U.S. Patent or Application Publication Claiming Same Invention [R-11.2013]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note)  and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102  and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

When a rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401  et seq. of this title. See 37 CFR 1.130(c). Permitting two different applicants to each aver or declare that an inventor named in the other application derived the claimed invention without a derivation proceeding to resolve who the true inventor is could result in the Office issuing two patents containing patentably indistinct claims to two different parties. Thus, 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. 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" ) (quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977)). See the Trial Practice Guide for information on derivation proceedings.

The provisions of 37 CFR 1.130, however, would be available if: (1) The rejection is based upon a disclosure other than a U.S. patent or U.S. patent application publication (such as non-patent literature or a foreign patent document); (2) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application did not claim an invention that is the same or substantially the same as the applicant’s claimed invention; or (3) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application that does claim an invention that is the same or substantially the same as the applicant’s claimed invention, but the affidavit or declaration under 37 CFR 1.130 does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent (e.g., an affidavit or declaration under 37 CFR 1.130 would be available if instead of alleging derivation the affidavit or declaration under 37 CFR 1.130  contends that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor).

717.01(e)    Passed Upon (or Decided by) by Primary Examiner [R-11.2013]

The question of sufficiency of affidavits or declarations under 37 CFR 1.130  should be reviewed and decided by a primary examiner.

Review of questions of formal sufficiency and propriety are by petition filed under 37 CFR 1.181. Such petitions are answered by the Technology Center Directors (MPEP § 1002.02(c)).

Review on the merits of a 37 CFR 1.130  affidavit or declaration is by appeal to the Patent Trial and Appeal Board. See MPEP § 1201.

717.01(f)    Seasonable (or Timely) Presentation [R-11.2013]

Affidavits or declarations under 37 CFR 1.130  must be timely presented in order to be admitted. Affidavits and declarations submitted under 37 CFR 1.130  and other evidence traversing rejections are considered timely if submitted:

  • (A) prior to a final rejection;
  • (B) before appeal in an application not having a final rejection;
  • (C) after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e); or
  • (D) after the prosecution is closed (e.g., after a final rejection, after appeal, or after allowance) if applicant files the affidavit or other evidence with a request for continued examination (RCE) under 37 CFR 1.114  in a utility or plant application filed on or after June 8, 1995; or a continued prosecution application (CPA) under 37 CFR 1.53(d)  in a design application.

All admitted affidavits and declarations are acknowledged and commented upon by the examiner in his or her next succeeding action.

For affidavits or declarations under 37 CFR 1.130  filed after appeal, see 37 CFR 41.33(d)  and MPEP § 1206 and § 1211.03.

Review of an examiner’s refusal to enter an affidavit as untimely is by petition and not by appeal to the Patent Trial and Appeal Board. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App. 1941).