[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 prior art based on a publication may be overcome by a showing that it was published either by the inventor, at least one joint inventor, or on behalf of the inventor or at least one joint inventor. Because such a showing is not made to show a date of invention under 37 CFR 1.131(a), the limitation in pre-AIA 35 U.S.C. 104 and in 37 CFR 1.131(a) that only acts which occurred in this country or in a NAFTA or WTO member country may be relied on to establish a date of invention is not applicable. 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. For applications subject to current 35 U.S.C. 102, see MPEP §§ 2153 and 2154.
Where the inventor or at least one joint inventor is a co-author of a publication cited against an application, a rejection of the application under pre-AIA 35 U.S.C. 102(a) or (e) based on the publication may be overcome by filing an affidavit or declaration of the inventor or at least one joint inventor under 37 CFR 1.131(a). Alternatively, the rejection may be overcome by filing a specific affidavit or declaration of the inventor or at least one joint inventor under 37 CFR 1.132 establishing that the publication is describing the inventor’s or inventors’ own work. 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 his or her direction has been sufficient to remove the publication as a reference under pre-AIA 35 U.S.C. 102(a). In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). However, if the affidavit or declaration under 37 CFR 1.132 is only a naked assertion of inventorship, which occurred long ago, by an inventor who has an interest at stake and it fails to provide any context, explanation or evidence to support that assertion, documentary evidence contemporaneous with the invention may be needed to provide some degree of corroboration. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017) (The court found the declaration submitted by inventor Campbell more than twenty years after the invention insufficient to establish that he and Mr. Guth (deceased) were the inventors of the subject matter disclosed in a patent naming Campbell, Guth, Danziger, and Padron as inventors.).
“Derivation” as used in the discussion below is in the context of pre-AIA law. “Derivation proceedings” as created in the AIA are discussed in MPEP § 2310 et seq.
When the unclaimed subject matter of a patent, application publication, or other publication is the inventor’s or at least one joint inventor’s own invention, a rejection, which is not a statutory bar, on that patent or publication may be removed by submission of evidence establishing the fact that the patentee, applicant of the published application, or author derived his or her knowledge of the relevant subject matter from the inventor or at least one joint inventor. Moreover the inventor or at least one joint inventor must further show that he or she made the invention upon which the relevant disclosure in the patent, application publication, or other publication is based. In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969); In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969). See also MPEP §§ 2132.01, 2136.05 and 2137.