716.10 Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103 [R-10.2019]

[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. “Derivation” or “derived” 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.]

Under certain circumstances an affidavit or declaration may be submitted which attempts to attribute an activity, a reference or part of a reference to the inventor or at least one joint inventor to overcome a rejection based on pre-AIA 35 U.S.C. 102 prior art. If successful, the activity or the reference is no longer applicable. When subject matter, disclosed in a patent or patent application (reference) naming an inventive entity including inventor S and another joint inventor is claimed in a later application naming inventor S without the joint inventor, the joint patent or joint patent application publication is a valid reference available as prior art under pre-AIA 35 U.S.C. 102(a), (e), or (f) until overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132. An unequivocal declaration under 37 CFR 1.132 by S that he/she conceived or invented the subject matter that was disclosed but not claimed in the patent or patent application publication and relied on in the rejection has been sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982)(declaration corroborated by attached drawing). Depending on the situation, documentation created contemporaneously with the conception/invention and/or declarations/affidavits by the other inventor(s) named in the reference may be used to corroborate inventorship. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). Where the reference is a U.S. patent or patent application publication which includes a claim reciting the subject matter relied upon in a rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination, a declaration under 37 CFR 1.132 must also explain the presence of the additional inventor in the reference (e.g., the disclosure in claim 1 of the reference is relied upon to reject the claims; the affidavit or declaration explains that S is the sole inventor of claim 1, and the additional inventor and S are joint inventors of claim 2 of the reference). Testimony or disclaimer by the other inventor named in the reference is usually not required but, if submitted, should be considered by the examiner.

Note that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming a different inventive entity which claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05.

For applications subject to current 35 U.S.C. 102, see MPEP §§ 717, 2153 and 2154.

Where there is a published article identifying the authorship (MPEP § 715.01(c)) or a patent or an application publication identifying the inventorship (MPEP § 715.01(a)) that discloses subject matter being claimed in an application undergoing examination, the designation of authorship or inventorship does not raise a presumption of inventorship with respect to the subject matter disclosed in the article or with respect to the subject matter disclosed but not claimed in the patent or published application so as to justify a rejection under pre-AIA 35 U.S.C. 102(f).

However, it is incumbent upon the applicant in the application, in response to an inquiry regarding the appropriate inventorship under pre-AIA 35 U.S.C. 102(f) or to rebut a rejection under pre-AIA 35 U.S.C. 102(a) or (e), to provide a satisfactory showing by way of affidavit or declaration under 37 CFR 1.132 that the inventorship of the application is correct in that the reference discloses subject matter derived from the inventor or at least one joint inventor of the application undergoing examination rather than invented by the author, patentee, or applicant of the published application notwithstanding the authorship of the article or the inventorship of the patent or published application. In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982) (inquiry is appropriate to clarify any ambiguity created by an article regarding inventorship and it is then incumbent upon the applicant to provide “a satisfactory showing that would lead to a reasonable conclusion that [inventor or at least one joint inventor] is the … inventor” of the subject matter disclosed in the article and claimed in the application).

An uncontradicted “unequivocal statement” from an inventor or joint inventor regarding the subject matter disclosed in an article, patent, or published application has been accepted as establishing inventorship. In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)(declaration corroborated by attached drawing). Depending on the situation, documentation created contemporaneously with the conception/invention and/or declarations/affidavits by the other inventor(s) named in the reference may be used to corroborate inventorship. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). When additional documentary evidence contradicts statements made by the inventor or at least one joint inventor with respect to inventorship, it may be appropriate to maintain the rejection(s). Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (a rejection under pre-AIA 35 U.S.C. 102(f) was affirmed notwithstanding declarations by the alleged actual inventors as to their inventorship in view of a nonapplicant author submitting a letter declaring the author’s inventorship); In re Carreira, 532 F.2d 1356, 189 USPQ 461 (CCPA 1976) (disclaiming declarations from patentees were directed at the generic invention and not at the claimed species, hence no need to consider derivation of the subject matter).

A successful 37 CFR 1.132 affidavit or declaration establishing derivation by the author, patentee, or applicant of the published application of a first reference does not enable an applicant to step into the shoes of that author, patentee, or applicant of the published application in regard to its date of publication so as to defeat a later second reference. In re Costello, 717 F.2d 1346, 1350, 219 USPQ 389, 392 (Fed. Cir. 1983).

Affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102 are affidavits or declarations under 37 CFR 1.132 because these are not otherwise provided for in the rules of practice. 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 37 CFR 1.132.

EXAMPLES

The following examples demonstrate the application of an attribution affidavit or declaration.

In the situation described in Example 2, an affidavit under 37 CFR 1.132 may be submitted to show that the relevant portions of the reference originated with or were obtained from the inventor or at least one joint inventor named in the application undergoing examination. Thus the affidavit attempts to convert the fact situation from that described in Example 2 to the situation described in Example 1.