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

Created On
byChhabra Law Firm

[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 CFR 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 § 42.401et 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 42.401et 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 § 2154.01et 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).