717.01(a)(1) Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) [R-07.2022]

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 § 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 1.132. 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.