717.01(b)(1) Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) [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 § 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.