Showing That the Disclosure Was Made by the Inventor or a Joint Inventor

[Editor Note: This MPEP section is

only applicable

to applications

subject to examination under the first inventor to file (FITF) provisions of the AIA

as set forth in

35 U.S.C. 100 (note)

. See

MPEP

§ 2159

et seq. to determine whether an application is

subject to examination under the FITF provisions, and

MPEP §

2131

-

MPEP § 2138

for examination of

applications subject to

pre-AIA 35 U.S.C. 102

.]

AIA 35

U.S.C. 102(b)(1)(A)

provides that a grace period disclosure shall

not be prior art to a claimed invention under

AIA 35 U.S.C.

102(a)(1)

if the disclosure was made by the inventor or a joint

inventor. An applicant may show that a disclosure was made by the inventor or a joint

inventor by way of an affidavit or declaration under

37 CFR 1.130(a)

(an affidavit or

declaration of attribution). See

In re Katz,

687 F.2d 450, 455, 215

USPQ 14, 18 (CCPA 1982) and

MPEP § 717.01(a)(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

the inventor or joint inventor (or some combination of named 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). 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 except 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. However, an affidavit or

declaration under

37

CFR 1.130(a)

that is only a naked assertion of inventorship and

that fails to provide any context, explanation or evidence to support that assertion is

insufficient. See

EmeraChem Holdings, LLC v. Volkswagen Grp

y the inventor or a joint inventor, or the subject matter disclosed was obtained

directly or indirectly from the inventor or a joint inventor. However, an affidavit or

declaration under

37

CFR 1.130(a)

that is only a naked assertion of inventorship and

that fails to provide any context, explanation or evidence to support that assertion is

insufficient. See

EmeraChem Holdings, LLC v. Volkswagen Grp. of Am.,

Inc.,

859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). See also

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 nonapplicant author submitting a letter declaring the nonapplicant author's

inventorship). This is similar to the process for disqualifying a publication as not

being by “others” discussed in

MPEP § 2132.01

, except that

AIA 35

U.S.C. 102(b)(1)(A)

requires only that the disclosure be by the

inventor or a joint inventor.

The following examples are provided for illustration

only:

Example 1

On April 7, 2021, an attorney for AB Corp. files a

U.S. nonprovisional patent application claiming subject matter X. Anwesha is the

inventor named in a signed application data sheet (ADS), but there is no inventor's

oath or declaration under

37 CFR 1.63

of record. The

examiner finds a journal article disclosing subject matter X with a publication date

of November 1, 2020, which is within the grace period. The journal article lists

Anwesha and Bob as coauthors. There is no evidence of record to indicate that Bob did

not invent subject matter X disclosed in the journal article. Accordingly, the

examiner rejects the claim to X as being anticipated under

35 U.S.C.

102(a)(1)

by the journal article. In response to the prior art

rejection, AB Corp.'s attorney files a declaration under

37 CFR 1.130(a)

signed by Anwesha averring that she is the sole inventor of the subject matter X

disclosed in the article

at Bob did

not invent subject matter X disclosed in the journal article. Accordingly, the

examiner rejects the claim to X as being anticipated under

35 U.S.C.

102(a)(1)

by the journal article. In response to the prior art

rejection, AB Corp.'s attorney files a declaration under

37 CFR 1.130(a)

signed by Anwesha averring that she is the sole inventor of the subject matter X

disclosed in the article. Anwesha also explains in the declaration that Bob was a

graduate student working under her direction and supervision and did not contribute

to the conception of the claimed invention. In other words, Anwesha’s declaration

establishes that Bob was not a joint inventor of subject matter X.

The examiner should withdraw the rejection because the

declaration establishes that the journal article is not prior art. Anwesha's

declaration includes a statement that Anwesha invented X, so there is no need for the

examiner to require a signed inventor's oath or declaration under

37 CFR 1.63

at this time in order to withdraw the rejection. Furthermore, the declaration

properly includes a reasonable explanation of Bob's involvement with the journal

article. A statement from Bob is not needed. There is no evidence in the record to

suggest that Bob was a joint inventor of X.

Example 2

An attorney for AB Corp. files a U.S. patent

application disclosing and claiming subject matter Y on June 2, 2021. Alexis is the

inventor named in a signed ADS, but there is no inventor's oath or declaration under

37 CFR

1.63

on file. The examiner finds a U.S. patent application

publication (PGPub) claiming subject matter Y and Z that was published on January 14,

2021, which is within the grace period. The PGPub lists Alexis and Mehdi as joint

inventors. There is no evidence of record to indicate that Mehdi did not invent

subject matter Y as disclosed and claimed in the PGPub to Alexis and Mehdi.

Accordingly, the examiner rejects the claim to Y as being anticipated by the PGPub

under

35

U.S.C. 102(a)(1)

based on its publication date, and under 35

U.S.C

14,

2021, which is within the grace period. The PGPub lists Alexis and Mehdi as joint

inventors. There is no evidence of record to indicate that Mehdi did not invent

subject matter Y as disclosed and claimed in the PGPub to Alexis and Mehdi.

Accordingly, the examiner rejects the claim to Y as being anticipated by the PGPub

under

35

U.S.C. 102(a)(1)

based on its publication date, and under 35

U.S.C. 102(a)(2) based on its effectively filed date.

In response to the prior art rejections, AB Corp.’s

attorney files a

37

CFR 1.130(a)

declaration signed by Alexis averring that she

invented subject matter Y as disclosed and claimed in the PGPub. The examiner should

maintain the rejections under both

35 U.S.C. 102(a)(1)

and

102(a)(2)

because the declaration fails to establish that

Mehdi is not a joint inventor of Y. Alexis' declaration under

37 CFR 1.130(a)

does include a statement that Alexis invented Y, so there is no need for the examiner

to require a signed inventor's oath or declaration under

37 CFR 1.63

at this time in order to withdraw the rejection. However, Alexis’ declaration is

ineffective because it lacks a reasonable explanation of Mehdi’s role in the PGPub.

If Alexis’ declaration had stated that Mehdi was named as an inventor of the PGPub

because Mehdi invented Z, the declaration would have been sufficient; a corroborating

statement from Mehdi would not have been needed.

Note that in accordance with compact prosecution, it

is appropriate in Example 2 for the examiner to reject under both sections of

35

U.S.C. 102(a)

because the U.S. patent document reference has a

public availability date (that is, either a publication date or an issue date) within

the grace period. If the

35 U.S.C. 102(a)(1)

date had been

prior to the grace period, then no

35 U.S.C. 102(a)(2)

rejection

over the same disclosure would have been necessary because no exception could

possibly have applied to overcome the

35 U.S.C. 102(a)(1)

rejection

use the U.S. patent document reference has a

public availability date (that is, either a publication date or an issue date) within

the grace period. If the

35 U.S.C. 102(a)(1)

date had been

prior to the grace period, then no

35 U.S.C. 102(a)(2)

rejection

over the same disclosure would have been necessary because no exception could

possibly have applied to overcome the

35 U.S.C. 102(a)(1)

rejection.

Given the facts of Example 2, however, an applicant’s response could possibly

establish an exception to overcome one of the rejections while allowing the examiner

to maintain the other rejection. At the time that a rejection is made, the examiner

cannot foresee how the applicant will respond. Thus, in order to conclude prosecution

in a timely manner and avoid the possibility of an additional non-final action, the

examiner should make both a

35 U.S.C. 102(a)(1)

rejection and

a

35

U.S.C. 102(a)(2)

rejection when the

35 U.S.C.

102(a)(1)

date of a U.S. patent document is within the grace

period year.

Example 3

On March 16, 2021, an attorney for Acme Corp. files a

U.S. patent application claiming subject matter X. Ali is the inventor named in a

signed ADS, but there is no inventor's oath or declaration under

37 CFR 1.63

on record. The examiner finds a September 10, 2021 U.S. patent application

publication (PGPub) that names Ming as the inventor and that discloses but does not

claim subject matter X. The effectively filed date of Ming’s application is January

7, 2020, which is before Acme's filing date. Therefore, Ming’s PGPub is potential

prior art under

35 U.S.C. 102(a)(2)

. However,

Ming’s PGPub is not potential prior art under

35 U.S.C.

102(a)(1)

because it published after Acme's filing date. The

examiner should reject the claim to X under

35 U.S.C.

102(a)(2)

as being anticipated by Ming’s PGPub. At the time of

the rejection, the examiner has no information about Ali's interaction with Ming

. Therefore, Ming’s PGPub is potential

prior art under

35 U.S.C. 102(a)(2)

. However,

Ming’s PGPub is not potential prior art under

35 U.S.C.

102(a)(1)

because it published after Acme's filing date. The

examiner should reject the claim to X under

35 U.S.C.

102(a)(2)

as being anticipated by Ming’s PGPub. At the time of

the rejection, the examiner has no information about Ali's interaction with Ming.

In the reply to the Office action, Acme's attorney

files a declaration under

37 CFR 1.130(a)

signed by Ali to

show that Ming's disclosure of X is not prior art because Ming learned about X from

Ali. The declaration from Ali explains the circumstances under which Ali privately

told Ming about X. Ali's declaration does not state that Ali is the inventor of

X.

The examiner should maintain the rejection under

35

U.S.C. 102(a)(2)

because the record fails to establish that Ali

invented X. Specifically, Ali's

37 CFR 1.130(a)

declaration does

not state that Ali invented X, and there is also no inventor's oath or declaration

under

37 CFR

1.63

of record to establish that Ali invented X. Thus, although

Ali told Ming about X, it is not clearly established on the record that Al invented

X. In order to establish that the exception under

35 U.S.C.

102(b)(2)(A)

applies and overcome the rejection, it is

necessary to establish that Ali invented X. Acme's attorney could do that by

submitting either a new declaration under

37 CFR 1.130(a)

which states that

Ali invented X or an inventor's oath or declaration under

37 CFR 1.63

signed by Ali.

Note that, in this example, determining the grace

period is not needed because the grace period is only relevant to potential prior art

as of a public availability date. In other words, the grace period is only relevant

when there is potential prior art under

35 U.S.C. 102(a)(1)

. In this

example, Ming's PGPub was not publicly available until after Acme Corp. filed the

application claiming X. Therefore, Ming’s PGPub was not prior art under

35

U.S.C

riod is not needed because the grace period is only relevant to potential prior art

as of a public availability date. In other words, the grace period is only relevant

when there is potential prior art under

35 U.S.C. 102(a)(1)

. In this

example, Ming's PGPub was not publicly available until after Acme Corp. filed the

application claiming X. Therefore, Ming’s PGPub was not prior art under

35

U.S.C. 102(a)(1)

and no exceptions involving the grace period

can possibly apply.

Example 4

Similar to Example 3, on March 16, 2021, an attorney

for Acme Corp. files a U.S. patent application claiming subject matter X. In contrast

to Example 3, an inventor's oath or declaration under

37 CFR 1.63

signed by Ali is with the application. The examiner finds a U.S. patent to Gopal that

issued on November 10, 2020 and discloses but does not claim subject matter X.

Gopal’s patent is potential prior art under

35 U.S.C.

102(a)(1)

because the issue date of Gopal’s patent is before

Acme's filing date and falls within the grace period. Accordingly, it is possible for

an exception under

35 U.S.C. 102(b)(1)(A)

to apply.

In addition, the effectively filed date of Gopal’s application is also before Acme's

filing date, so Gopal’s patent is potential prior art under

35 U.S.C.

102(a)(2)

as well.

Similar to example 2, it is appropriate for the

examiner to reject the claims to X as anticipated under both sections of

35

U.S.C. 102(a)

because the reference is a U.S. patent document

having a public availability date (in this case, an issue date) that is within the

grace period. The examiner should be aware that it is possible for the applicant to

invoke a prior art exception under

35 U.S.C. 102(b)(1)(A)

and show

that Gopal’s patent is not prior art under

35 U.S.C.

102(a)(1)

but Gopal’s patent still remains available as prior

art under

35 U.S.C. 102(a)(2)

. Therefore, the examiner should make

anticipation rejections under both

35 U.S.C. 102(a)(1)

and

35

U.S.C. 102(a)(2)

in accordance with compact prosecution

guidance

le for the applicant to

invoke a prior art exception under

35 U.S.C. 102(b)(1)(A)

and show

that Gopal’s patent is not prior art under

35 U.S.C.

102(a)(1)

but Gopal’s patent still remains available as prior

art under

35 U.S.C. 102(a)(2)

. Therefore, the examiner should make

anticipation rejections under both

35 U.S.C. 102(a)(1)

and

35

U.S.C. 102(a)(2)

in accordance with compact prosecution

guidance. At the time of the rejection, the examiner has no information about Ali's

interaction with Gopal.

In reply to the Office action, Acme's attorney files

a

37 CFR

1.130(a)

declaration signed by Gopal averring that Ali told him

about subject matter X as disclosed in Gopal’s patent. In the reply, Acme's attorney

also calls the examiner's attention to the fact that an inventor's oath or

declaration signed by Ali is already of record. Note that this example is similar to

example 3, but here Gopal signs the

37 CFR 1.130(a)

declaration

rather than Ali.

The examiner should withdraw the rejections under

both

35

U.S.C. 102(a)(1)

and

102(a)(2)

based on the Gopal patent because the evidence of

record establishes that the disclosure of X in Gopal’s patent is attributable to Ali.

In other words, there is evidence of record that Ali invented X and Gopal’s

disclosure originated with Ali. In view of Gopal’s

37 CFR 1.130(a)

declaration, it is clear that Gopal did not invent X because the record shows that

Gopal learned about it from Ali. Furthermore, there is an inventor's oath or

declaration under

37 CFR 1.63

, signed by Ali, of

record in the application file. The above evidence shows that Ali is an inventor of

X.

Note that, in this example, the fact that Gopal’s

patent did not claim X eliminates the possibility of derivation. If Gopal’s patent

did claim X, then derivation issues may be present. The PTAB will consider

instituting a derivation proceeding when a patent applicant submits a petition under

37 CFR

42.402

alleging derivation by an earlier applicant or

patentee.