Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations

[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

. For a discussion of affidavits or declarations under

37 CFR

1.131(c)

, see

MPEP § 718

.]

I.

WHO MAY MAKE AFFIDAVIT OR DECLARATION

Affidavits or declarations filed under

37 CFR

1.131

to overcome a rejection under

pre-AIA 35 U.S.C.

102

or

103

must be made by either:

(A) The entire inventive entity (i.e., the inventor) of the subject

matter claimed.

(B) Less than all named joint inventors of an application if it is

shown by affidavit or declaration that less than all named joint inventors of

an application invented the subject matter of the claim or claims under

rejection. For example, one of two joint inventors is accepted where it is

shown that one of the joint inventors is the sole inventor of the claim or

claims under rejection.

(C) For affidavits and declarations submitted in an application

filed before September 16, 2012, a joint inventor or assignee under

pre-AIA 37 CFR 1.47

if a petition under

pre-AIA 37 CFR 1.47

was granted or the application was

accepted under

pre-AIA 37 CFR 1.42

or

1.43

.

(D) For affidavits and declarations in applications filed before

September 16, 2012, the legal representative of a deceased, insane or otherwise

legally incapacitated sole inventor, or joint inventor when item (b) above

applies, under

pre-AIA 37 CFR 1.42

or

1.43

.

(E) For affidavits and declarations submitted in

applications filed on or after September 16, 2012, the party qualified under

37 CFR

1.42

or

1.46

idavits and declarations in applications filed before

September 16, 2012, the legal representative of a deceased, insane or otherwise

legally incapacitated sole inventor, or joint inventor when item (b) above

applies, under

pre-AIA 37 CFR 1.42

or

1.43

.

(E) For affidavits and declarations submitted in

applications filed on or after September 16, 2012, the party qualified under

37 CFR

1.42

or

1.46

.

(F) The assignee or other party in interest when it

is not possible to produce the affidavit or declaration of the sole inventor,

or joint inventor when item (B) above applies.

Ex parte

Foster,

1903 C.D. 213, 105 OG 261 (Comm’r Pat. 1903).

(G) The owner of the patent under reexamination.

For affidavits and declarations submitted in applications filed

before September 16, 2012, where one or more of the named joint inventors of the

subject matter of the rejected claim(s) (who had originally signed the oath or

declaration for patent application under

37 CFR 1.63

) is thereafter

unavailable to sign an affidavit or declaration under

37 CFR

1.131(a)

, the affidavit or declaration under

37 CFR

1.131(a)

may be signed by the remaining joint inventors

provided a petition under

37 CFR 1.183

requesting waiver of

the signature of the unavailable joint inventor is submitted with the affidavit or

declaration under

37 CFR 1.131(a)

. Proof that the

non-signing joint inventor is unavailable or cannot be found (similar to the proof

required for a petition under

pre-AIA 37 CFR 1.47

) must be

submitted with the petition under

37 CFR 1.183

(see

MPEP §

409.03(d)

). Petitions under

37 CFR 1.183

are decided by the Office of Petitions (see

MPEP § 1002.02(b)

).

II.

FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS

An affidavit is a statement in writing made under oath before a

notary public, magistrate, or officer authorized to administer oaths. See

MPEP §

602

et seq.

for additional information regarding formal requirements

of affidavits.

37 CFR

1.68

permits a declaration to be used instead of an affidavit

e Office of Petitions (see

MPEP § 1002.02(b)

).

II.

FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS

An affidavit is a statement in writing made under oath before a

notary public, magistrate, or officer authorized to administer oaths. See

MPEP §

602

et seq.

for additional information regarding formal requirements

of affidavits.

37 CFR

1.68

permits a declaration to be used instead of an affidavit.

The declaration must include an acknowledgment by the declarant that willful false

statements and the like are punishable by fine or imprisonment, or both (18 U.S.C.

1001) and may jeopardize the validity of the application or any patent issuing

thereon. The declarant must set forth in the body of the declaration that all

statements made of the declarant’s own knowledge are true and that all statements

made on information and belief are believed to be true.