# MPEP § 715.07: Facts and Documentary Evidence

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S715.07

## Section

- **Citation:** MPEP § 715.07
- **Heading:** Facts and Documentary Evidence
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 0700 - Examination of Applications / MPEP § 715.07

## Text

[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.
GENERAL REQUIREMENTS
The essential thing to be shown under
37 CFR
1.131(a)
is priority of invention and this may be done by any
satisfactory evidence of the fact. FACTS, not conclusions, must be alleged. Evidence
in the form of exhibits may accompany the affidavit or declaration. Each exhibit
relied upon should be specifically referred to in the affidavit or declaration, in
terms of what it is relied upon to show. For example, the allegations of fact might
be supported by submitting as evidence one or more of the following:
(A) attached sketches;
(B) attached blueprints;
(C) attached photographs;
(D) attached reproductions of notebook entries;
(E) an accompanying model;
(F) attached supporting statements by witnesses, where verbal
disclosures are the evidence relied upon.
Ex parte
Ovshinsky
, 10 USPQ2d 1075 (Bd. Pat. App. & Inter. 1989);
(G) testimony given in an interference. Where interference
testimony is used, the applicant must point out which parts of the testimony
are being relied on; examiners cannot be expected to search the entire
interference record for the evidence;
(H) documents submitted under the Disclosure Document Program
(discontinued February 1, 2007) may be used as documentary evidence of
conception.
Exhibits and models must comply with the requirements of
37 CFR
1.91
to be entered into an application file. See also
MPEP §
715.07(d)
.
A general allegation that the invention was completed prior to the
date of the reference is not sufficient
e evidence;
(H) documents submitted under the Disclosure Document Program
(discontinued February 1, 2007) may be used as documentary evidence of
conception.
Exhibits and models must comply with the requirements of
37 CFR
1.91
to be entered into an application file. See also
MPEP §
715.07(d)
.
A general allegation that the invention was completed prior to the
date of the reference is not sufficient. Similarly, a declaration by the inventor to
the effect that their invention was conceived or reduced to practice prior to the
reference date, without a statement of facts demonstrating the correctness of this
conclusion, is insufficient to satisfy
37 CFR 1.131(a)
. “An inventor
cannot rely on uncorroborated testimony to establish a prior invention date.”
In re NTP, Inc.
, 654 F.3d 1279, 1291, 99 USPQ2d 1481, 1488
(Fed. Cir. 2011).
"When the issue of priority concerns the antedating
of a reference, the applicant is required to demonstrate, with sufficient
documentation, that the [inventor] was in possession of the later-claimed
invention before the effective date of the reference. Demonstration of such
priority requires documentary support, from which factual findings and inferences
are drawn, in application of the rules and law of conception, reduction to
practice, and diligence."
In re Steed
, 802 F.3d 1311, 1316,
116 USPQ2d 1760 (Fed. Cir. 2015).
37 CFR
1.131(b)
requires that original exhibits of drawings or
records, or photocopies thereof, accompany and form part of the affidavit or
declaration or their absence satisfactorily explained. In
Ex parte
Donovan,
1890 C.D. 109, 52 OG 309 (Comm’r Pat. 1890) the court
stated:
If the [inventor] made sketches he should so state, and produce
and describe them; if the sketches were made and lost, and their contents
remembered, they should be reproduced and furnished in place of the originals. The
same course should be pursued if the disclosure was by means of models
satisfactorily explained. In
Ex parte
Donovan,
1890 C.D. 109, 52 OG 309 (Comm’r Pat. 1890) the court
stated:
If the [inventor] made sketches he should so state, and produce
and describe them; if the sketches were made and lost, and their contents
remembered, they should be reproduced and furnished in place of the originals. The
same course should be pursued if the disclosure was by means of models. If neither
sketches nor models are relied upon, but it is claimed that verbal disclosures,
sufficiently clear to indicate definite conception of the invention, were made the
witness should state as nearly as possible the language used in imparting
knowledge of the invention to others.
When reviewing a
37 CFR 1.131(a)
affidavit or
declaration, the examiner must consider all of the evidence presented in its
entirety, including the affidavits or declarations and all accompanying exhibits,
records and “notes.” An accompanying exhibit need not support all claimed
limitations, provided that any missing limitation is supported by the declaration
itself.
Ex parte Ovshinsky,
10 USPQ2d 1075 (Bd. Pat. App. &
Inter. 1989).
The affidavit or declaration and exhibits must clearly explain which
facts or data applicant is relying on to show completion of the inventor's invention
prior to the particular date. Specifically, “[t]he burden of showing actual reduction
of practice is on the party seeking its benefit.”
In re Steed
, 802
F.3d 1311, 1317-18, 116 USPQ2d 1760 (Fed. Cir. 2015)(citing to
In re NTP,
Inc.
, 654 F.3d 1279, 1291, 99 USPQ2d 1481, 1488 (Fed. Cir. 2011)). Vague
and general statements in broad terms about what the exhibits describe along with a
general assertion that the exhibits describe a reduction to practice “amounts
essentially to mere pleading, unsupported by proof or a showing of facts” and, thus,
does not satisfy the requirements of
37 CFR 1.131(b)
.
In re
Borkowski,
505 F.2d 713, 184 USPQ 29 (CCPA 1974)
USPQ2d 1481, 1488 (Fed. Cir. 2011)). Vague
and general statements in broad terms about what the exhibits describe along with a
general assertion that the exhibits describe a reduction to practice “amounts
essentially to mere pleading, unsupported by proof or a showing of facts” and, thus,
does not satisfy the requirements of
37 CFR 1.131(b)
.
In re
Borkowski,
505 F.2d 713, 184 USPQ 29 (CCPA 1974). Applicant must give a
clear explanation of the exhibits pointing out exactly what facts are established and
relied on by applicant. 505 F.2d at 718-19, 184 USPQ at 33. See also
In re
Harry,
333 F.2d 920, 142 USPQ 164 (CCPA 1964) (Affidavit “asserts that
facts exist but does not tell what they are or when they occurred.”).
II.
ESTABLISHMENT OF DATES
If the dates of the exhibits have been removed or blocked off, the
matter of dates can be taken care of in the body of the oath or declaration.
When alleging that conception or a reduction to practice occurred
prior to the effective date of the reference, the dates in the oath or declaration
may be the actual dates or, if disclosure of the actual dates is not desired, the
declarant/affiant may merely allege that the acts referred to occurred prior to a
specified date. However, the actual dates of acts relied on to establish diligence
must be provided. See
MPEP § 715.07(a)
regarding the diligence requirement.
III.
THREE WAYS TO SHOW PRIOR INVENTION
The affidavit or declaration must state FACTS and produce such
documentary evidence and exhibits in support thereof as are available to show
conception and completion of invention in this country or in a NAFTA or WTO member
country (
MPEP
§ 715.07(c)
), at least the conception being at a date prior
to the effective date of the reference
iligence requirement.
III.
THREE WAYS TO SHOW PRIOR INVENTION
The affidavit or declaration must state FACTS and produce such
documentary evidence and exhibits in support thereof as are available to show
conception and completion of invention in this country or in a NAFTA or WTO member
country (
MPEP
§ 715.07(c)
), at least the conception being at a date prior
to the effective date of the reference. Where there has not been reduction to
practice prior to the date of the reference, diligence in the completion of the
invention from a time just prior to the date of the reference continuously up to the
date of an actual reduction to practice or up to the date of filing the application
(filing constitutes a constructive reduction to practice,
37 CFR
1.131
) must be shown.
As discussed above,
37 CFR 1.131(b)
provides three
ways in which an applicant can establish prior invention of the claimed subject
matter. The showing of facts must be sufficient to show:
(A) actual reduction to practice of the invention prior to the
effective date of the reference; or
(B) conception of the invention prior to the effective date of the
reference coupled with due diligence from prior to the reference date to a
subsequent actual reduction to practice; or
(C) conception of the invention prior to the effective date of the
reference coupled with due diligence from prior to the reference date to the
filing date of the application (constructive reduction to practice).
A conception of an invention, though evidenced by disclosure,
drawings, and even a model, is not a complete invention under the patent laws, and
confers no rights on an inventor, and has no effect on a subsequently granted patent
to another, UNLESS THE INVENTOR FOLLOWS IT WITH REASONABLE DILIGENCE BY SOME OTHER
ACT, such as an actual reduction to practice or filing an application for a patent.
Automatic Weighing Mach. Co. v. Pneumatic Scale Corp.,
166 F.2d
288, 1909 C.D. 498, 139 OG 991 (1st Cir. 1909)
invention under the patent laws, and
confers no rights on an inventor, and has no effect on a subsequently granted patent
to another, UNLESS THE INVENTOR FOLLOWS IT WITH REASONABLE DILIGENCE BY SOME OTHER
ACT, such as an actual reduction to practice or filing an application for a patent.
Automatic Weighing Mach. Co. v. Pneumatic Scale Corp.,
166 F.2d
288, 1909 C.D. 498, 139 OG 991 (1st Cir. 1909).
Conception is the mental part of the inventive act, but it must be
capable of proof, as by drawings, complete disclosure to another person, etc. In
Mergenthaler v. Scudder,
1897 C.D. 724, 81 OG 1417 (D.C. Cir.
1897), it was established that conception is more than a mere vague idea of how to
solve a problem; the means themselves and their interaction must be comprehended
also.
In general, proof of actual reduction to practice requires a showing
that the apparatus actually existed and worked for its intended purpose. However,
“there are some devices so simple that a mere construction of them is all that is
necessary to constitute reduction to practice.”
In re Asahi/America
Inc.,
68 F.3d 442, 37 USPQ2d 1204, 1206 (Fed. Cir. 1995) (citing
Newkirk v. Lulejian,
825 F.2d 1581, 3USPQ2d 1793 (Fed. Cir.
1987) and
Sachs v. Wadsworth,
48 F.2d 928, 929, 9 USPQ 252, 253
(CCPA 1931). The claimed restraint coupling was held to be so simple a device that
mere construction of it was sufficient to constitute reduction to practice.
Photographs, coupled with articles and a technical report describing the coupling in
detail were sufficient to show reduction to practice.).
The facts to be established under
37 CFR
1.131(a)
are similar to those to be proved in interference. The
difference lies in the way in which the evidence is presented. If applicant disagrees
with a holding that the facts are insufficient to overcome the rejection, the remedy
is by appeal from the continued rejection.
See
MPEP § 2138.04
through
§ 2138.06
for a
detailed discussion of the concepts of conception, reasonable diligence, and
reduction to practice
r to those to be proved in interference. The
difference lies in the way in which the evidence is presented. If applicant disagrees
with a holding that the facts are insufficient to overcome the rejection, the remedy
is by appeal from the continued rejection.
See
MPEP § 2138.04
through
§ 2138.06
for a
detailed discussion of the concepts of conception, reasonable diligence, and
reduction to practice.
For the most part, the terms “conception,” “reasonable diligence,”
and “reduction to practice” have the same meanings under
37 CFR
1.131(a)
as they have in interference proceedings. However, in
In re Eickmeyer,
602 F.2d 974, 202 USPQ 655 (CCPA 1979), the
court stated:
The purpose of filing a [37 CFR 1.]131 affidavit is not to
demonstrate prior invention,
per se
, but merely to antedate the
effective date of a reference. See
In re Moore,
58 CCPA 1340,
444 F.2d 572, 170 USPQ 260 (1971). Although the test for sufficiency of an
affidavit under Rule 131(b) parallels that for determining priority of invention
in an interference under
pre-AIA 35 U.S.C. 102(g)
, it
does not necessarily follow that Rule 131 practice is controlled by interference
law. To the contrary, “[t]he parallel to interference practice found in Rule
131(b) should be recognized as one of convenience rather than necessity.”
Id.
at 1353, 444 F.2d at 580, 170 USPQ at 267. Thus, “the
‘conception’ and ‘reduction to practice’ which must be established under the rule
need not be the same as what is required in the ‘interference’ sense of those
terms.”
Id.;
accord,
In re Borkowski,
505
F.2d 713, 718-19, 184 USPQ 29, 33 (CCPA 1974).
One difference is that in interference practice a reduction to
practice requires a proof that a utility was known, whereas under
37 CFR
1.131(a)
practice, proof of a utility must be shown only if the
reference discloses a utility.
In re Wilkinson,
304 F.2d 673,
134 USPQ 171 (CCPA 1962);
In re Moore,
444 F.2d 572, 170 USPQ 260
(CCPA 1971)
orkowski,
505
F.2d 713, 718-19, 184 USPQ 29, 33 (CCPA 1974).
One difference is that in interference practice a reduction to
practice requires a proof that a utility was known, whereas under
37 CFR
1.131(a)
practice, proof of a utility must be shown only if the
reference discloses a utility.
In re Wilkinson,
304 F.2d 673,
134 USPQ 171 (CCPA 1962);
In re Moore,
444 F.2d 572, 170 USPQ 260
(CCPA 1971). Where proof of utility is required, whether or not test results are
required to establish the utility of the subject matter in question depends on the
facts of each case. The ultimate issue is whether the evidence is such that one of
ordinary skill in the art would be satisfied to a reasonable certainty that the
subject matter necessary to antedate the reference possessed the alleged utility.
In re Blake,
358 F.2d 750, 149 USPQ 217 (CCPA 1966). Also, in
interference practice, conception, reasonable diligence, and reduction to practice
require corroboration, whereas averments made in a
37 CFR
1.131(a)
affidavit or declaration do not require corroboration;
an applicant may stand on their own affidavit or declaration if they so elect.
Ex parte Hook,
102 USPQ 130 (Bd. App. 1953).
Form paragraph
7.59.fti
or
7.63.fti
(both reproduced in
MPEP § 715
) may be
used where insufficient evidence is included in a
37 CFR
1.131(a)
affidavit.

## Nearby sections

- [MPEP § 701 Statutory Authority for Examination](https://www.frixlaw.com/law-library/statutes/MPEP_S701.md)
- [MPEP § 702 Requisites of the Application](https://www.frixlaw.com/law-library/statutes/MPEP_S702.md)
- [MPEP § 702.01 Obviously Informal Cases](https://www.frixlaw.com/law-library/statutes/MPEP_S702.01.md)
- [MPEP § 703 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S703.md)
- [MPEP § 704.01 Search](https://www.frixlaw.com/law-library/statutes/MPEP_S704.01.md)
- [MPEP § 704.10 Requirements for Information](https://www.frixlaw.com/law-library/statutes/MPEP_S704.10.md)
- [MPEP § 704.11 What Information May Be Required](https://www.frixlaw.com/law-library/statutes/MPEP_S704.11.md)
- [MPEP § 704.11(a) Examples of Information Reasonably Required](https://www.frixlaw.com/law-library/statutes/MPEP_S704.11(a).md)
- [MPEP § 704.11(b) When May a Requirement for Information Be Made](https://www.frixlaw.com/law-library/statutes/MPEP_S704.11(b).md)
- [MPEP § 704.12 Replies to a Requirement for Information](https://www.frixlaw.com/law-library/statutes/MPEP_S704.12.md)
- [MPEP § 704.12(a) Relationship of Requirement for Information to Duty of Disclosure](https://www.frixlaw.com/law-library/statutes/MPEP_S704.12(a).md)
- [MPEP § 704.12(b) What Constitutes a Complete Reply](https://www.frixlaw.com/law-library/statutes/MPEP_S704.12(b).md)
- [MPEP § 704.12(c) Treatment of an Incomplete Reply](https://www.frixlaw.com/law-library/statutes/MPEP_S704.12(c).md)
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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S715.07. Check the current official text before relying on it. Not legal advice.