Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103

[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

. “Derivation” or "derived" as used in the discussion

below is in the context of pre-AIA law. “Derivation proceedings” as created in the

AIA are discussed in

MPEP § 2310

et seq.]

Under certain circumstances an affidavit or declaration may be submitted

which attempts to attribute an activity, a reference or part of a reference to the

inventor or at least one joint inventor to overcome a rejection based on

pre-AIA 35 U.S.C.

102

prior art. If successful, the activity or the reference is no

longer applicable. When subject matter, disclosed in a patent or patent application

(reference) naming an inventive entity including inventor S and another joint inventor

is claimed in a later application naming inventor S without the joint inventor, the

joint patent or joint patent application publication is a valid reference available as

prior art under

pre-AIA 35 U.S.C. 102(a), (e), or (f)

until overcome by an

affidavit or declaration under

37 CFR 1.131(a)

showing prior

invention (see

MPEP §

715

) or by an affidavit or declaration under

37 CFR 1.132

. An

unequivocal declaration under

37 CFR 1.132

by S that he/she

conceived or invented the subject matter that was disclosed but not claimed in the

patent or patent application publication and relied on in the rejection has been

sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA

1982)(declaration corroborated by attached drawing)

or declaration under

37 CFR 1.132

. An

unequivocal declaration under

37 CFR 1.132

by S that he/she

conceived or invented the subject matter that was disclosed but not claimed in the

patent or patent application publication and relied on in the rejection has been

sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA

1982)(declaration corroborated by attached drawing). Depending on the situation,

documentation created contemporaneously with the conception/invention and/or

declarations/affidavits by the other inventor(s) named in the reference may be used to

corroborate inventorship. See

EmeraChem Holdings, LLC v. Volkswagen Grp. of

Am., Inc.,

859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). Where the

reference is a U.S. patent or patent application publication which includes a claim

reciting the subject matter relied upon in a rejection and that subject matter

anticipates or would render obvious the subject matter of a claim in the application

under examination, a declaration under

37 CFR 1.132

must also explain the

presence of the additional inventor in the reference (e.g., the disclosure in claim 1 of

the reference is relied upon to reject the claims; the affidavit or declaration explains

that S is the sole inventor of claim 1, and the additional inventor and S are joint

inventors of claim 2 of the reference). Testimony or disclaimer by the other inventor

named in the reference is usually not required but, if submitted, should be considered

by the examiner.

Note that an affidavit or declaration under

37 CFR

1.131(a)

cannot be used to overcome a rejection based on a U.S.

patent or U.S. patent application publication naming a different inventive entity which

claims interfering subject matter as defined in

37 CFR 41.203(a)

. See

MPEP §

715.05

.

For applications subject to current

35 U.S.C.

102

, see

MPEP §§ 717

,

2153

and

2154

nsidered

by the examiner.

Note that an affidavit or declaration under

37 CFR

1.131(a)

cannot be used to overcome a rejection based on a U.S.

patent or U.S. patent application publication naming a different inventive entity which

claims interfering subject matter as defined in

37 CFR 41.203(a)

. See

MPEP §

715.05

.

For applications subject to current

35 U.S.C.

102

, see

MPEP §§ 717

,

2153

and

2154

.

Where there is a published article identifying the authorship

(

MPEP §

715.01(c)

) or a patent or an application publication

identifying the inventorship (

MPEP § 715.01(a)

) that discloses

subject matter being claimed in an application undergoing examination, the designation

of authorship or inventorship does not raise a presumption of inventorship with respect

to the subject matter disclosed in the article or with respect to the subject matter

disclosed but not claimed in the patent or published application so as to justify a

rejection under

pre-AIA 35 U.S.C. 102(f)

.

However, it is incumbent upon the applicant in the application, in

response to an inquiry regarding the appropriate inventorship under

pre-AIA 35 U.S.C.

102(f)

or to rebut a rejection under

pre-AIA 35 U.S.C. 102(a) or

(e)

, to provide a satisfactory showing by way of affidavit or

declaration under

37

CFR 1.132

that the inventorship of the application is correct in

that the reference discloses subject matter derived from the inventor or at least one

joint inventor of the application undergoing examination rather than invented by the

author, patentee, or applicant of the published application notwithstanding the

authorship of the article or the inventorship of the patent or published application.

In re Katz,

687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982)

(inquiry is appropriate to clarify any ambiguity created by an article regarding

inventorship and it is then incumbent upon the applicant to provide “a satisfactory

showing that would lead to a reasonable conclusion that [inventor or at least one joint

inventor] is the ..

article or the inventorship of the patent or published application.

In re Katz,

687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982)

(inquiry is appropriate to clarify any ambiguity created by an article regarding

inventorship and it is then incumbent upon the applicant to provide “a satisfactory

showing that would lead to a reasonable conclusion that [inventor or at least one joint

inventor] is the ... inventor” of the subject matter disclosed in the article and

claimed in the application).

An uncontradicted “unequivocal statement” from an inventor or joint

inventor regarding the subject matter disclosed in an article, patent, or published

application has been accepted as establishing inventorship.

In re

DeBaun,

687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)(declaration

corroborated by attached drawing). Depending on the situation, documentation created

contemporaneously with the conception/invention and/or declarations/affidavits by the

other inventor(s) named in the reference may be used to corroborate inventorship. See

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

859 F.3d

1341, 123 USPQ2d 1146 (Fed. Cir. 2017). When additional documentary evidence contradicts

statements made by the inventor or at least one joint inventor with respect to

inventorship, it may be appropriate to maintain the rejection(s).

Ex parte

Kroger,

219 USPQ 370 (Bd. App. 1982) (a rejection under

pre-AIA 35 U.S.C.

102(f)

was affirmed notwithstanding declarations by the alleged

actual inventors as to their inventorship in view of a nonapplicant author submitting a

letter declaring the author’s inventorship);

In re Carreira,

532 F.2d

1356, 189 USPQ 461 (CCPA 1976) (disclaiming declarations from patentees were directed at

the generic invention and not at the claimed species, hence no need to consider

derivation of the subject matter)

ithstanding declarations by the alleged

actual inventors as to their inventorship in view of a nonapplicant author submitting a

letter declaring the author’s inventorship);

In re Carreira,

532 F.2d

1356, 189 USPQ 461 (CCPA 1976) (disclaiming declarations from patentees were directed at

the generic invention and not at the claimed species, hence no need to consider

derivation of the subject matter).

A successful

37 CFR 1.132

affidavit or

declaration establishing derivation by the author, patentee, or applicant of the

published application of a first reference does not enable an applicant to step into the

shoes of that author, patentee, or applicant of the published application in regard to

its date of publication so as to defeat a later second reference.

In re

Costello,

717 F.2d 1346, 1350, 219 USPQ 389, 392 (Fed. Cir. 1983).

Affidavits or declarations of attribution for applications

subject to

pre-AIA 35

U.S.C. 102

are affidavits or declarations under

37 CFR 1.132

because these are not otherwise provided for in the rules of practice. 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

37 CFR 1.132

.

EXAMPLES

The following examples demonstrate the application of an attribution

affidavit or declaration.

Example 1

During the search the examiner finds a reference fully describing

the claimed invention. The authorship or inventive entity of the reference is the

same as the inventive entity of the application and the reference was published or

patented less than one year prior to the filing date of the application

lowing examples demonstrate the application of an attribution

affidavit or declaration.

Example 1

During the search the examiner finds a reference fully describing

the claimed invention. The authorship or inventive entity of the reference is the

same as the inventive entity of the application and the reference was published or

patented less than one year prior to the filing date of the application. The

reference cannot be used against applicant because it does not satisfy the 1-year

time requirement of

pre-AIA 35 U.S.C. 102(b)

.

Example 2

Same facts as above, but the authorship or inventive entity of the

reference is different from the inventive entity of the application. Because the

inventive entities are different, the reference is prior art under

pre-AIA

35 U.S.C. 102(a) or (e)

.

In the situation described in Example 2, an affidavit under

37 CFR

1.132

may be submitted to show that the relevant portions of

the reference originated with or were obtained from the inventor or at least one

joint inventor named in the application undergoing examination. Thus the affidavit

attempts to convert the fact situation from that described in Example 2 to the

situation described in Example 1.

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