# MPEP § 716.10: Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S716.10

## Section

- **Citation:** MPEP § 716.10
- **Heading:** Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103
- **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 § 716.10

## 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
. “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 If successful, the activity or the reference is no
longer applicable.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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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S716.10. Check the current official text before relying on it. Not legal advice.