Evaluation of Declarations or Affidavits under 37 CFR 1.130(a)

[Editor Note: This MPEP section is

only applicable

to

applications subject to the first inventor to file provisions of the AIA. See

35 U.S.C. 100 (note)

and

MPEP §

2159

. For applications subject to

pre-AIA 35 U.S.C.

102

and

pre-AIA 35 U.S.C. 103

, see

MPEP §

716.10

for affidavits or declarations of attribution

under

37 CFR

1.132

.]

In making a submission under

37 CFR

1.130(a)

, the applicant or patent owner is attempting to

show that: (1) the disclosure was made by the inventor or a joint inventor; or (2)

the subject matter disclosed was obtained directly or indirectly from the inventor

or a joint inventor. In other words, the affidavits or declarations are seeking to

attribute an activity, a reference, or part of a reference to the inventor(s) to

show that the disclosure is not available as prior art under

35 U.S.C.

102(a)

. Such declarations or affidavits will be similar to

affidavits or declarations under

37 CFR 1.132

for application

subject to

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

or

102(e)

. See

MPEP §

716.10

and

In re Katz,

687 F.2d 450,

455, 215 USPQ 14, 18 (CCPA 1982). Affidavits or declarations of attribution for

applications subject to

pre-AIA 35 U.S.C. 102

remain

as affidavits or declarations under

37 CFR 1.132

. Thus, 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

1.132

.

In evaluating whether a declaration under

37 CFR

1.130(a)

is effective, Office personnel will consider the

following criteria:

(A) Whether the disclosure, which was applied in

the rejection and is addressed in the affidavit or declaration, is subject

to the exceptions of

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

or

102(b)(2)(A)

ion is

designated as an affidavit or declaration under

37 CFR

1.130

,

1.131

, or

1.132

.

In evaluating whether a declaration under

37 CFR

1.130(a)

is effective, Office personnel will consider the

following criteria:

(A) Whether the disclosure, which was applied in

the rejection and is addressed in the affidavit or declaration, is subject

to the exceptions of

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

or

102(b)(2)(A)

. The

provision of

37 CFR 1.130(a)

is not

available:

(1) If the disclosure was made (e.g.,

patented, described in a printed publication, or in public use, on

sale, or otherwise available to the public) more than one year before

the effective filing date of the claimed invention. See

MPEP § 2152.01

to

determine the effective filing date. For example, if a public

disclosure by the inventor or which originated with the inventor is

not within the grace period of

35 U.S.C.

102(b)(1)

, it would qualify as prior art under

35 U.S.C.

102(a)(1)

and could not be excepted under

35 U.S.C.

102(b)(1)

.

(2) When the disclosure that is applied in a

rejection is

(a) a U.S. patent or U.S. patent

application publication that

(b) claims an invention that is the same

or substantially the same as the applicant’s or patent owner’s

claimed invention, and

(c) the affidavit or declaration

contends that an inventor named in the U.S. patent or U.S.

patent application publication derived the claimed invention

from the inventor or a joint inventor named in the application

or patent.

See

MPEP §

717.01

, subsection II., for more information

on when declarations or affidavits pursuant to

37 CFR

1.130(a)

are not available.

(B) Whether the affidavit or declaration shows

sufficient facts, in weight and character, to establish that

(1) the disclosure was made by the inventor

or a joint inventor, or

(2) the subject matter disclosed was

obtained directly or indirectly from the inventor or a joint

inventor.

Some factors to consider are the

following:

eclarations or affidavits pursuant to

37 CFR

1.130(a)

are not available.

(B) Whether the affidavit or declaration shows

sufficient facts, in weight and character, to establish that

(1) the disclosure was made by the inventor

or a joint inventor, or

(2) the subject matter disclosed was

obtained directly or indirectly from the inventor or a joint

inventor.

Some factors to consider are the

following:

(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 he/she (or some

specific combination of named joint 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).

(2) A mere statement from the inventor or a

joint inventor, without any accompanying reasonable explanation, may

not be sufficient where there is evidence to the contrary, such as a

contrary statement from another named author that was filed in another

application on behalf of another party. See

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 non-applicant author submitting a

letter declaring the non-applicant author’s inventorship).

(C) Whether the formal requirements of a

declaration or affidavit are met. See

MPEP § 717.01(c)

(D) Whether the affidavit or declaration is timely

presented. See

MPEP § 717.01(f)

.

There is no requirement that the affidavit or

declaration demonstrate that the disclosure by the inventor, a joint inventor, or

another who obtained the subject matter disclosed directly or indirectly from an

inventor or a joint inventor was an

"enabling"

f a

declaration or affidavit are met. See

MPEP § 717.01(c)

(D) Whether the affidavit or declaration is timely

presented. See

MPEP § 717.01(f)

.

There is no requirement that the affidavit or

declaration demonstrate that the disclosure by the inventor, a joint inventor, or

another who obtained the subject matter disclosed directly or indirectly from an

inventor or a joint inventor was an

"enabling"

disclosure of the subject

matter within the meaning of

35 U.S.C. 112(a)

. See

MPEP § 2155.04

.

The evidence necessary to show that the disclosure

is by the inventor or a joint inventor or another who obtained the subject matter

disclosed from the inventor or a joint inventor requires case-by-case analysis,

depending upon whether it is apparent from the disclosure itself or the patent

application specification that the disclosure is an inventor originated

disclosure. See

MPEP §§ 2155.01

and

2155.03

for more information. This determination is

similar to the current process for disqualifying a publication as not being by

“others” discussed in

MPEP § 2132.01

, except that

35

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

requires only that the disclosure

originated from an inventor or a joint inventor.

37 CFR

1.130

does not contain a provision that

"[o]riginal exhibits of drawings or records, or photocopies

thereof, must accompany and form part of the affidavit or declaration or their

absence must be satisfactorily explained"

in contrast to

the requirement for such exhibits in

37 CFR 1.131(b)

, because in

some situations an affidavit or declaration under

37 CFR 1.130

does not necessarily need to be accompanied by such exhibits (e.g., a statement by

the inventor or a joint inventor may be sufficient). However, in situations where

additional evidence is required, such exhibits must accompany an affidavit or

declaration under

37 CFR 1.130

. In addition, an

affidavit or declaration under

37 CFR 1.130

must be

accompanied by any exhibits that the applicant or patent owner wishes to rely

upon

to be accompanied by such exhibits (e.g., a statement by

the inventor or a joint inventor may be sufficient). However, in situations where

additional evidence is required, such exhibits must accompany an affidavit or

declaration under

37 CFR 1.130

. In addition, an

affidavit or declaration under

37 CFR 1.130

must be

accompanied by any exhibits that the applicant or patent owner wishes to rely

upon. See

MPEP § 717.01(c)

for more

information on the formal requirements for a declaration or affidavit and any

attached exhibits.