# MPEP § 717.01(a)(1): Evaluation of Declarations or Affidavits under 37 CFR 1.130(a)

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S717.01(a)(1)

## Section

- **Citation:** MPEP § 717.01(a)(1)
- **Heading:** Evaluation of Declarations or Affidavits under 37 CFR 1.130(a)
- **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 § 717.01(a)(1)

## Text

[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.

## 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)
- [MPEP § 704.13 Time Periods for Reply](https://www.frixlaw.com/law-library/statutes/MPEP_S704.13.md)

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S717.01(a)(1). Check the current official text before relying on it. Not legal advice.