37 CFR 1.130 — Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act
Ninth Edition, Revision 01.2024
- (a) Affidavit or declaration of attribution. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
- (b)
Affidavit or declaration of prior public
disclosure.
When any claim of an application or a
patent under reexamination is rejected, the applicant or patent
owner may submit an appropriate affidavit or declaration to
disqualify a disclosure as prior art by establishing that the
subject matter disclosed had, before such disclosure was made or
before such subject matter was effectively filed, been publicly
disclosed by the inventor or a joint inventor or another who
obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor. An affidavit or declaration under
this paragraph must identify the subject matter publicly disclosed
and provide the date such subject matter was publicly disclosed by
the inventor or a joint inventor or another who obtained the
subject matter disclosed directly or indirectly from the inventor
or a joint inventor.
- (1) If the subject matter publicly disclosed on that date was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication.
- (2) If the subject matter publicly disclosed on that date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on that date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
- (c) When this section is not available. The provisions of this section are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. The provisions of this section may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and 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, in which case an applicant or a patent owner may file a petition for a derivation proceeding pursuant to § 42.401 et seq. of this title.
- (d)
Applications and patents to which this section is
applicable.
The provisions of this section apply to
any application for patent, and to any patent issuing thereon, that
contains, or contained at any time:
- (1) A claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013; or
- (2) A specific reference under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to any patent or application that contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013.
[Added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; heading and para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (b) removed and reserved, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; para. (d) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
Cited authority
- 37 CFR 42.401 Definitions
- 37 CFR 1.109 Effective filing date of a claimed invention under the Leahy-Smith America Invents Act
- 35 U.S.C. 120 Benefit of earlier filing date in the United States
- 35 U.S.C. 121 Divisional applications
- 35 U.S.C. 365 Right of priority; benefit of the filing date of a prior application
- 35 U.S.C. 386 Right of priority
Cited by
- 1004 Actions Which Require the Attention of a Primary Examiner
- 1005 Exceptions to Partial Signatory Authority
- 1207 Examiner’s Answer
- 1207.03(c) Appellant's Reply to New Grounds of Rejection
- 1207.05 Substitute Examiner’s Answer
- 1213 Decision by Board
- 1214.01 Procedure Following New Ground of Rejection by Board
- 1504.02 Novelty
- 1504.03 Nonobviousness
- 201.06(c) 37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure
- 201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice
- 2120 Rejection on Prior Art
- 2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103
- 2141.01 Scope and Content of the Prior Art
- 2145 Consideration of Applicant’s Rebuttal Arguments and Evidence
- 2152.06 Overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) Rejection
- 2152.07 Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 102
- 2153.01(a) Grace Period Inventor-Originated Disclosure Exception
- 2153.02 Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(B) to AIA 35 U.S.C. 102(a)(1) (Inventor-Originated Prior Public Disclosure Exception)
- 2154.02(a) Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Disclosure Exception)
- 2154.02(b) Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Prior Public Disclosure Exception)
- 2155 Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections
- 2155.01 Showing That the Disclosure Was Made by the Inventor or a Joint Inventor
- 2155.02 Showing That the Subject Matter Disclosed Had Been Previously Publicly Disclosed by the Inventor or a Joint Inventor
- 2155.03 Showing That the Disclosure was Made, or That Subject Matter had Been Previously Publicly Disclosed, by Another Who Obtained the Subject Matter Disclosed Directly or Indirectly From the Inventor or a Joint Inventor
- 2155.04 Enablement
- 2155.05 Who May File an Affidavit or Declaration Under 37 CFR 1.130
- 2155.06 Situations in Which an Affidavit or Declaration Is Not Available
- 2157 Improper Naming of Inventors
- 2158.01 Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 103
- 2275 Examiner’s Answer
- 2304.02(c) Explaining Priority
- 410 Representations to the U.S. Patent and Trademark Office
- 715 Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a)
- 715.01 37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits
- 715.01(a) Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor
- 715.01(b) Reference and Application Have Common Assignee
- 715.01(c) Reference Is Publication of Inventor’s Own Invention
- 715.01(d) Activities Applied Against the Claims
- 715.02 How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims
- 715.03 Genus-Species, Practice Relative to Cases Where Predictability Is in Question
- 715.04 Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations
- 715.05 U.S. Patent or Application Publication Claiming Same Invention
- 715.07 Facts and Documentary Evidence
- 715.07(a) Diligence
- 715.07(b) Interference Testimony Sometimes Used
- 715.07(c) Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country
- 715.10 Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode
- 716.10 Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103
- 717 Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2)
- 717.01 Affidavit or Declaration Under 37 CFR 1.130
- 717.01(a) Declarations or Affidavits under 37 CFR 1.130(a) – Attribution
- 717.01(a)(1) Evaluation of Declarations or Affidavits under 37 CFR 1.130(a)
- 717.01(b) Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure
- 717.01(b)(1) Evaluation of Declarations or Affidavits under 37 CFR 1.130(b)
- 717.01(b)(2) Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated Prior Public Disclosure
- 717.01(c) Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations
- 717.01(d) U.S. Patent or Application Publication Claiming Same Invention
- 717.01(e) Passed Upon (or Decided by) by Primary Examiner
- 717.01(f) Seasonable (or Timely) Presentation
- 717.02(d) Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)
- 718 Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c)
- 724.03 Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02
- 804.03 Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement
- 904.03 Conducting the Search
- 37 CFR 1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art
- 37 CFR 41.39 Examiner’s answer
- 37 CFR 41.50 Decisions and other actions by the Board
- 37 CFR 41.67 Appellant’s brief
- 37 CFR 41.68 Respondent’s brief