Author: Stephanie M. Sanders
Editor: Maureen D. Queler
This chart illustrates how to use declarations under 37 C.F.R. § 1.130 to invoke an exception to 35 U.S.C. § 102(a) and have a reference disqualified as prior art. This information only applies to an America Invents Act (AIA) patent application, i.e., an application having an effective filing date on or after March 16, 2013.
35 U.S.C. § 102(a) describes prior art in the AIA First-Inventor-To-File regime. 35 U.S.C. § 102(b) provides exceptions to the rules set forth in 35 U.S.C. § 102(a). One way for an applicant to invoke the 102(b) exceptions and remove a reference as prior art is to provide a declaration under 37 C.F.R. § 1.130.
There are two types of § 1.130 declarations:
- Declaration of Attribution under 1.130(a) showing that the reference originated with one or more members of the inventive entity, and
- Declaration of Prior Public Disclosure under 1.130(b) showing that the reference was preceded by an inventor-originated disclosure of the same subject matter.
A declaration of attribution under 1.130(a) may be used to disqualify a reference as prior art in a rejection under 102(b)(1)(A) or 102(b)(2)(A), while a 1.130(b) declaration may be used to invoke the exceptions to 102(b)(1)(B) and 102(b)(2)(B). An easy way to remember which type of declaration may be used to traverse a particular rejection, is to remember that a 1.130(a) declaration may be used to invoke the (A) exceptions and a 1.130(b) declaration may be used to invoke the (B) exceptions.
Under 37 C.F.R. § 1.77(b)(6), an applicant may make an affirmative statement regarding prior disclosures by the inventive entity in order to preemptively invoke a 102(b) exception and disqualify a reference before an Office Action is issued. The substantive requirements for 1.130 declarations also apply to making a 1.77(b)(6) statement.
The slidedeck and video recording of the fall 2014 USPTO AIA Roadshow includes a number of example scenarios related to using 1.130 declarations during prosecution.
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