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Question:
List two types of individuals that affidavits or declarations filed under 37 C.F.R. 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 102 or 103 can be made by.
Answer:
Affidavits or declarations filed under 37 C.F.R. 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 102 or 103 must be made by either:
- (A) The entire inventive entity (i.e., the inventor) of the subject matter claimed.
- (B) Less than all named joint inventors of an application if it is shown by affidavit or declaration that less than all named joint inventors of an application invented the subject matter of the claim or claims under rejection. For example, one of two joint inventors is accepted where it is shown that one of the joint inventors is the sole inventor of the claim or claims under rejection.
- (C) For affidavits and declarations submitted in an application filed before September 16, 2012, a joint inventor or assignee under pre-AIA 37 C.F.R. 1.47 if a petition under pre-AIA 37 C.F.R. 1.47 was granted or the application was accepted under pre-AIA 37 C.F.R. 1.42 or 1.43.
- (D) For affidavits and declarations in applications filed before September 16, 2012, the legal representative of a deceased, insane or otherwise legally incapacitated sole inventor, or joint inventor when item (b) above applies, under pre-AIA 37 C.F.R. 1.42 or 1.43.
- (E) For affidavits and declarations submitted in applications filed on or after September 16, 2012, the party qualified under 37 C.F.R. 1.42 or 1.46.
- (F) The assignee or other party in interest when it is not possible to produce the affidavit or declaration of the sole inventor, or joint inventor when item (B) above applies.
- (G) The owner of the patent under reexamination.
Chapter Details:
The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.
The answer is from the 9th Edition, Revision 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 715.04 of the MPEP. The following is a brief summary of section 715.04.
715.04 Who May Make Affidavit or Declaration Under 37 C.F.R. 1.131(a); Formal Requirements of Affidavits and Declarations
This section covers who may make the affidavit or declaration under 37 C.F.R. 1.131(a) and formal requirements of affidavits and declarations.