Podcast: Play in new window | Download
Subscribe: Apple Podcasts | RSS
Question:
List two conditions where the provisions of 37 C.F.R. 1.130 may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication naming another inventor.
Answer:
The provisions of 37 C.F.R. 1.130 may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication naming another inventor if:
- (1) 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
- (2) the affidavit or declaration contends that the inventor or a joint 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.
Chapter Details:
The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.
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 2155.06 of the MPEP. The following is a brief summary of section 2155.06.
2155.06 Situations in Which an Affidavit or Declaration Is Not Available
The provisions of 37 C.F.R. 1.130 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. This section outlines further situations in which an affidavit or declaration is not available.