715.01(a) Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor [R-08.2017]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
When subject matter disclosed in a patent or patent application publication (reference) naming an inventive entity including inventor S and another joint inventor is claimed in a later application naming inventor S without the joint inventor, the reference may be properly applied under pre-AIA 35 U.S.C. 102(a), (e), or (f) until overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132. An unequivocal declaration under 37 CFR 1.132 by S that he/she conceived or invented the subject matter that was disclosed but not claimed in the patent or application publication and relied on in the rejection has been sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982). However, if the affidavit or declaration under 37 CFR 1.132 is only a naked assertion of inventorship, which occurred long ago, by an inventor who has an interest at stake and it fails to provide any context, explanation or evidence to support that assertion, documentary evidence contemporaneous with the invention may be needed to provide some degree of corroboration. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017) (The court found the declaration submitted by inventor Campbell more than twenty years after the invention insufficient to establish that he and Mr. Guth (deceased) were the inventors of the subject matter disclosed in a patent naming Campbell, Guth, Danziger, and Padron as inventors.). Where the reference is a U.S. patent or patent application publication which includes a claim reciting the subject matter relied upon in a rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination, a declaration under 37 CFR 1.132 must also explain the presence of the additional inventor in the reference (e.g., the disclosure in claim 1 of the reference is relied upon to reject the claims; the affidavit or declaration explains that S is the sole inventor of claim 1, and the additional inventor and S are joint inventors of claim 2 of the reference). Testimony or disclaimer from the other inventor(s) named in the reference is usually not required but, if submitted, should be considered by the examiner.
Note that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming a different inventive entity which claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05. See MPEP § 716.10 for a discussion of the use of 37 CFR 1.132 affidavits or declarations to overcome rejections by establishing that the subject matter relied on in the patent or application publication was the invention of the inventor or at least one inventor named in the application under examination.
Although affidavits or declarations submitted for the purpose of establishing that the reference discloses inventor’s or at least one joint inventor’s invention are properly filed under 37 CFR 1.132, rather than 37 CFR 1.131(a), such affidavits submitted improperly under 37 CFR 1.131(a) will be considered as though they were filed under 37 CFR 1.132 to traverse a ground of rejection. In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969).