MPEP § 717 — MPEP § 717
Current through: 2022-07-01

717-Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0700 

 Section 717 
 

 
 
 
 
 
 717 Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and
 (2) [R-07.2022]
 

 [Editor Note: This MPEP section is only applicable to applications
 subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100
 (note) and MPEP § 2159 . For applications subject
 to pre-AIA 35 U.S.C.
 102 and pre-AIA 35 U.S.C. 103 , see
 MPEP §
 715 et seq. for affidavits or declarations under
 37 CFR
 1.131(a) , MPEP § 718 for affidavits or
 declarations under 37 CFR 1.131(c) , and
 MPEP §
 716.10 for affidavits or declarations of attribution under
 37 CFR
 1.132 .] 

 35 U.S.C.
 102(b)(1) provides that a disclosure made one year or less before the
 effective filing date of a claimed invention shall not be prior art under 35 U.S.C.
 102(a)(1) with respect to the claimed invention if: (1) the
 disclosure was made by the inventor or joint inventor or by another who obtained the
 subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
 (2) the subject matter disclosed had, before such disclosure, been publicly disclosed by
 the inventor or a joint inventor or by another who obtained the subject matter disclosed
 directly or indirectly from the inventor or a joint inventor.
 

 35 U.S.C.
 102(b)(2)(A) and (B) provide that a disclosure shall not
 be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if: (1) The subject
 matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
 or (2) the subject matter disclosed had, 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.
 

 The Office has provided a mechanism in 37 CFR 1.130 for
 filing an affidavit or declaration to establish that a disclosure made no earlier than one
 year before the effective filing date of the claimed invention is not prior art under
 35 U.S.C.
 102(a) due to an exception in 35 U.S.C.
 102(b) . See MPEP § 717.01 et seq. for more information on declarations filed under
 37 CFR
 1.130 .
 

 Additionally, 35 U.S.C. 102(b)(2)(C) provides that a
 disclosure made in a U.S. patent, U.S. patent application publication, or WIPO published
 application shall not be prior art to a claimed invention under 35 U.S.C.
 102(a)(2) if, not later than the effective filing date of the claimed
 invention, the subject matter disclosed and the claimed invention were owned by the same
 person or subject to an obligation of assignment to the same person. This provision
 replaces the exception in pre-AIA 35 U.S.C. 103(c) that applied only in the context of an
 obviousness analysis under 35 U.S.C. 103 to prior art that was
 commonly owned at the time the claimed invention was made, and which qualified as prior art
 only under pre-AIA 35
 U.S.C. 102(e), (f), and/or (g) . Thus, the AIA provides that certain
 prior patents and published patent applications of co-workers and collaborators are not
 prior art either for purposes of determining novelty ( 35 U.S.C.
 102 ) or nonobviousness ( 35 U.S.C. 103 ). See
 MPEP §
 717.02 et seq. for more information on the prior art exception under
 35 U.S.C.
 102(b)(2)(C) .
 

 The AIA does not define the term
 
 "disclosure,"
 
 
 and 35 U.S.C.
 102(a) does not use the term
 
 "disclosure."
 
 
 35 U.S.C.
 102(b)(1) and 102(b)(2) , however, each state
 conditions under which a 
 "disclosure"
 
 
 that otherwise
 falls within 35
 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under
 35 U.S.C.
 102(a)(1) or 102(a)(2) . Thus, the Office is treating
 the term 
 "disclosure"
 
 
 as a generic expression
 intended to encompass the documents and activities enumerated in 35 U.S.C.
 102(a) (i.e., being patented, described in a printed publication, in
 public use, on sale, or otherwise available to the public, or being described in a U.S.
 patent, U.S. patent application publication, or WIPO published application). 
 

 For more information on the provisions of 35 U.S.C.
 102 in general, see MPEP §
 2150 et seq. For more information on the prior art exceptions under
 35 U.S.C.
 102(b)(1) , see MPEP § 2153 et seq. For more information on the prior art exceptions under
 35 U.S.C.
 102(b)(2) , see MPEP § 2154.02 et seq. 

 
 717.01 Affidavit or Declaration Under 37 CFR
 1.130 [R-01.2024]
 

 [Editor Note: This MPEP section is only applicable to applications
 subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100
 (note) and MPEP §
 2159 . For applications subject to pre-AIA 35 U.S.C.
 102 and pre-AIA 35 U.S.C. 103 , see
 MPEP §
 715 et seq. for affidavits or declarations under
 37 CFR
 1.131(a) , MPEP § 718 
 for affidavits or declarations under 37 CFR
 1.131(c) , and MPEP § 716.10 
 for affidavits or declarations of attribution under 37 CFR
 1.132 .] 

 
 37 CFR 1.130 Affidavit or declaration of attribution or prior public disclosure under the
 Leahy-Smith America Invents Act. 

 
 (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.
 

 
 

 
 *****

 

 37 CFR
 1.130 provides a mechanism for filing an affidavit or declaration
 to establish that a disclosure is not prior art in accordance with 35 U.S.C.
 102(b) . In other words, 37 CFR 1.130 , like 37 CFR 1.131 
 and 37 CFR
 1.132 , provides a mechanism for the submission of evidence to
 disqualify a disclosure as prior art or otherwise traverse a rejection. An applicant’s
 or patent owner’s compliance with 37 CFR 1.130 means that the
 applicant or patent owner is entitled to have the evidence considered in determining the
 patentability of the claim(s) at issue. It does not mean that the applicant or patent
 owner is entitled as a matter of right to have the rejection of, or objection to, the
 claim(s) withdrawn. See Changes To Implement the Patent Business Goals, 65 FR 54604,
 54640 (Sept. 8, 2000) (discussing procedural nature of 37 CFR 1.131 
 and 37 CFR
 1.132 ). 
 

 37 CFR
 1.130(a) provides that 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. 37 CFR
 1.130(a) pertains to the provisions of subparagraph (A) of
 35 U.S.C.
 102(b)(1) and 102(b)(2) . 
 

 37 CFR
 1.130(b) provides that 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. 37 CFR 1.130(b) 
 pertains to the provisions of subparagraph (B) of 35 U.S.C.
 102(b)(1) and 102(b)(2) . 
 

 37 CFR
 1.130(c) provides that the provisions of 37 CFR 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. A disclosure made more than one year
 before the effective filing date of the claimed invention is prior art under
 35 U.S.C.
 102(a)(1) and does not meet the requirements for exception under
 35 U.S.C.
 102(b)(1) . 
 

 37 CFR
 1.130(d) provides that the provisions of 37 CFR 1.130 apply
 to any application for patent, and to any patent issuing thereon, that is subject to
 35 U.S.C.
 102 and 103 .
 

 I. SITUATIONS WHERE 37 CFR 1.130 AFFIDAVITS OR DECLARATIONS CAN BE USED Affidavits or declarations under 37 CFR 1.130 
 may be used, for example:
 

 
 (A) When a claim is under a prior art rejection, to
 show a disclosure (e.g., reference, activity, or portion thereof) that is
 relied upon as prior art under 35 U.S.C. 102(a)(1) or
 (2) is eligible to be excepted under 35 U.S.C.
 102(b)(1) or (2) 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, subject to
 certain restrictions, as discussed below in subsection II.
 

 (B) When a claim is under a prior art rejection, to
 show a disclosure (e.g., reference, activity, or portion thereof) that is
 relied upon as prior art under 35 U.S.C. 102(a)(1) or
 (2) is eligible to be excepted under 35 U.S.C.
 102(b)(1) or (2) 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, subject to certain restrictions, as
 discussed below in subsection II.
 

 
 If effective, the showing that the disclosure is not
 prior art under 35 U.S.C. 102(a) will make the
 disclosure unavailable to be applied in a rejection under either 35 U.S.C.
 102(a) or 35 U.S.C. 103 . For example, an
 applicant or patent owner may overcome a 35 U.S.C. 103 rejection based on
 a combination of references by showing that the subject matter disclosed in only one
 of the references (or portion thereof) applied in the rejection is not prior art. The
 U.S. patents or U.S. patent application publications may continue to be applied under
 the judicially created doctrine of nonstatutory double patenting, or under statutory
 double patenting. They also may serve as evidence of the level of ordinary skill or
 evidence relevant to an enablement inquiry. 
 

 II. SITUATIONS WHERE 37 CFR 1.130 AFFIDAVITS OR DECLARATIONS ARE
 INAPPROPRIATE An affidavit or declaration under 37 CFR 1.130 is
 not appropriate in the following situations:
 

 
 (A) When the disclosure that is applied in a
 rejection is:
 
 (1) a U.S. patent or U.S. patent application
 publication that
 
 (a) claims an invention that is the same
 or substantially the same as the applicant’s or patent owner’s
 claimed invention, and
 

 (b) 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
 under examination. 
 

 
 

 
 In this case, an applicant or patent owner may
 file a petition for a derivation proceeding pursuant to 37 CFR
 42.401 et seq. 

 

 The provisions of 37 CFR
 1.130 , however, would be available if: 
 
 (1) The rejection is based upon a disclosure
 other than a U.S. patent or U.S. patent application publication (such as
 non-patent literature or a foreign patent document);
 

 (2) the rejection is based upon a U.S. patent or
 U.S. patent application and the patent or pending application did not
 claim an invention that is the same or substantially the same as the
 applicant’s claimed invention; or
 

 (3) the rejection is based upon a U.S. patent
 or U.S. patent application and while the patent or pending application
 does claim an invention that is the same or substantially the same as the
 applicant’s claimed invention, the affidavit or declaration under
 37
 CFR 1.130 does not contend 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 under examination (e.g., an affidavit or
 declaration under 37 CFR 1.130 would be
 available if instead of alleging derivation, the affidavit or declaration
 under 37 CFR 1.130 contends 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 by another who obtained the subject matter disclosed
 directly or indirectly from the inventor or a joint inventor).
 

 
 

 (B) If the rejection is based upon a disclosure
 made more than one year before the effective filing date of the claimed
 invention . A disclosure made more than one year before the effective
 filing date of the claimed invention is prior art under 35 U.S.C.
 102(a)(1) and may not be excepted under 35 U.S.C.
 102(b)(1) . Note that the provisions of 37 CFR
 1.130 are available to overcome a rejection under
 35 U.S.C. 102(a)(2) which is based on subject matter in
 an application or patent that was effectively filed, but not published or made
 publicly available, more than one year before the effective filing date of the
 claimed invention under examination, where the subject matter disclosed was
 obtained directly or indirectly from the inventor or a joint inventor. See
 also, MPEP § 2155.06 .
 

 III. SITUATIONS WHERE 37 CFR 1.130(a) AFFIDAVITS OR DECLARATIONS ARE NOT
 REQUIRED 
 (A) A declaration under 37 CFR
 1.130(a) is not required when a public disclosure,
 subject to the exceptions of 35 U.S.C. 102(b)(1)(A) , is
 by one or more joint inventor(s) or the entire inventive entity of the
 application under examination and does not name anyone else. For example, if an
 application names A, B, and C as the inventive entity, a journal publication
 names as authors A and B, and the publication date is one year or less before
 the effective filing date of the claimed invention, then the publication should
 not be applied in a prior art rejection because it is apparent that the
 disclosure is a grace period disclosure. Where a disclosure involves a patent
 document, a declaration under 37 CFR 1.130(a) is not
 required where the inventive entity of the patent document, subject to the
 exceptions of 35 U.S.C. 102(b)(1)(A) ,
 only includes one or more joint inventor(s) or the entire inventive entity of
 the application under examination. For example, if the application names A, B,
 and C as the inventive entity, the patent document names A and B as the
 inventive entity, and the public availability date of the patent document is
 one year or less before the effective filing date of the claimed invention
 under examination, then the patent document should not be applied in a prior
 art rejection under 35 U.S.C. 102(a)(1) because
 it is apparent that the patent document disclosure is a grace period
 disclosure. 
 

 (B) A declaration under 37 CFR
 1.130(a) is not required when the inventive entity of a
 U.S. patent, U.S. patent application publication, or a WIPO publication that
 designates the United States, subject to the exceptions of 35 U.S.C.
 102(b)(2)(A) , only includes one or more joint
 inventor(s), but not the entire inventive entity, of the application under
 examination and does not name anyone else. For example, if the application
 under examination names as the inventive entity A, B, and C, and the
 35 U.S.C. 102(a)(2) reference names A and B as the
 inventive entity, then the reference should not be applied in a prior art
 rejection because it is apparent that the subject matter disclosed was obtained
 from one or more members of the inventive entity, either directly or
 indirectly. The exceptions under 35 U.S.C. 102(b)(1)(A) and
 35 U.S.C. 102(b)(2)(A) both have to do with disclosures
 of material that originated with the inventor or a joint inventor. However, the
 35 U.S.C. 102(b)(2)(A) exception is not limited to the
 grace period.
 

 (C) A declaration under 37 CFR
 1.130(a) is not required if the specification of the
 application under examination identifies the disclosure or the subject matter
 disclosed that is subject to the exceptions of 35 U.S.C.
 102(b)(1)(A) or 35 U.S.C.
 102(b)(2)(A) as having been made by or having originated
 from one or more members of the inventive entity of the application under
 examination. See 37 CFR 1.77(b)(6) and
 MPEP § 2153.01(a) .
 

 IV. PRIOR ART DATE OF THE DISCLOSURE UNDER AIA 35 U.S.C. 102(a) For determining the prior art date of a disclosure
 under AIA 35 U.S.C. 102(a)(1) , see MPEP §
 2152.02(a) et seq. 

 For determining the prior art date of a disclosure
 under AIA 35 U.S.C. 102(a)(2) , see MPEP §
 2154.01 et seq. 

 V. FORM PARAGRAPHS ¶ 7.67.aia Affidavit or Declaration Under 37 CFR 1.130: Effective to
 Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)
 

 The [1] under 37 CFR 1.130 
 [2] filed on [3] is sufficient to overcome the rejection of claim
 [4] based on [5] . [6] 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia . 
 

 2. In bracket 1, insert either --affidavit-- or
 --declaration--.
 

 3. In bracket 2, insert either --(a)-- or
 --(b)--.
 

 4. In bracket 3, insert the filing date of the
 affidavit or declaration
 

 5. In bracket 4, insert the affected claim or
 claims.
 

 6. In bracket 5, insert the specific reference applied
 under 35 U.S.C. 102 or 103 that
 the affidavit or declaration has disqualified as prior art.
 

 7. In bracket 6, insert the explanation of how the
 affidavit/declaration provides evidence of reliance on one of the exception provisions
 of 35
 U.S.C. 102(b)(1) or 102(b)(2) .
 
 
 

 ¶ 7.68.aia Affidavit or Declaration Under 37 CFR 1.130: Ineffective to
 Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)
 

 The [1] under 37 CFR
 1.130 [2] filed [3] is insufficient to overcome
 the rejection of claim [4] based upon [5] as set forth in the last
 Office action because [6] : 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia 
 . 
 

 2. In bracket 1, insert either --affidavit-- or
 --declaration--.
 

 3. In bracket 2, insert either --(a)-- or --(b)--.

 4. In bracket 3, insert the filing date of the
 affidavit or declaration.
 

 5. In bracket 4, insert the affected claim or
 claims.
 

 6. In bracket 5, insert the rejection that has not been
 overcome, including statutory grounds.
 

 7. In bracket 6, insert the explanation of how the
 affidavit or declaration fails to provide evidence of reliance on one of the exception
 provisions of 35 U.S.C. 102(b)(1) or
 102(b)(2) .
 
 
 

 
 717.01(a) Declarations or Affidavits under 37 CFR 1.130(a)
 – Attribution [R-11.2013]
 

 [Editor Note: This MPEP section is only applicable to
 applications subject to the first inventor to file provisions of the AIA. See
 35
 U.S.C. 100 (note) and MPEP §
 2159 . For applications subject to pre-AIA 35 U.S.C.
 102 and pre-AIA 35 U.S.C. 103 , see
 MPEP §
 716.10 for affidavits or declarations of attribution
 under 37 CFR
 1.132 .] 

 37 CFR
 1.130(a) provides that 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. 37
 CFR 1.130(a) pertains to the provisions of subparagraph (A) of
 35
 U.S.C. 102(b)(1) ) and 102(b)(2) . 35 U.S.C. 102(b)(1)(A) provides
 that a disclosure made one year or less before the effective filing date of a claimed
 invention shall not be prior art to the claimed invention under 35 U.S.C.
 102(a)(1) if the disclosure was made by the inventor or joint
 inventor or by another who obtained the subject matter disclosed directly or
 indirectly from the inventor or a joint inventor, and 35 U.S.C.
 102(b)(2)(A) provides that a disclosure shall not be prior art
 to a claimed invention under 35 U.S.C. 102(a)(2) if the
 subject matter disclosed was obtained directly or indirectly from the inventor or a
 joint inventor.
 

 
 717.01(a)(1) Evaluation of Declarations or Affidavits
 under 37 CFR 1.130(a) [R-07.2022]
 

 [Editor Note: This MPEP section is only applicable to
 applications subject to the first inventor to file provisions of the AIA. See
 35 U.S.C. 100 (note) and MPEP §
 2159 . For applications subject to pre-AIA 35 U.S.C.
 102 and pre-AIA 35 U.S.C. 103 , see
 MPEP §
 716.10 for affidavits or declarations of attribution
 under 37 CFR
 1.132 .] 

 In making a submission under 37 CFR
 1.130(a) , the applicant or patent owner is attempting to
 show that: (1) the disclosure was made by the inventor or a joint inventor; or (2)
 the subject matter disclosed was obtained directly or indirectly from the inventor
 or a joint inventor. In other words, the affidavits or declarations are seeking to
 attribute an activity, a reference, or part of a reference to the inventor(s) to
 show that the disclosure is not available as prior art under 35 U.S.C.
 102(a) . Such declarations or affidavits will be similar to
 affidavits or declarations under 37 CFR 1.132 for application
 subject to pre-AIA 35 U.S.C. 102(a) or 102(e) . See
 MPEP §
 716.10 and In re Katz, 687 F.2d 450,
 455, 215 USPQ 14, 18 (CCPA 1982). Affidavits or declarations of attribution for
 applications subject to pre-AIA 35 U.S.C. 102 remain
 as affidavits or declarations under 37 CFR 1.132 . Thus, the Office
 will treat affidavits or declarations of attribution for applications subject to
 the current 35 U.S.C. 102 as affidavits or
 declarations under 37 CFR 1.130 , and affidavits
 or declarations of attribution for applications subject to pre-AIA 35 U.S.C.
 102 as affidavits or declarations under 37 CFR
 1.132 , regardless of whether the affidavit or declaration is
 designated as an affidavit or declaration under 37 CFR
 1.130 , 1.131 , or 1.132 . 
 

 In evaluating whether a declaration under
 37 CFR
 1.130(a) is effective, Office personnel will consider the
 following criteria:
 

 
 (A) Whether the disclosure, which was applied in
 the rejection and is addressed in the affidavit or declaration, is subject
 to the exceptions of 35 U.S.C. 102(b)(1)(A) 
 or 102(b)(2)(A) . The
 provision of 37 CFR 1.130(a) is not
 available:
 
 (1) If the disclosure was made (e.g.,
 patented, described in a printed publication, or in public use, on
 sale, or otherwise available to the public) more than one year before
 the effective filing date of the claimed invention. See
 MPEP § 2152.01 to
 determine the effective filing date. For example, if a public
 disclosure by the inventor or which originated with the inventor is
 not within the grace period of 35 U.S.C.
 102(b)(1) , it would qualify as prior art under
 35 U.S.C.
 102(a)(1) and could not be excepted under
 35 U.S.C.
 102(b)(1) .
 

 (2) When the disclosure that is applied in a
 rejection is
 
 (a) a U.S. patent or U.S. patent
 application publication that 
 

 (b) claims an invention that is the same
 or substantially the same as the applicant’s or patent owner’s
 claimed invention, and
 

 (c) 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.
 

 
 

 See MPEP §
 717.01 , subsection II., for more information
 on when declarations or affidavits pursuant to 37 CFR
 1.130(a) are not available.
 

 
 

 (B) Whether the affidavit or declaration shows
 sufficient facts, in weight and character, to establish that
 
 (1) the disclosure was made by the inventor
 or a joint inventor, or
 

 (2) the subject matter disclosed was
 obtained directly or indirectly from the inventor or a joint
 inventor.
 

 
 
 

 

 Some factors to consider are the
 following:
 

 
 (1) Where the authorship of the prior art
 disclosure includes the inventor or a joint inventor named in the
 application, an 
 "unequivocal"
 
 
 
 statement from the inventor or a joint inventor that he/she (or some
 specific combination of named joint inventors) invented the subject
 matter of the disclosure, accompanied by a reasonable explanation of
 the presence of additional authors, may be acceptable in the absence
 of evidence to the contrary. See In re DeBaun, 687
 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982). 
 

 (2) A mere statement from the inventor or a
 joint inventor, without any accompanying reasonable explanation, may
 not be sufficient where there is evidence to the contrary, such as a
 contrary statement from another named author that was filed in another
 application on behalf of another party. See Ex parte
 Kroger, 219 USPQ 370 (Bd. App. 1982) (affirming rejection
 notwithstanding declarations by the alleged actual inventors as to
 their inventorship in view of a non-applicant author submitting a
 letter declaring the non-applicant author’s inventorship). 
 

 
 

 (C) Whether the formal requirements of a
 declaration or affidavit are met. See MPEP § 717.01(c)
 

 (D) Whether the affidavit or declaration is timely
 presented. See MPEP § 717.01(f) .
 

 
 There is no requirement that the affidavit or
 declaration demonstrate that the disclosure by the inventor, a joint inventor, or
 another who obtained the subject matter disclosed directly or indirectly from an
 inventor or a joint inventor was an
 
 "enabling"
 
 
 disclosure of the subject
 matter within the meaning of 35 U.S.C. 112(a) . See
 MPEP § 2155.04 .
 

 The evidence necessary to show that the disclosure
 is by the inventor or a joint inventor or another who obtained the subject matter
 disclosed from the inventor or a joint inventor requires case-by-case analysis,
 depending upon whether it is apparent from the disclosure itself or the patent
 application specification that the disclosure is an inventor originated
 disclosure. See MPEP §§ 2155.01 and
 2155.03 for more information. This determination is
 similar to the current process for disqualifying a publication as not being by
 “others” discussed in MPEP § 2132.01 , except that
 35
 U.S.C. 102(b)(1)(A) requires only that the disclosure
 originated from an inventor or a joint inventor.
 

 37 CFR
 1.130 does not contain a provision that
 
 "[o]riginal exhibits of drawings or records, or photocopies
 thereof, must accompany and form part of the affidavit or declaration or their
 absence must be satisfactorily explained"
 
 
 in contrast to
 the requirement for such exhibits in 37 CFR 1.131(b) , because in
 some situations an affidavit or declaration under 37 CFR 1.130 
 does not necessarily need to be accompanied by such exhibits (e.g., a statement by
 the inventor or a joint inventor may be sufficient). However, in situations where
 additional evidence is required, such exhibits must accompany an affidavit or
 declaration under 37 CFR 1.130 . In addition, an
 affidavit or declaration under 37 CFR 1.130 must be
 accompanied by any exhibits that the applicant or patent owner wishes to rely
 upon. See MPEP § 717.01(c) for more
 information on the formal requirements for a declaration or affidavit and any
 attached exhibits.
 

 

 

 
 717.01(b) Declarations or Affidavits under 37 CFR
 1.130(b) – Prior Public Disclosure [R-11.2013]
 

 [Editor Note: This MPEP section is only applicable to
 applications subject to the first inventor to file provisions of the AIA. See
 35
 U.S.C. 100 (note) and MPEP §
 2159 . For applications subject to pre-AIA 35 U.S.C.
 102 and pre-AIA 35 U.S.C. 103 , see
 MPEP §
 716.10 for affidavits or declarations of attribution
 under 37 CFR
 1.132 .] 

 37 CFR
 1.130(b) provides that 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. 37 CFR
 1.130(b) pertains to the provisions of subparagraph (B) of
 35
 U.S.C. 102(b)(1) and 102(b)(2) . 35 U.S.C. 102(b)(1)(B) provides
 that a disclosure made one year or less before the effective filing date of a claimed
 invention shall not be prior art to the claimed invention under 35 U.S.C.
 102(a)(1) if the subject matter disclosed had, before such
 disclosure, 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. 35 U.S.C. 102(b)(2)(B) provides
 that a disclosure shall not be prior art to a claimed invention under
 35
 U.S.C. 102(a)(2) if the subject matter disclosed had, before
 such subject matter was effectively filed under 35 U.S.C.
 102(a)(2) , 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.
 

 
 717.01(b)(1) Evaluation of Declarations or Affidavits
 under 37 CFR 1.130(b) [R-10.2019]
 

 [Editor Note: This MPEP section is only applicable to
 applications subject to the first inventor to file provisions of the AIA. See
 35 U.S.C. 100 (note) and MPEP §
 2159 . For applications subject to pre-AIA 35 U.S.C.
 102 and pre-AIA 35 U.S.C. 103 , see
 MPEP §
 716.10 for affidavits or declarations of attribution
 under 37 CFR
 1.132 .] 

 In making a submission under 37 CFR
 1.130(b) , the applicant or patent owner is attempting to
 show that the subject matter disclosed had, before such disclosure was made or
 before such subject matter was effectively filed, been publicly disclosed by: (1)
 the inventor or a joint inventor; or (2) another who obtained the subject matter
 disclosed directly or indirectly from the inventor or a joint inventor. 
 

 In evaluating whether a declaration under
 37 CFR
 1.130(b) is effective to disqualify a disclosure on which
 the rejection is based, Office personnel will consider the following criteria:
 

 
 (A) Whether the disclosure, which was applied in
 the rejection and is addressed in the affidavit or declaration, is subject
 to the exceptions of 35 U.S.C. 102(b)(1)(B) 
 or 102(b)(2)(B) . The
 provision of 37 CFR 1.130(b) is not
 available:
 
 (1) If the disclosure was made (e.g.,
 patented, described in a printed publication, or in public use, on
 sale, or otherwise available to the public) more than one year before
 the effective filing date of the claimed invention. See
 MPEP § 2152.01 to
 determine the effective filing date. 
 

 (2) When the disclosure that is applied in a
 rejection is (1) a U.S. patent or U.S. patent application publication
 that (2) claims an invention that is the same or substantially the
 same as the applicant’s or patent owner’s claimed invention, and (3)
 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.
 

 
 

 See MPEP §
 717.01 , subsection II, for more information on
 when the exceptions of 35 U.S.C. 102(b)(1)(B) 
 or 102(b)(2)(B) are not
 available.
 

 
 In the situation where the previous public
 disclosure by the inventor (or which originated with the inventor) was not within
 the grace period but was effective to disqualify an intervening disclosure as
 prior art by invoking the exception of 35 U.S.C.
 102(b)(1)(B) or 102(b)(2)(B) , the previous public disclosure by, or
 originating with, the inventor would qualify as prior art under 35 U.S.C.
 102(a)(1) and could not be excepted under 35 U.S.C.
 102(b)(1)(A) .
 

 
 (B) Whether the affidavit or declaration shows
 sufficient facts, in weight and character, to establish that the subject
 matter disclosed had, before such disclosure was made or before such subject
 matter was effectively filed, been publicly disclosed by: (1) the inventor
 or a joint inventor; or (2) another who obtained the subject matter
 disclosed directly or indirectly from the inventor or a joint inventor. Some
 factors to consider are the following:
 
 (1) The declaration or affidavit must
 identify the subject matter publicly disclosed and provide the date of
 the public disclosure of such subject matter 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.
 

 (2) If the subject matter publicly disclosed
 on the earlier date by the inventor or a joint inventor, or by another
 who obtained the subject matter disclosed directly or indirectly from
 the inventor or a joint inventor, was in a printed publication, the
 affidavit or declaration must be accompanied by a copy of the printed
 publication. See 37 CFR
 1.130(b)(1) . The Office requires a copy to
 determine not only whether the inventor is entitled to disqualify the
 disclosure under 35 U.S.C. 102(b) ,
 but also because, if the rejection is based on a U.S. patent
 application publication or WIPO publication of an international
 application to another and such application is also pending before the
 Office, this prior disclosure may be prior art under 35 U.S.C.
 102(a) to the other earlier filed application,
 and this information may be useful in examination of both
 applications.
 

 (3) If the subject matter publicly disclosed
 on the earlier 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 the earlier 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.
 

 (4) If the subject matter publicly disclosed
 on the earlier date is the same as the subject matter in the
 disclosure applied in a prior art rejection. See MPEP §
 717.01(b)(2) .
 

 
 

 (C) Whether the formal requirements of a
 declaration or affidavit are met. See MPEP §
 717.01(c) .
 

 (D) Whether the affidavit or declaration is timely
 presented. See MPEP § 717.01(f) .
 

 
 There is no requirement under 35 U.S.C.
 102(b)(1)(B) that the mode of disclosure 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 (e.g., patenting, publication,
 public use, sale activity) be the same as the mode of disclosure of the
 intervening grace period disclosure. 
 

 There is also no requirement that the disclosure 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 be a
 verbatim or ipsissimis verbis disclosure of the intervening grace period
 disclosure. See In re Kao, 639 F.3d 1057, 1066, 98 USPQ2d 1799,
 1806 (Fed. Cir. 2011) (subject matter does not change as a function of how one
 chooses to describe it).
 

 There is no requirement that the affidavit or
 declaration demonstrate that the disclosure by the inventor, a joint inventor, or
 another who obtained the subject matter disclosed directly or indirectly from an
 inventor or a joint inventor was an enabling disclosure of the
 subject matter within the meaning of 35 U.S.C. 112(a) . See
 MPEP § 2155.04 .
 

 Any remaining portion of an intervening grace period
 disclosure that was not previously 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 is available as prior art under
 35
 U.S.C. 102(a)(1) . For example, if the inventor or a joint
 inventor had publicly disclosed elements A, B, and C, and a subsequent intervening
 grace period disclosure discloses elements A, B, C, and D, then only element D of
 the intervening grace period disclosure is available as prior art under
 35
 U.S.C. 102(a)(1) .
 

 The evidence necessary to show that the subject
 matter of a disclosure was previously disclosed by, or originated with, an
 inventor or a joint inventor requires case-by-case analysis. 
 

 37 CFR
 1.130 does not contain a provision that
 
 "[o]riginal exhibits of drawings or records, or photocopies
 thereof, must accompany and form part of the affidavit or declaration or their
 absence must be satisfactorily explained"
 
 
 in contrast to
 the requirement for such exhibits in 37 CFR 1.131(b) , because in
 some situations an affidavit or declaration under 37 CFR 1.130 
 does not necessarily need to be accompanied by such exhibits (e.g., a statement by
 the inventor or a joint inventor may be sufficient). However, in situations where
 additional evidence is required, such exhibits must accompany an affidavit or
 declaration under 37 CFR 1.130 . In addition, an
 affidavit or declaration under 37 CFR 1.130 must be
 accompanied by any exhibits that the applicant or patent owner wishes to rely
 upon. See MPEP § 717.01(d) for more
 information on the formal requirements for a declaration or affidavit and any
 attached exhibits.
 

 Finally, neither 35 U.S.C.
 102(b)(1)(B) nor 102(b)(2)(B) discusses 
 "the
 claimed invention"
 
 
 with respect to either the
 subject matter of the previous inventor-originated disclosure or the subject
 matter of the subsequent intervening disclosure. Any inquiry with respect to the
 claimed invention is whether or not the subject matter in the prior art disclosure
 being relied upon anticipates or renders obvious the claimed invention. A
 determination of whether the exception in 35 U.S.C.
 102(b)(1)(B) or 102(b)(2)(B) is applicable to subject matter in an
 intervening disclosure does not involve a comparison of the subject matter of the
 claimed invention to either the subject matter of the previous inventor-originated
 disclosure or to the subject matter of the subsequent intervening disclosure.
 

 

 
 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 [R-01.2024]
 

 [Editor Note: This MPEP section is only applicable to applications
 subject to the first inventor to file provisions of the AIA. See
 35 U.S.C. 100 (note) and MPEP §
 2159 . For applications subject to pre-AIA 35 U.S.C.
 102 and pre-AIA 35 U.S.C. 103 , see
 MPEP §
 716.10 for affidavits or declarations of attribution
 under 37 CFR
 1.132 .] 

 I. “SAME” IS NOT “OBVIOUS” The exceptions of 35 U.S.C.
 102(b)(1)(B) or 102(b)(2)(B) are only applicable when the subject matter
 of the intervening disclosure is the same as the subject matter of the earlier
 inventor-originated prior public disclosure (e.g., a disclosure by an inventor
 or joint inventor, or another who obtained directly or indirectly from the
 inventor or a joint inventor). In other words, even if an intervening
 disclosure by a third party is obvious over an inventor-originated prior public
 disclosure, it would NOT be a disclosure of the same subject matter and the
 exceptions under 35 U.S.C. 102(b)(1)(B) and
 102(b)(2)(B) do not apply. Any showing that the
 intervening disclosure is the same subject matter as earlier disclosed by the
 inventor, joint inventor, or another who obtained it directly or indirectly
 from the inventor(s) must be sufficient, in character and weight, to establish
 that the two disclosures are to the same subject matter. 
 

 II. ONLY A PORTION MAY BE EXCEPTED AS PRIOR ART Only the portion of the third party’s intervening
 disclosure that was previously in an inventor-originated disclosure (i.e.,
 the same subject matter ) is excepted as prior art under
 35 U.S.C. 102(a) . In other words, any portion of the
 third party’s intervening disclosure that was not part of the previous
 inventor-originated disclosure is still available for use in a prior art
 rejection. Therefore, examiners should be aware that a declaration under
 37 CFR
 1.130(b) may only disqualify a portion of a disclosure
 that was applied in a rejection in an Office action, and that other portions of
 the disclosure may still be available as prior art. For example, if the
 inventor or a joint inventor had publicly disclosed elements A, B, and C, and a
 subsequent intervening U.S. patent, U.S. patent application publication, or
 WIPO published application discloses elements A, B, C, and D, then element D of
 the intervening U.S. patent, U.S. patent application publication, or WIPO
 published application is still available as prior art under 35 U.S.C.
 102(a)(2) .
 

 III. MANNER OR MODES OF DISCLOSURES ARE NOT RELEVANT The manner of disclosure of subject matter
 referenced in an affidavit or declaration under 37 CFR
 1.130(b) is not critical. Just as the prior art provision
 of 35 U.S.C. 102(a)(2) encompasses any disclosure that
 renders a claimed invention available to the public, any
 manner of disclosure may be evidenced in an affidavit or declaration under
 37 CFR
 1.130(b) . That is, when using an affidavit or declaration
 under 37 CFR
 1.130(b) to disqualify an intervening disclosure as prior
 art based on a prior public disclosure by an inventor or a joint inventor, it
 is not necessary for the subject matter to have been disclosed in the same
 manner or using the same words. In other words, there is no requirement that
 the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis
 verbis disclosure of an intervening disclosure in order for the exception based
 on a previous public disclosure of subject matter by the inventor or a joint
 inventor to apply.
 

 There is also no requirement that the mode (e.g.,
 patenting, publication, public use, sale activity) of disclosure by an inventor
 or joint inventor be the same as the mode of disclosure of an intervening
 disclosure. For example, the inventor or a joint inventor may have publicly
 disclosed the subject matter in question via a slide presentation at a
 scientific meeting, while the intervening disclosure of the subject matter may
 have been made in a journal article. 
 

 A difference in the mode of disclosure or
 differences in the words used to describe the subject matter will not preclude
 the inventor from submitting an affidavit or declaration under
 37 CFR
 1.130(b) to disqualify the intervening disclosure as
 prior art.
 

 IV. SPECIES/GENUS, GENUS/SPECIES, AND SPECIES/SPECIES
 DISCLOSURES The exception of 35 U.S.C.
 102(b)(1)(B) or 35 U.S.C.
 102(b)(2)(B) applies to subject matter of the intervening
 disclosure that is simply a more general description of the subject matter
 previously 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. Specifically, if subject matter of an intervening
 disclosure is simply a more general description of the subject matter
 previously 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, the exception in 35 U.S.C.
 102(b)(1)(B) or 35 U.S.C.
 102(b)(2)(B) applies to such subject matter of the
 intervening disclosure. For example, if the inventor or a joint inventor had
 publicly disclosed a species, and a subsequent intervening disclosure discloses
 a genus (i.e., provides a more generic disclosure of the species), the
 disclosure of the genus in the intervening disclosure is not available as prior
 art under 35 U.S.C. 102(a)(1) or
 (a)(2) , as the case may be. Conversely, the exception
 may not apply to subject matter of the intervening disclosure that is more
 specific than the subject matter previously publicly disclosed by the inventor
 or a joint inventor or that is directed to a different species. For example, if
 the inventor or a joint inventor had publicly disclosed a genus, and a
 subsequent intervening disclosure discloses a species, the disclosure of the
 species in the subsequent intervening disclosure would be available as prior
 art under 35 U.S.C. 102(a)(2) (unless
 the prior disclosure of the genus would have caused PHOSITA to at once envision
 every species within that genus, such as a disclosure of “halogen” amounting to
 a disclosure of every element that is a halogen). Likewise, if the inventor or
 a joint inventor had publicly disclosed a species, and a subsequent intervening
 disclosure discloses an alternative species not also disclosed by the inventor
 or a joint inventor, the disclosure of the alternative species in the
 intervening disclosure would be available as prior art under 35 U.S.C.
 102(a)(1) or (a)(2) , as the case may be.
 

 

 

 
 717.01(c) Who May Make Affidavit or Declaration; Formal
 Requirements of Affidavits and Declarations [R-01.2024]
 

 [Editor Note: This MPEP section is only applicable to applications subject
 to the first inventor to file provisions of the AIA. See 35 U.S.C. 100
 (note) and MPEP §
 2159 . For applications subject to pre-AIA 35 U.S.C.
 102 and pre-AIA 35 U.S.C. 103 , see
 MPEP §
 716.10 for affidavits or declarations of attribution
 under 37 CFR
 1.132 .] 

 I. WHO MAY MAKE AFFIDAVIT OR DECLARATION Anyone who has knowledge of the facts discussed in
 the declaration may sign a declaration under 37 CFR 1.130 . In accordance
 with 37 CFR
 1.130 , however, it is the applicant or patent owner who may
 submit (i.e., file) an affidavit or declaration. When an assignee, obligated
 assignee, or person showing sufficient proprietary interest is the applicant under
 35 U.S.C.
 118 the applicant or their representative must be the party
 that files the affidavit or declaration under 37 CFR 1.130 even if the
 inventor or any party with knowledge of the relevant facts signed the affidavit or
 declaration. In other words, the affidavit or declaration must be filed by a party
 having authority to take action in the application. Authority to file papers in an
 application generally does not lie with the inventor if the inventor is not the
 applicant. See MPEP § 2155.05 .
 

 II. FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS AND ATTACHED
 EXHIBITS An affidavit is a statement in writing made under
 oath before a notary public, magistrate, or officer authorized to administer
 oaths. See 602 et seq. for additional information regarding formal
 requirements of affidavits.
 

 37 CFR
 1.68 permits a declaration to be used instead of an
 affidavit. The declaration must include an acknowledgment by the declarant that
 willful false statements and the like are punishable by fine or imprisonment, or
 both ( 18 U.S.C.
 1001 ) and may jeopardize the validity of the application or
 any patent issuing thereon. The declarant must set forth in the body of the
 declaration that all statements made of the declarant’s own knowledge are true and
 that all statements made on information and belief are believed to be true.
 

 Exhibits, such as those filed as part of an
 affidavit or declaration under 37 CFR 1.130 , must comply with
 the requirements of 37 CFR 1.91 to be entered into
 an application file. Exhibits that do not comply with the requirements of
 37 CFR
 1.91 will be disposed of or returned to applicant at the
 discretion of the Office. See also MPEP § 608.03(a) .
 

 

 
 717.01(d) U.S. Patent or Application Publication Claiming
 Same Invention [R-11.2013]
 

 [Editor Note: This MPEP section is only applicable to applications subject
 to the first inventor to file provisions of the AIA. See 35 U.S.C. 100
 (note) and MPEP §
 2159 . For applications subject to pre-AIA 35 U.S.C.
 102 and pre-AIA 35 U.S.C. 103 , see
 MPEP §
 716.10 for affidavits or declarations of attribution
 under 37 CFR
 1.132 .] 

 When a 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
 patent owner may file a petition for a derivation proceeding pursuant to
 37 CFR
 42.401 et seq. of this title. See 37 CFR
 1.130(c) . Permitting two different applicants to each aver or
 declare that an inventor named in the other application derived the claimed invention
 without a derivation proceeding to resolve who the true inventor is could result in
 the Office issuing two patents containing patentably indistinct claims to two
 different parties. Thus, the provisions of 37 CFR 1.130 are not available in
 certain situations to avoid the issuance of two patents containing patentably
 indistinct claims to two different parties. See In re Deckler, 977
 F.2d 1449, 1451–52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) ( 35 U.S.C.
 102 , 103 , and 135 
 "clearly contemplate—where different inventive entities are
 concerned—that only one patent should issue for inventions which are either
 identical to or not patentably distinct from each other"
 
 
 )
 (quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490
 (CCPA 1977)). See the Trial Practice Guide for information on derivation proceedings. 
 

 The provisions of 37 CFR 1.130 , however, would be
 available if: (1) The rejection is based upon a disclosure other than a U.S. patent
 or U.S. patent application publication (such as non-patent literature or a foreign
 patent document); (2) the rejection is based upon a U.S. patent or U.S. patent
 application and the patent or pending application did not claim an invention that is
 the same or substantially the same as the applicant’s claimed invention; or (3) the
 rejection is based upon a U.S. patent or U.S. patent application and the patent or
 pending application that does claim an invention that is the same or substantially
 the same as the applicant’s claimed invention, but the affidavit or declaration under
 37 CFR
 1.130 does not contend 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 (e.g., an affidavit
 or declaration under 37 CFR 1.130 would be available
 if instead of alleging derivation the affidavit or declaration under
 37 CFR
 1.130 contends 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).
 

 

 
 717.01(e) Passed Upon (or Decided by) by Primary
 Examiner [R-11.2013]
 

 The question of sufficiency of affidavits or
 declarations under 37 CFR 1.130 should be reviewed and decided by a primary
 examiner.
 

 Review of questions of formal sufficiency and propriety
 are by petition filed under 37 CFR 1.181 . Such petitions are
 answered by the Technology Center Directors ( MPEP § 1002.02(c) ).
 

 Review on the merits of a 37 CFR 1.130 
 affidavit or declaration is by appeal to the Patent Trial and Appeal Board. See
 MPEP §
 1201 .
 

 

 
 717.01(f) Seasonable (or Timely) Presentation [R-07.2022]

 Affidavits or declarations under 37 CFR 1.130 
 must be timely presented in order to be admitted. Affidavits and declarations
 submitted under 37
 CFR 1.130 and other evidence traversing rejections are
 considered timely if submitted:
 

 
 (A) prior to a final rejection; 

 (B) before appeal in an application not having a
 final rejection; 
 

 (C) after final rejection, but before or on the same
 date of filing an appeal, upon a showing of good and sufficient reasons why the
 affidavit or other evidence is necessary and was not earlier presented in
 compliance with 37 CFR 1.116(e) ; or 
 

 (D) after the prosecution is closed (e.g., after a
 final rejection, after appeal, or after allowance) if applicant files the
 affidavit or other evidence with a request for continued examination (RCE)
 under 37 CFR
 1.114 in a utility or plant application filed on or after
 June 8, 1995; or a continued prosecution application (CPA) under
 37 CFR
 1.53(d) in a design application.
 

 
 All admitted affidavits and declarations
 are acknowledged and commented upon by the examiner in the next succeeding action,
 and an indication of such should be made on the Office Action Summary, Notice of
 Allowability, or Advisory Action cover sheet, as appropriate.
 

 For affidavits or declarations under 37 CFR 1.130 
 filed after appeal, see 37 CFR 41.33(d) and
 MPEP §
 1206 and § 1211.03 .
 

 Review of an examiner’s refusal to enter an affidavit
 as untimely is by petition and not by appeal to the Patent Trial and Appeal
 Board. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975);
 Ex parte Hale, 49 USPQ 209 (Bd. App. 1941).
 

 

 

 
 717.02 Prior Art Exception for Commonly Owned or Joint
 Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) [R-10.2019]
 

 [Editor Note: This MPEP section is only applicable to applications subject to
 examination under the first inventor to file provisions of the AIA as explained in
 35
 U.S.C. 100 (note) and MPEP §
 2159 . See MPEP §§ 2146 - 2146.03 for the examination of applications not subject to
 the first inventor to file provisions of the AIA involving, inter alia, commonly
 owned subject matter or a joint research agreement.] 

 35 U.S.C.
 102(b)(2)(C) provides that disclosures shall not be prior art
 under 35
 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed
 invention, not later than the effective filing date of the claimed invention, were owned
 by the same person or subject to an obligation of assignment to the same person. If the
 prior art exception under 35 U.S.C. 102(b)(2)(C) is properly
 invoked, the commonly owned or joint research agreement reference is not available as
 prior art under 35 U.S.C. 102(a)(2) for both
 anticipation and obviousness rejections. See MPEP §
 717.02(a) for more information on invoking this prior art
 exception and MPEP § 717.02(b) for more information
 on evaluating when the exception applies and is properly invoked.
 

 In applying the provisions of 35 U.S.C.
 102(b)(2)(C) , 35 U.S.C. 102(c) provides that a
 joint research agreement can establish that disclosed subject matter and a claimed
 invention are deemed owned by the same person or subject to an obligation of assignment
 to the same person if the following three conditions are satisfied:
 

 
 A. The subject matter disclosed must have been
 developed and the claimed invention must have been made by, or on behalf of, one
 or more parties to a joint research agreement that was in effect on or before the
 effective filing date of the claimed invention. See 35 U.S.C.
 102(c)(1) . The AIA defines the term “joint research
 agreement” as a written contract, grant, or cooperative agreement entered into by
 two or more persons or entities for the performance of experimental,
 developmental, or research work in the field of the claimed invention. See
 35
 U.S.C. 100(h) . 
 

 B. The claimed invention must have been made as a
 result of activities undertaken within the scope of the joint research agreement.
 See 35
 U.S.C. 102(c)(2) . 
 

 C. The application for patent for the claimed
 invention must disclose, or be amended to disclose, the names of the parties to
 the joint research agreement. See 35 U.S.C. 102(c)(3) .
 

 
 Joint research agreement subject matter under
 35 U.S.C.
 102(c) is treated under 37 CFR 1.104(c)(4)(ii) , and joint
 research agreement subject matter under pre-AIA 35 U.S.C. 103(c) is treated
 under 37 CFR
 1.104(c)(5)(ii) .
 

 The provisions of 35 U.S.C.
 102(c) generally track those of the Cooperative Research and
 Technology Enhancement Act of 2004 (CREATE Act). See MPEP § 2146 . The
 major differences between 35 U.S.C. 102(c) ) and the CREATE Act
 are the following:
 

 
 A. The new provision ( 35 U.S.C.
 102(c) ) is keyed to the effective filing date of the claimed
 invention, while the CREATE Act ( pre-AIA 35 U.S.C. 103(c) )
 focused on the date that the claimed invention was made; and
 

 B. The CREATE Act provisions ( pre-AIA 35 U.S.C.
 103(c) ) only applied to obviousness rejections and not to
 anticipation rejections.
 

 
 
 717.02(a) Invoking the Prior Art Exception under 35
 U.S.C. 102(b)(2)(C) [R-01.2024]
 

 [Editor Note: This MPEP section is only applicable to applications subject
 to examination under the first inventor to file provisions of the AIA as explained
 in 35
 U.S.C. 100 (note) and MPEP §
 2159 . See MPEP §§ 2146 -
 2146.03 for the examination of applications not subject
 to the first inventor to file provisions of the AIA involving, inter alia,
 commonly owned subject matter or a joint research agreement.] 

 I. COMMON OWNERSHIP In order to invoke common ownership to except a
 disclosure as prior art, the applicant (or the patent owner) must provide a
 statement that the disclosure of the subject matter on which the rejection is
 based and the claimed invention were owned by the same person or subject to an
 obligation of assignment to the same person not later than the effective filing
 date of the claimed invention. The statement should either be on or begin on a
 separate sheet and must not be directed to other matters ( 37 CFR
 1.4(c) ). The statement must be signed in accordance with
 37 CFR
 1.33(b) .
 

 A. Definition of Common Ownership The term 
 "commonly
 owned"
 
 
 is intended to mean that the subject matter that
 would otherwise be prior art to the claimed invention and the claimed invention
 are entirely or wholly owned by, or under an obligation to assign to, the same
 person(s) or organization(s)/business entity(ies). If the person(s) or
 organization(s) owned less than 100 percent of the subject matter which would
 otherwise be prior art to the claimed invention, or less than 100 percent of
 the claimed invention, then common ownership would not exist. Common ownership
 requires that the person(s) or organization(s)/business entity(ies) own 100
 percent of the subject matter and 100 percent of the claimed invention.
 

 Specifically, if an invention claimed in an
 application is owned by more than one entity and those entities seek to invoke
 the prior art exception under 35 U.S.C. 102(b)(2)(C) ,
 then the disclosure to which the exception applies must be owned by or subject
 to an obligation of assignment to the same entities that owned the application
 not later than the effective filing date of the claimed invention. For example,
 assume Company A owns twenty percent of patent Application X and Company B owns
 eighty percent of patent Application X at the time of the effective filing date
 of the claimed invention in Application X. In addition, assume that Companies A
 and B seek to invoke the prior art exception for a disclosure in Patent Z under
 35 U.S.C. 102(b)(2)(C) . The relevant disclosure in
 Patent Z must have been co-owned, or have been under an obligation of
 assignment to both companies, not later than the effective filing date of the
 claimed invention in Application X in order for the prior art exception to be
 properly invoked. A statement such as “Application X and Patent Z were, not
 later than the effective filing date of the claimed invention in Application X,
 commonly owned by Companies A and B” would be sufficient to establish common
 ownership.
 

 There is no requirement that the entire
 disclosure in the 35 U.S.C. 102(a)(2) 
 reference be commonly owned. If subject matter disclosed that was relied upon
 as the basis for the rejection(s) was commonly owned, then it may be proper to
 invoke the prior art exception under 35 U.S.C.
 102(b)(2)(C) . For example, if the rejections in an Office
 action are only based upon the disclosure for the first embodiment, then only
 the first embodiment of the 35 U.S.C. 102(a)(2) 
 reference needs to be commonly owned. Therefore, using the facts from the
 example in the above paragraph, the statement establishing common ownership
 could state, “Application X and the first embodiment of Patent Z were, not
 later than the effective filing date of the claimed invention in Application X,
 commonly owned by Companies A and B.” This statement would be sufficient to
 establish common ownership of Application X and the first embodiment of Patent
 Z. In this case, the examiner may still apply Patent Z’s disclosure that is not
 applicable to the first embodiment (e.g., a disclosure unique to another
 embodiment) as prior art under 35 U.S.C. 102(a)(2) .
 

 For applications owned by a joint venture of two
 or more entities, both the application and the disclosure to which the
 exception applies must have been owned by, or subject to an obligation of
 assignment to, the joint venture not later than the effective filing date of
 the claimed invention in the application. For example, if Company A and Company
 B formed a joint venture, Company C, both Application X and the relevant
 disclosure in Patent Z must have been owned by, or subject to an obligation of
 assignment to, Company C not later than the effective filing date of the
 claimed invention in Application X in order for the relevant disclosure in
 Patent Z to be properly excepted as prior art under 35 U.S.C.
 102(b)(2)(C) . If Company A by itself always owned the
 relevant disclosure in Patent Z and Company C by itself always owned
 Application X, then the 35 U.S.C. 102(b)(2)(C) 
 exception would not apply to the relevant disclosure in Patent Z.
 

 As long as principal ownership rights to either
 the disclosed subject matter or the claimed invention under examination reside
 in different persons or organizations, common ownership does not exist. A
 license of the claimed invention under examination to another by the owner
 where basic ownership rights are retained would not defeat ownership.
 

 B. Requirements to Establish Common Ownership The requirement for common ownership not later than
 the effective filing date of the claimed invention is intended to preclude
 obtaining ownership of the disclosed subject matter after the effective filing
 date of the claimed invention in order to except that subject matter as prior art
 by invoking a prior art exception. A statement of present common ownership is not
 sufficient.
 

 The question of whether common ownership exists not
 later than the effective filing date of the claimed invention is to be determined
 on the facts of the particular case in question. Actual ownership of the disclosed
 subject matter and the claimed invention by the same individual(s) or
 organization(s) or a legal obligation to assign both the disclosed subject matter
 and the claimed invention to the same individual(s) or organization(s)/business
 entity(ies) must be in existence not later than the effective filing date of the
 claimed invention in order for the 35 U.S.C. 102(b)(2)(C) 
 exception to apply to the disclosed subject matter. A moral or unenforceable
 obligation would not provide the basis for common ownership.
 

 Applications and subject matter disclosed in
 references (whether patents, patent applications, or patent application
 publications) will be considered by the examiner to be owned by, or subject to an
 obligation of assignment to the same person, not later than the effective filing
 date of the claimed invention, if the applicant(s) or patent owner(s) make(s) a
 statement to the effect that the application and the disclosed subject matter
 were, not later than the effective filing date for the claimed invention, owned by
 or subject to an obligation of assignment to the same person. The statement must
 be signed in accordance with 37 CFR 1.33(b) . Such a
 statement is sufficient to establish common ownership of, or an obligation for
 assignment to, the same person(s) or organization(s) for purposes of
 35
 U.S.C. 102(b)(2)(C) . The applicant(s), patent owner(s), or
 the representative(s) have the best knowledge of the ownership of their
 application(s) and reference(s), and their statement of such is sufficient because
 of their paramount obligation of candor and good faith to the USPTO.
 

 The statement concerning common ownership should be
 clear and conspicuous (e.g., on a separate paper) to ensure the examiner notices
 the statement. For example, an attorney or agent of record receives an Office
 action for Application X in which all the claims are rejected based upon subject
 matter disclosed in Patent A (either alone or in combination with other
 references) wherein Patent A is only available as prior art under
 35
 U.S.C. 102(a)(2) . In response to the Office action, the
 attorney or agent of record for Application X states, in a clear and conspicuous
 manner, that:
 

 
 
 "Application X and Patent A were, not later than the
 effective filing date of the claimed invention in Application X, owned by
 Company Z."
 
 
 
 

 
 This statement alone is sufficient to invoke the
 prior art exception under 35 U.S.C. 102(b)(2)(C) . Once
 common ownership is established, the subject matter disclosed in Patent A may not
 be used in a rejection under 35 U.S.C. 102 or
 35
 U.S.C. 103 against the claims of Application X. Patent A,
 however, could still be used as the basis for a double patenting rejection, if
 appropriate. See MPEP § 804 for more information on double patenting
 rejections.
 

 The applicant may, but is not required to, present
 evidence (e.g., assignment records, affidavits or declarations by the common
 owner, or court decisions) supporting the existence of the common ownership, in
 addition to the above-mentioned statement concerning common ownership.
 

 In rare instances, the examiner may have independent
 evidence that raises a material doubt as to the accuracy of applicant’s or patent
 owner’s representation. For example, the independent evidence may show the lack of
 common ownership of (or the existence of an obligation to commonly assign) the
 application being examined and the applied subject matter in the U.S. patent, U.S.
 patent application publication reference, or international patent application
 publication under the Patent Cooperation Treaty (PCT). In such cases, the examiner
 should explain why the accuracy of the representation is doubted. In addition, the
 examiner may require objective evidence of common ownership of (or the existence
 of an obligation to assign) the application being examined and the applied subject
 matter not later than the effective filing date of the claimed invention in the
 application being examined. Examiners should note that the execution dates in
 assignment documents may not reflect the date a party was under an obligation to
 assign the claimed invention.
 

 Applicant(s) or patent owner(s) may submit, 
 in addition to the statement regarding common ownership, the
 following objective evidence:
 

 
 (A) Reference to assignments, which are recorded
 in the U.S. Patent and Trademark Office in accordance with 37 CFR Part
 3 , and which convey the entire rights in the
 applications or patents to the same person(s) or organization(s);
 

 (B) Copies of unrecorded assignments, which
 convey the entire rights in the applications or patents to the same
 person(s) or organization(s), and which are filed in each of the
 applications;
 

 (C) An affidavit or declaration by the common
 owner, which is filed in the application or patent, and which states that
 there is common ownership, states facts which explain why the affiant or
 declarant believes there is common ownership, and is properly signed (i.e.,
 signed by an official of the corporation or organization empowered to act on
 behalf of the corporation or organization when the common owner is a
 corporation or other organization); and
 

 (D) Other evidence, which is submitted in the
 application or patent, and which establishes common ownership.
 

 II. JOINT RESEARCH AGREEMENT In order to invoke a joint research agreement to
 establish that the 35 U.S.C. 102(b)(2)(C) 
 exception applies to a disclosure, the applicant (or patent owner) must provide a
 statement that the disclosure of the subject matter on which the rejection is
 based and the claimed invention were made by or on behalf of parties to a joint
 research agreement under 35 U.S.C. 102(c) . The
 statement must also assert that the agreement was in effect on or before the
 effective filing date of the claimed invention, and that the claimed invention was
 made as a result of activities undertaken within the scope of the joint research
 agreement. The statement should either be on or begin on a separate sheet and must
 not be directed to other matters ( 37 CFR 1.4(c) ). The statement
 must be signed in accordance with 37 CFR 1.33(b) .
 

 If the names of the parties to the joint research
 agreement are not already stated in the application, it is necessary to amend the
 application to include the names of the parties to the joint research agreement in
 accordance with 37 CFR 1.71(g)(1) . Specifically, 37 CFR
 1.71(g)(1) provides that the specification may disclose or
 be amended to disclose the name of each party to the joint research agreement as
 required by 35 U.S.C. 102(c) .
 

 

 37 CFR
 1.71(g)(2) provides that an amendment under
 37 CFR
 1.71(g)(1) must be accompanied by the processing fee set
 forth in 37 CFR 1.17(i) if it is not
 filed: (1) within three months of the filing date of a national application; (2)
 within three months of the date of entry of the national stage as set forth in
 37 CFR
 1.491 in an international application; (3) before the
 mailing of a first Office action on the merits; or (4) before the mailing of a
 first Office action after the filing of a request for continued examination under
 37 CFR
 1.114 . 
 

 37 CFR
 1.71(g)(3) provides that if an amendment under
 37 CFR
 1.71(g)(1) is filed after the date the issue fee is paid,
 the patent as issued may not necessarily include the names of the parties to the
 joint research agreement. 37 CFR 1.71(g)(3) also
 provides that if the patent as issued does not include the names of the parties to
 the joint research agreement, the patent must be corrected to include the names of
 the parties to the joint research agreement by a certificate of correction under
 35 U.S.C.
 255 and 37 CFR 1.323 for the amendment
 to be effective. The requirements of 37 CFR 1.71(g)(3) (correction
 of the patent by a certificate of correction under 35 U.S.C. 255 and
 37 CFR
 1.323 ) also apply in the situation in which such an
 amendment is not filed until after the date the patent was granted. It is
 unnecessary to file a reissue application or request for reexamination of the
 patent to submit the amendment and other information necessary to establish that
 the prior art exception under 35 U.S.C. 102(b)(2)(C) applies
 in view of a joint research agreement.
 

 The submission of such an amendment remains subject
 to the rules of practice: e.g., 37 CFR 1.116 ,
 1.121 , and 1.312 . For example, if an
 amendment under 37 CFR 1.71(g) is submitted in an application under final
 rejection to overcome a rejection based upon a U.S. patent which qualifies as
 prior art only under 35 U.S.C. 102(a)(2) , the
 examiner may refuse to enter the amendment under 37 CFR
 1.71(g) if it is not accompanied by an appropriate terminal
 disclaimer ( 37 CFR 1.321(d) ). This is because such an amendment may
 necessitate the reopening of prosecution (e.g., for entry of a double patenting
 rejection).
 

 If an amendment under 37 CFR
 1.71(g) is submitted to overcome a rejection based upon
 subject matter disclosed in a U.S. patent, U.S. patent application publication, or
 international patent application publication under the PCT, which qualifies as
 prior art only under 35 U.S.C. 102(a)(2) , and the
 examiner withdraws the rejection, the examiner may need to issue an Office action
 containing a new double patenting rejection based upon the excepted subject matter
 in the patent or patent application publication. In these situations, such Office
 action can be made final, provided that the examiner introduces no other new
 ground of rejection that was not necessitated by either amendment or an
 information disclosure statement filed during the time period set forth in
 37 CFR
 1.97(c) with the fee set forth in 37 CFR
 1.17(p) . The Office action is properly made final because
 the new double patenting rejection was necessitated by amendment of the
 application by applicant. This is the case regardless of whether the claims
 themselves have been amended.
 

 In addition to amending the specification to
 disclose the names of the parties to the joint research agreement, applicant must
 submit the required statement to invoke the prior art exception under
 35
 U.S.C. 102(b)(2)(C) . 37 CFR 1.104(c)(4) sets forth
 the requirement for the statement, which includes a statement to the effect that
 the subject matter disclosed in the prior art and the claimed invention were made
 by or on the behalf of parties to a joint research agreement, within the meaning
 of 35
 U.S.C. 102(c) , which was in effect on or before the
 effective filing date of the claimed invention, and that the claimed invention was
 made as a result of activities undertaken within the scope of the joint research
 agreement. The statement should either be on or begin on a separate sheet and must
 not be directed to other matters ( 37 CFR 1.4(c) ). The statement
 must be signed in accordance with 37 CFR 1.33(b) . As with
 establishing common ownership, the applicant or patent owner may, but is not
 required to, present evidence supporting the existence of the joint research
 agreement.
 

 If the applicant excepts as prior art the subject
 matter relied upon by the examiner by invoking the exception under
 35
 U.S.C. 102(b)(2)(C) and by following the procedures set
 forth in the rules, the examiner will treat the application under examination and
 the excepted subject matter in the 35 U.S.C. 102(a)(2) reference
 as if they are “owned by the same person or subject to an obligation of assignment
 to the same person” for purposes of 35 U.S.C. 102(b)(2)(C) .
 

 The following examples are provided for illustration
 only:
 

 Example 1 Company A and University B have a joint research
 agreement (JRA) in place prior to the effective filing date of claimed
 invention X’, which is owned by Company A. Professor BB from University B
 communicates invention X to Company A. University B filed a patent application
 on invention X, which has an effective filing date of November 12, 2014.
 Company A filed a patent application disclosing and claiming invention X’,
 which is an obvious variant of invention X. The effective filing date of the
 claimed invention in Company A’s application is December 12, 2014. Invention X’
 was made as a result of the activities undertaken within the scope of the JRA.
 University B retains ownership of invention X, and Company A retains ownership
 of invention X’, without any obligation to assign the inventions to a common
 owner. Company A could invoke the joint research agreement provisions of
 35 U.S.C. 102(c) to except the subject matter disclosed
 in University B’s application as prior art by invoking the exception under
 35 U.S.C. 102(b)(2)(C) and complying with the
 requirements of 37 CFR 1.71(g) .
 

 

 Example 2 Professor BB from University B communicates
 invention X to Company A. University B filed a patent application on invention
 X, which has an effective filing date of November 12, 2014. Company A filed a
 patent application disclosing and claiming invention X’, which is an obvious
 variant of invention X. The effective filing date of claimed invention X’ in
 Company A’s application is December 12, 2014. Company A and University B have a
 joint research agreement (JRA), which goes into effect on January 2, 2015.
 University B retains ownership of invention X, and Company A retains ownership
 of invention X’, without any obligation to assign the inventions to a common
 owner. Company A could not invoke the joint research agreement
 provisions of 35 U.S.C. 102(c) to except
 the subject matter disclosed in University B’s application as prior art by
 invoking the exception under 35 U.S.C. 102(b)(2)(C) 
 because the JRA was not in effect until January 2, 2015, which is after the
 effective filing date of Company A’s invention (December 12, 2014). 
 

 

 Example 3 Company A and University B have a joint research
 agreement (JRA) in place prior to the effective filing date of claimed
 invention X’. The JRA is limited to activities for invention Y and invention X’
 was not made as a result of activities undertaken within the scope of the JRA.
 Professor BB from University B communicates invention X to Company A.
 University B filed a patent application on invention X, which has an effective
 filing date of November 12, 2014. Company A filed a patent application
 disclosing and claiming invention X’, which is an obvious variant of invention
 X. The effective filing date of claimed invention X’ in Company A’s application
 is December 12, 2014. University B retains ownership of invention X, and
 Company A retains ownership of invention X’, without any obligation to assign
 the inventions to a common owner. Company A could not invoke the
 joint research agreement provisions of 35 U.S.C.
 102(c) to except the subject matter disclosed in
 University B’s application as prior art by invoking the exception under
 35 U.S.C. 102(b)(2)(C) because claimed invention X’ was
 not made as a result of the activities undertaken within the scope of the
 JRA.
 

 

 For invoking the joint research agreement provisions
 in pre-AIA applications, see MPEP §§ 2146 -
 2146.03 . 
 

 

 
 717.02(b) Evaluating Whether the Prior Art Exception
 under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked [R-01.2024]
 

 [Editor Note: This MPEP section is only
 applicable to applications subject to examination under the first inventor to file
 provisions of the AIA as explained in 35 U.S.C. 100 (note) and
 MPEP § 2159 . See MPEP §§ 2146 -
 2146.03 for the examination of applications not subject
 to the first inventor to file provisions of the AIA involving, inter alia,
 commonly owned subject matter or a joint research agreement.] 

 
 37 CFR 1.104 Nature of examination. 

 *****

 
 (c) Rejection of claims. 
 *****

 (4)
 
 (i) Subject matter which would
 otherwise qualify as prior art under 35
 U.S.C. 102(a)(2) and a claimed invention
 will be treated as commonly owned for purposes of
 35 U.S.C.
 102(b)(2)(C) if the applicant or patent
 owner provides a statement to the effect that the subject matter
 and the claimed invention, not later than the effective filing
 date of the claimed invention, were owned by the same person or
 subject to an obligation of assignment to the same person.
 

 (ii) Subject matter which would
 otherwise qualify as prior art under 35
 U.S.C. 102(a)(2) and a claimed invention
 will be treated as commonly owned for purposes of
 35 U.S.C.
 102(b)(2)(C) on the basis of a joint
 research agreement under 35
 U.S.C. 102(c) if:
 
 (A) The applicant or patent
 owner provides a statement to the effect that the subject
 matter was developed and the claimed invention was made by
 or on behalf of one or more parties to a joint research
 agreement, within the meaning of 35 U.S.C.
 100(h) and § 1.9(e) , that was in effect on or
 before the effective filing date of the claimed invention,
 and the claimed invention was made as a result of
 activities undertaken within the scope of the joint
 research agreement; and
 

 (B) The application for patent
 for the claimed invention discloses or is amended to
 disclose the names of the parties to the joint research
 agreement.
 

 
 

 
 

 
 

 
 *****

 

 37 CFR
 1.104(c)(4) includes the provisions that pertain to commonly
 owned or joint research agreement subject matter for applications and patents subject
 to 35
 U.S.C. 102 and 35 U.S.C. 103 . Specifically,
 37 CFR
 1.104(c)(4) implements the provisions of 35 U.S.C.
 102(b)(2)(C) and 35 U.S.C. 102(c) in the AIA.
 Thus, 37 CFR
 1.104(c)(4) is applicable to applications and patents that are
 subject to 35 U.S.C. 102 and 35 U.S.C. 103 .
 

 37 CFR
 1.104(c)(4)(i) provides that subject matter which would
 otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed
 invention will be treated as commonly owned for purposes of 35 U.S.C.
 102(b)(2)(C) if the applicant or patent owner provides a
 statement to the effect that the subject matter and the claimed invention, not later
 than the effective filing date of the claimed invention, were owned by the same
 person or subject to an obligation of assignment to the same person.
 

 37 CFR
 1.104(c)(4)(ii) addresses joint research agreements and
 provides that subject matter which would otherwise qualify as prior art under
 35
 U.S.C. 102(a)(2) and a claimed invention will be treated as
 commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the
 basis of a joint research agreement under 35 U.S.C.
 102(c) if: (1) the applicant or patent owner provides a
 statement to the effect that the subject matter was developed and the claimed
 invention was made by or on behalf of one or more parties to a joint research
 agreement (within the meaning of 35 U.S.C. 100(h) and
 37 CFR
 1.9(e) ) that was in effect on or before the effective filing
 date of the claimed invention and the claimed invention was made as a result of
 activities undertaken within the scope of the joint research agreement; and (2) the
 application for patent for the claimed invention discloses or is amended to disclose
 the names of the parties to the joint research agreement.
 

 I. WHEN THE EXCEPTION CAN BE USED It is important to recognize that the
 35
 U.S.C. 102(b)(2)(C) exception can only be invoked in regard
 to a disclosure that is applied in a rejection as prior art under
 35
 U.S.C. 102(a)(2) (disclosures in a U.S. patent, U.S. patent
 application, or WIPO published international application effectively filed before
 the effective filing date of the claimed invention). It is also important to
 recognize that the 35 U.S.C. 102(b)(2)(C) 
 exception applies when the rejection is under 35 U.S.C.
 102(a)(2) (anticipation) or 35 U.S.C.
 103 (obviousness). In other words, the AIA expanded the
 previous commonly owned prior art exception under the CREATE Act to now apply to
 anticipation rejections and not just obviousness rejections.
 

 II. WHEN THE EXCEPTION DOES NOT APPLY The 35 U.S.C. 102(b)(2)(C) 
 exception does not apply to a disclosure that qualifies as prior art under
 35
 U.S.C. 102(a)(1) (disclosures publicly made before the
 effective filing date of the claimed invention). In other words, the prior art
 exception under 35 U.S.C. 102(b)(2)(C) only
 disqualifies the disclosure as prior art under 35 U.S.C.
 102(a)(2) . Thus, if the issue date of a U.S. patent or
 publication date of a U.S. patent application publication or WIPO published
 international application is before the effective filing date of the claimed
 invention, it may be prior art under 35 U.S.C. 102(a)(1) ,
 regardless of the fact that the subject matter disclosed and the claimed invention
 are commonly owned or resulted from a joint research agreement.
 

 The 35 U.S.C. 102(b)(2)(C) 
 exception is not effective to remove a disclosure applied as a basis for a double
 patenting rejection. In other words, disclosures excepted as prior art under
 35
 U.S.C. 102(b)(2)(C) could be the basis for statutory double
 patenting or nonstatutory (sometimes referred to as obviousness-type) double
 patenting rejections. See MPEP § 717.02(c) , subsection
 III.
 

 In addition, the prior art exception under
 35
 U.S.C. 102(b)(2)(C) is not effective to remove a disclosure
 as evidence of enablement or inherency. See MPEP §
 2131.01 .
 

 III. REQUIREMENTS TO ESTABLISH COMMON OWNERSHIP It is important to recognize what submission is
 sufficient to establish common ownership. The common ownership must be shown to
 exist not later than the effective filing date of the claimed invention. A
 statement of present common ownership is not sufficient (unless such statement was
 filed on the effective filing date of the claimed invention). In re
 Onda, 229 USPQ 235 (Comm’r Pat. 1985). 
 

 The following statement is sufficient to establish
 common ownership of, or an obligation for assignment to, the same person(s) or
 organizations(s): 
 

 
 Application [the application serial number] and
 the subject matter disclosed in the reference(s) [the patent identifier of the
 commonly owned applied art (whether U.S. patents, U.S. patent applications,
 U.S. patent application publications, or WIPO patent publications) that was
 relied upon in the rejection(s)] were, at the time the invention was
 effectively filed, owned by [the name of the person(s), organization(s), and/or
 business entity(ies) that own the application and the commonly owned applied
 art]. 
 

 
 The statement must be signed in accordance with
 37 CFR
 1.33(b) . The applicant(s) or the representative(s) have the
 best knowledge of the ownership of their application(s) and reference(s), and
 their statement of such is sufficient because of their paramount obligation of
 candor and good faith to the USPTO. 
 

 The statement concerning common ownership should be
 clear and conspicuous (e.g., on a separate piece of paper or in a separately
 labeled section) in order to ensure that the examiner quickly notices the
 statement. Applicants may, but are not required to, submit further evidence, such
 as assignment records, affidavits or declarations by the common owner, or court
 decisions, in addition to the above-mentioned statement concerning common
 ownership. 
 

 For example, a patent practitioner receives an Office
 action for Application X in which all the claims are rejected under
 35
 U.S.C. 103 using Patent A in view of Patent B wherein Patent
 A is only available as prior art under 35 U.S.C.
 102(a)(2) . In response to the Office action, the patent
 practitioner for Application X states, in a clear and conspicuous manner, that: 
 

 
 Application X and the subject matter disclosed in
 Patent A were, at the time the invention of Application X was effectively
 filed, owned by Company Z.
 

 
 This statement alone is sufficient to except the
 subject matter disclosed in Patent A from being used in a rejection under
 35
 U.S.C. 103 against the claims of Application X. Note that
 such a statement would also be effective to preclude the excepted subject matter
 disclosed in Patent A from being used in an anticipation rejection under
 35
 U.S.C. 102(a)(2) . It would not, however, be effective to
 preclude Patent A from being used in either an anticipation or obviousness
 rejection if Patent A was prior art under 35 U.S.C.
 102(a)(1) (e.g., the patent issued before the effective
 filing date of the claimed invention and is not subject to any exception in
 35
 U.S.C. 102(b)(1) ).
 

 In rare instances, the examiner may have independent
 evidence that raises a material doubt as to the accuracy of applicant’s
 representation of either (1) the common ownership of, or (2) the existence of an
 obligation to commonly assign, the application being examined and the applied
 subject matter disclosed in the U.S. patent, U.S. patent application publication,
 or WIPO publication reference. In such cases, the examiner may explain why the
 accuracy of the representation is doubted and require objective evidence of common
 ownership of, or the existence of an obligation to assign, the application being
 examined and the applied subject matter disclosed in the reference as of the
 effective filing date of the claimed invention in the application being examined.
 As mentioned above, applicant(s) may submit, in addition to the above-mentioned
 statement regarding common ownership, the following objective evidence: 
 

 
 (A) Reference to assignments recorded in the U.S.
 Patent and Trademark Office in accordance with 37 CFR Part 3 which convey
 the entire rights in the application and the commonly owned applied art to
 the same person(s) or organization(s); 
 

 (B) Copies of unrecorded assignments which convey
 the entire rights in the application and the commonly owned applied art to
 the same person(s) or organization(s) are filed in each of the applications;
 
 

 (C) An affidavit or declaration by the common owner
 which states that there is common ownership and states facts which explain
 why the affiant or declarant believes there is common ownership, which
 affidavit or declaration may be signed by an official of the corporation or
 organization empowered to act on behalf of the corporation or organization
 when the common owner is a corporation or other organization; and 
 

 (D) Other evidence which establishes common
 ownership of the application and the commonly owned applied art. 
 

 IV. REQUIREMENTS TO ESTABLISH A JOINT RESEARCH AGREEMENT Once an examiner has established a prima facie case
 of unpatentability under 35 U.S.C. 102(a)(2) or
 35
 U.S.C. 103 , the burden of overcoming the rejection by
 invoking the joint research agreement provisions of 35 U.S.C.
 102(b)(2)(C) and 35 U.S.C.
 102(c) is on the applicant or the patentee. 
 

 To overcome a rejection under 35 U.S.C.
 102(a)(2) or 35 U.S.C. 103 based upon
 subject matter (whether disclosed in a U.S. patent document or publication or WIPO
 publication) which qualifies as prior art under only 35 U.S.C.
 102(a)(2) , the applicant must amend the specification of the
 application under examination to disclose the names of the parties to the joint
 research agreement, if not already disclosed, in accordance with 37 CFR
 1.71(g) . The requirements of 37 CFR
 1.71(g) are further discussed below. In addition to amending
 the specification to disclose the names of the parties to the joint research
 agreement, the applicant must submit the required statement to invoke the prior
 art exception of 35 U.S.C. 102(b)(2)(C) and
 35
 U.S.C. 102(c) . 37 CFR 1.104(c)(4) sets forth
 the requirements for the statement, which includes a statement to the effect that
 the subject matter disclosed in the prior art and the claimed invention were made
 by or on the behalf of parties to a joint research agreement, within the meaning
 of 35
 U.S.C. 100(h) , which was in effect on or before the
 effective filing date of the claimed invention, and that the claimed invention was
 made as a result of activities undertaken within the scope of the joint research
 agreement. The statement should either be on or begin on a separate sheet and must
 not be directed to other matters ( 37 CFR 1.4(c) ). The statement
 must be signed in accordance with 37 CFR 1.33(b) .
 

 Like the common ownership or assignment provision,
 the joint research agreement must be shown to be in effect on or before the
 effective filing date of the claimed invention. The joint research agreement is
 NOT required to be in effect on or before the prior art date of the reference that
 discloses the subject matter that is sought to be excepted. As is the case with
 establishing common ownership, the applicant or patent owner may, but is not
 required to, present evidence supporting the existence of the joint research
 agreement. Furthermore, the Office will not request corroborating evidence in the
 absence of independent evidence which raises doubt as to the existence of the
 joint research agreement.
 

 
 37 CFR 1.71 Detailed description and specification of the invention. 

 *****

 
 (g)
 
 (1) The specification may disclose or be
 amended to disclose the names of the parties to a joint research
 agreement as defined in § 1.9(e) .
 

 (2) An amendment under paragraph (g)(1) of
 this section must be accompanied by the processing fee set forth in §
 1.17(i) if not
 filed within one of the following time periods: 
 
 (i) Within three months of the filing
 date of a national application; 
 

 (ii) Within three months of the date of
 entry of the national stage as set forth in § 1.491 in an international application;
 
 

 (iii) Before the mailing of a first
 Office action on the merits; or
 

 (iv) Before the mailing of a first
 Office action after the filing of a request for continued
 examination under § 1.114 . 
 

 
 

 
 
 (3) If an amendment under paragraph (g)(1)
 of this section is filed after the date the issue fee is paid, the
 patent as issued may not necessarily include the names of the parties
 to the joint research agreement. If the patent as issued does not
 include the names of the parties to the joint research agreement, the
 patent must be corrected to include the names of the parties to the
 joint research agreement by a certificate of correction under
 35 U.S.C. 255 and § 1.323 for the amendment to be effective. 
 

 
 

 
 *****

 

 37 CFR
 1.71(g) provides for the situation in which an application
 discloses or is amended to disclose the names of the parties to a joint research
 agreement to invoke the prior art exception under 35 U.S.C.
 102(b)(2)(C) and 35 U.S.C. 102(c) .
 37 CFR
 1.71(g)(1) specifically provides that the specification may
 disclose or be amended to disclose the name of each party to the joint research
 agreement because this information is required by 35 U.S.C.
 102(c)(3) .
 

 37 CFR
 1.71(g)(2) provides that an amendment under 37 CFR
 1.71(g)(1) must be accompanied by the processing fee set forth
 in 37
 CFR 1.17(i) if it is not filed within one of the following time
 periods: (1) within three months of the filing date of a national application; (2)
 within three months of the date of entry of the national stage as set forth in
 37 CFR
 1.491 in an international application; (3) before the mailing
 of a first Office action on the merits; or (4) before the mailing of a first Office
 action after the filing of a request for continued examination under
 37 CFR
 1.114 .
 

 37 CFR
 1.71(g)(3) provides that if an amendment under
 37 CFR
 1.71(g)(1) is filed after the date the issue fee is paid, the
 patent as issued may not necessarily include the names of the parties to the joint
 research agreement. 37 CFR 1.71(g)(3) also provides that if the patent as issued
 does not include the names of the parties to the joint research agreement, the patent
 must be corrected to include the names of the parties to the joint research agreement
 by a certificate of correction under 35 U.S.C. 255 and
 37 CFR
 1.323 for the amendment to be effective. The requirements of
 37 CFR
 1.71(g)(3) (correction of the patent by a certificate of
 correction under 35
 U.S.C. 255 and 37 CFR 1.323 ) also apply in the
 situation in which such an amendment is not filed until after the date the patent was
 granted. It is unnecessary to file a reissue application or request for reexamination
 of the patent to submit the amendment and other information necessary to take
 advantage of 35 U.S.C. 102(c) .
 

 The submission of such an amendment remains subject to
 the rules of practice (e.g., 37 CFR 1.116 , 1.121 , and
 1.312 ). For example, if an amendment under 37 CFR 1.71(g) 
 is submitted in an application under final rejection to overcome a prior art
 rejection based upon a U.S. patent which qualifies as prior art only under
 35
 U.S.C. 102(a)(2) , the examiner may refuse to enter the
 amendment under 37
 CFR 1.71(g) if it is not accompanied by an appropriate terminal
 disclaimer ( 37
 CFR 1.321(d) ). This is because such an amendment may
 necessitate the reopening of prosecution (e.g., for entry of a double patenting
 rejection).
 

 If an amendment under 37 CFR 1.71(g) 
 is submitted to overcome a prior art rejection based upon subject matter disclosed in
 a U.S. patent, U.S. patent application publication, or WIPO publication which
 qualifies as prior art only under 35 U.S.C. 102(a)(2) , and the
 examiner withdraws the prior art rejection, the examiner may need to issue an Office
 action containing a new double patenting rejection based upon the excepted subject
 matter. In these situations, such Office action can be made final, provided that the
 examiner introduces no other new ground of rejection that was not necessitated by
 either amendment or an information disclosure statement filed during the time period
 set forth in 37 CFR
 1.97(c) with the fee set forth in 37 CFR
 1.17(p) . The Office action is properly made final because the
 new double patenting rejection was necessitated by amendment of the application by
 applicant. This is the case regardless of whether the claims themselves have been
 amended.
 

 If the applicant excepts as prior art the subject
 matter relied upon by the examiner in accordance with 35 U.S.C.
 102(b)(2)(C) and 102(c) and the procedures set
 forth in the rules, the examiner will treat the application under examination and the
 disclosure applied in the prior art rejection as if they are commonly owned for
 purposes of 35 U.S.C. 102(b)(2)(C) .
 

 The following examples are provided for illustration
 only:
 

 Example 1 Company A and University B have a joint research
 agreement (JRA) in place prior to the effective filing date of invention X’.
 Professor BB from University B communicates invention X to Company A. On November
 12, 2012, University B filed a U.S. patent application on invention X. On April
 13, 2013, Company A filed a U.S. patent application disclosing and claiming
 invention X’, which is an obvious variant of invention X. Invention X’ was made as
 a result of the activities undertaken within the scope of the JRA. University B
 retains ownership of invention X and Company A retains ownership of invention X’,
 without any obligation to assign the inventions to a common owner. Company A could
 invoke the joint research agreement provisions of 35 U.S.C.
 102(b)(2)(C) and 102(c) to except the subject matter disclosed in University
 B’s application as prior art in a rejection under 35 U.S.C.
 102(a)(2) or 35 U.S.C. 103 . 
 

 

 Example 2 Professor BB from University B communicates
 invention X to Company A. On November 12, 2012, University B filed a U.S. patent
 application on invention X. On April 13, 2013, Company A filed a U.S. patent
 application disclosing and claiming invention X’, which is an obvious variant of
 invention X. Company A and University B have a joint research agreement (JRA),
 which goes into effect on May 1, 2013. University B retains ownership of invention
 X and Company A retains ownership of invention X’, without any obligation to
 assign the inventions to a common owner. Company A could not invoke
 the joint research agreement provisions of 35 U.S.C.
 102(b)(2)(C) and 102(c) to except the subject matter disclosed in University
 B’s application as prior art in a rejection under 35 U.S.C.
 102(a)(2) or 35 U.S.C. 103 because the JRA
 was not in effect until after the claimed invention was effectively filed. 
 

 

 Example 3 Professor BB from University B communicates
 invention X to Company A. On November 12, 2012, University B filed a U.S. patent
 application on invention X. On April 13, 2013, Company A filed a provisional U.S.
 patent application disclosing invention X’. On June 13, 2013, Company A filed a
 U.S. patent application claiming the benefit of the prior provisional application
 and also disclosing and claiming invention X’, which is an obvious variant of
 invention X. Company A and University B have a joint research agreement (JRA),
 which goes into effect on May 1, 2013. University B retains ownership of invention
 X and Company A retains ownership of invention X’, without any obligation to
 assign the inventions to a common owner. Company A could not invoke
 the joint research agreement provisions of 35 U.S.C.
 102(b)(2)(C) and 102(c) to except the subject matter disclosed in University
 B’s application as prior art in a rejection under 35 U.S.C.
 102(a)(2) or 35 U.S.C. 103 because the JRA
 was not in effect until after the claimed invention was effectively filed as the
 relied upon provisional application which was filed before the JRA fully supported
 the invention X’ and therefore the invention was effectively filed before the
 JRA.
 

 

 Example 4 Company A and University B have a joint research
 agreement (JRA) in place prior to the effective filing date of invention X’ but
 the JRA is limited to activities for invention Y, which is distinct from invention
 X. Professor BB from University B communicates invention X to Company A. On
 November 12, 2012, University B filed a U.S. patent application on invention X. On
 April 13, 2013, Company A filed a U.S. patent application disclosing and claiming
 invention X’, which is an obvious variant of invention X. University B retains
 ownership of invention X and Company A retains ownership of invention X’, without
 any obligation to assign the inventions to a common owner. Company A could
 not invoke the joint research agreement provisions
 35
 U.S.C. 102(b)(2)(C) and 102(c) to except the subject matter disclosed in University
 B’s application as prior art in a rejection under 35 U.S.C.
 102(a)(2) or 35 U.S.C. 103 because the
 claimed invention was not made as a result of the activities undertaken within the
 scope of the JRA.
 

 

 

 
 717.02(c) Examination Procedure With Respect to the Prior
 Art Exception under AIA 35 U.S.C. 102(b)(2)(C) [R-10.2019]
 

 [Editor Note: This MPEP section is only applicable to applications subject
 to examination under the first inventor to file provisions of the AIA as explained
 in 35
 U.S.C. 100 (note) and MPEP §
 2159 . See MPEP §§ 2146 -
 2146.03 for the examination of applications not subject
 to the first inventor to file provisions of the AIA involving, inter alia,
 commonly owned subject matter or a joint research agreement.] 

 Examiners are reminded that a disclosure that is prior
 art under 35 U.S.C. 102(a)(1) is not excepted as prior art even if the
 reference is excepted under 35 U.S.C. 102(b)(2)(C) .
 

 Generally, subject matter disclosed in a U.S. patent,
 U.S. patent application publication, or WIPO publication reference that is prior art
 under 35
 U.S.C. 102(a)(2) is only excepted when:
 

 
 (A) a proper submission is filed (see
 MPEP § 717.02(b) for more information)
 establishing:
 
 (1) Common ownership. A proper submission may be
 a clear and conspicuous a statement to the effect that the claimed
 invention and the subject matter disclosed were, not later than the
 effective filing date of the claimed invention, owned by, or subject to
 an obligation of assignment to, the same person; or
 

 (2) A joint research agreement. A proper
 submission may be (a) amendment to the specification of the application
 under examination to disclose the names of the parties to the joint
 research agreement, if not already disclosed, in accordance with
 37
 CFR 1.71(g) , and (b) a clear and conspicuous
 statement to the effect that subject matter disclosed in the prior art
 was developed and the claimed invention was made by or on the behalf of
 one or more parties to a joint research agreement, within the meaning of
 35 U.S.C. 100(h) ,
 which was in effect on or before the effective filing date of the claimed
 invention, and that the claimed invention was made as a result of
 activities undertaken within the scope of the joint research agreement;
 
 

 
 

 (B) the reference only qualifies as prior art under
 35 U.S.C. 102(a)(2) (e.g., not under 35 U.S.C.
 102(a)(1) ); and 
 

 (C) the reference was used in an anticipation
 rejection under 35 U.S.C. 102(a)(2) or
 obviousness rejection under 35 U.S.C. 103 (e.g., not a
 double patenting rejection).
 

 
 See MPEP §
 717.02(b) for additional information pertaining to
 establishing common ownership or a joint research agreement. 
 

 I. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON
 OWNERSHIP OR A JOINT RESEARCH AGREEMENT HAS NOT BEEN ESTABLISHED If the application file being examined has not
 established that the subject matter disclosed in the reference is excepted as
 prior art under 35 U.S.C. 102(b)(2)(C) , the
 examiner will: 
 

 
 (A) assume the subject matter disclosed in the
 reference is not excepted under 35 U.S.C.
 102(b)(2)(C) ;
 

 (B) examine the application on all grounds other
 than any possible exception of the subject matter disclosed in the reference
 patent(s) or application(s) arising from a possible prior art rejection
 based on prior art under 35 U.S.C. 102(a)(2) ;
 
 

 (C) consider the applicability of any references
 under either 35 U.S.C. 102(a)(2) or
 103 based on prior art
 under 35 U.S.C. 102(a)(2) ,
 including provisional rejections under 35 U.S.C.
 102(a)(2) and under 35 U.S.C.
 103 based on provisional prior art under
 35 U.S.C. 102(a)(2) ; and
 
 

 (D) apply the best references against the claimed
 invention by rejections under 35 U.S.C. 102 and
 35 U.S.C. 103 , including
 any rejections based on prior art under 35 U.S.C.
 102(a)(2) , until such time that the subject matter
 disclosed in the reference is shown to be excepted under 35 U.S.C.
 102(b)(2)(C) . When applying any disclosures that only
 qualify as prior art under 35 U.S.C. 102(a)(2) in a
 prior art rejection against the claims, the examiner should anticipate that
 the subject matter disclosed in the reference may be excepted under
 35 U.S.C. 102(b)(2)(C) 
 and consider whether other rejections based on alternative prior art should
 be made in case the subject matter is excepted as prior art. See
 MPEP § 717.02(b) . If the
 disclosure applied in the rejection is properly excepted as prior art under
 35 U.S.C. 102(a)(2) and
 the claims are not amended, the examiner may not make the next Office action
 final if a new rejection is made, except as provided in
 MPEP §
 706.07(a) and this section. If the subject matter
 disclosed in the reference is excepted as prior art under the joint research
 agreement provision of 35 U.S.C. 102(c) and a
 new subsequent double patenting rejection based upon the excepted subject
 matter is applied, the next Office action, which contains the new double
 patenting rejection, may be made final even if applicant did not amend the
 claims (provided that the examiner introduces no other new ground of
 rejection that was not necessitated by either amendment or an information
 disclosure statement filed during the time period set forth in
 37 CFR
 1.97(c) with the fee set forth in 37 CFR
 1.17(p) ). The Office action is properly made final
 because the new double patenting rejection was necessitated by amendment of
 the application by applicant.
 

 II. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON
 OWNERSHIP OR A JOINT RESEARCH AGREEMENT HAS BEEN ESTABLISHED If the application being examined has established
 that the disclosure is excepted as prior art under 35 U.S.C.
 102(b)(2)(C) the examiner will: 
 

 
 (A) examine the applications as to all grounds,
 except the disclosure that is excepted as prior art under 35 U.S.C.
 102(a)(2) ; 
 

 (B) examine the applications for double patenting,
 including statutory and nonstatutory double patenting, and make a
 provisional rejection, if appropriate in view of the excepted subject matter
 disclosed in the reference; and
 

 (C) invite the applicant to file a terminal
 disclaimer to overcome any provisional or actual nonstatutory double
 patenting rejection, if appropriate (see 37 CFR
 1.321 ).
 

 III. DOUBLE PATENTING REJECTIONS Commonly owned applications of different inventive
 entities may be rejected on the ground of double patenting, even if the later
 filed application claims 35 U.S.C. 120 benefit to the
 earlier application, subject to the conditions discussed in MPEP § 804 et seq. In addition, double patenting rejection may arise as a
 result of the joint research agreement exception. Congress recognized that deeming
 a joint research agreement as common ownership would result in situations in which
 there would be double patenting rejections between applications not owned by the
 same party (see H.R. Rep. No. 108-425, at 5-6 (2003)). For purposes of double
 patenting analysis, the U.S. application or patent and the subject matter excepted
 under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C.
 102(c) will be treated as if commonly owned. 
 

 A rejection based on a pending U.S. application
 would be a provisional double patenting rejection. The practice of rejecting
 claims on the ground of double patenting in commonly owned applications of
 different inventive entities is in accordance with existing case law and prevents
 an organization from obtaining two or more patents with different expiration dates
 covering nearly identical subject matter. See MPEP § 804 for
 guidance on double patenting issues. In accordance with established patent law
 doctrines, double patenting rejections can be overcome in certain circumstances by
 disclaiming, pursuant to the existing provisions of 37 CFR
 1.321 , the terminal portion of the term of the reference
 patent and including in the disclaimer a provision that the patent shall be
 enforceable only for and during the period the patent is commonly owned with the
 application or patent which formed the basis for the rejection, thereby
 eliminating the problem of extending patent term. For a double patenting rejection
 based on a non-commonly owned U.S. patent (treated as if commonly owned, which is
 similar to treatment under the CREATE Act), the nonstatutory double patenting
 rejection may be obviated by filing a terminal disclaimer in accordance with
 37 CFR
 1.321(d) . See MPEP §§ 804 and
 804.02 .
 

 

 
 717.02(d) Form Paragraphs With Respect to the Prior Art
 Exception under AIA 35 U.S.C. 102(b)(2)(C) [R-10.2019]
 

 [Editor Note: This MPEP section is only applicable to applications subject
 to examination under the first inventor to file provisions of the AIA as explained
 in 35
 U.S.C. 100 (note) and MPEP §
 2159 . See MPEP §§ 2146 -
 2146.03 for the examination of applications not subject
 to the first inventor to file provisions of the AIA involving, inter alia,
 commonly owned subject matter or a joint research agreement.] 

 The following form paragraphs should be used in
 addressing the prior art exception under 35 U.S.C.
 102(b)(2)(C) :
 

 ¶ 7.20.01.aia 103 Rejection Using Prior Art Excepted Under 102(b)(2)(C)
 Because Reference is Prior Art Under 102(a)(1)
 

 Applicant has provided a submission in this file that the claimed
 invention and the subject matter disclosed in the prior art reference were owned by, or
 subject to an obligation of assignment to, the same entity as [1] not later than
 the effective filing date of the claimed invention, or the subject matter disclosed in the
 prior art reference was developed and the claimed invention was made by, or on behalf of one
 or more parties to a joint research agreement not later than the effective filing date of the
 claimed invention. However, although subject matter disclosed in the reference
 [2] has been excepted as prior art under 35 U.S.C.
 102(a)(2) , it is still applicable as prior art under 35 U.S.C.
 102(a)(1) that cannot be excepted under 35 U.S.C.
 102(b)(2)(C) .
 

 Applicant may overcome this rejection under 35 U.S.C.
 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter
 disclosed in the reference was obtained directly or indirectly from the inventor or a joint
 inventor of this application, and is therefore, not prior art as set forth in
 35 U.S.C.
 102(b)(1)(A) . Alternatively, applicant may rely on the exception under
 35 U.S.C.
 102(b)(1)(B) by providing evidence of a prior public disclosure via an
 affidavit or declaration under 37 CFR 1.130(b) .
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph must be included following form paragraph
 7.20.aia 
 or 7.15.aia 
 where the 103 rejection is based on subject matter disclosed in a reference
 that has since been excepted under 102(b)(2)(C) , but still qualifies as
 prior art under 35 U.S.C. 102(a)(1) .
 

 3. In bracket 1, identify the common assignee.

 4. In bracket 2, identify the reference which discloses the subject
 matter that has been excepted.
 
 
 

 ¶ 7.20.02.aia Joint Inventors, Common Ownership Presumed

 This application currently names joint inventors. In
 considering patentability of the claims the examiner presumes that the subject matter of the
 various claims was commonly owned at the time any inventions covered therein were effectively
 filed absent any evidence to the contrary. Applicant is advised of the obligation under
 37 CFR
 1.56 to point out the inventor and effective filing dates of each claim
 that was not commonly owned at the time a later invention was effectively filed in order for
 the examiner to consider the applicability of 35 U.S.C.
 102(b)(2)(C) for any potential 35 U.S.C.
 102(a)(2) prior art against the later invention.
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. This paragraph must be used
 in all applications with joint inventors (unless the claims are
 clearly restricted to only one claimed invention, e.g., only a single claim is presented
 in the application).
 
 
 

 ¶ 7.20.04.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is
 Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Common Ownership or Assignment
 Provision
 

 Applicant has attempted to show that subject matter disclosed in the
 reference [1] is excepted as prior art under 35 U.S.C.
 102(b)(2)(C) by showing that the claimed invention was owned by, or
 subject to an obligation of assignment to, the same entity as [2] at the time the
 claimed invention was effectively filed. However, applicant has failed to provide a statement
 that the claimed invention and the subject matter disclosed were owned by, or subject to an
 obligation of assignment to, the same person no later than the effective filing date of the
 claimed invention in a conspicuous manner, and therefore, the subject matter disclosed in the
 reference is not excepted as prior art under 35 U.S.C. 102(a)(2) . Applicant must file
 the required submission in order to properly except the subject matter under 35 U.S.C.
 102(b)(2)(C) . See MPEP § 2154.02(c) .
 

 In addition, applicant may rely upon the exception under
 35 U.S.C.
 102(b)(2)(A) to overcome the rejection under 35 U.S.C.
 102(a)(2) either by a showing under 37 CFR 1.130(a) that the subject matter
 disclosed in the reference was obtained directly or indirectly from the inventor or a joint
 inventor of this application, and is therefore not prior art under 35 U.S.C.
 102(a)(2) . Alternatively, applicant may rely on the exception under
 35 U.S.C.
 102(b)(2)(B) by providing evidence of a prior public disclosure via an
 affidavit or declaration under 37 CFR 1.130(b) . 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form
 paragraph 
 7.03.aia . 
 

 2. This form paragraph should be included in all actions containing
 rejections using 35 U.S.C. 102(a)(2) prior art,
 whether anticipation or obviousness rejections, where an attempt has been made to except
 subject matter disclosed in the reference under 35 U.S.C.
 102(b)(2)(C) , but where the applicant has not provided a proper
 statement indicating common ownership or assignment not later than the effective
 filing date of the claimed invention .
 

 3. In bracket 1, identify the commonly owned applied art (e.g.,
 patent or co-pending application).
 

 4. In bracket 2, identify the common assignee.
 
 

 ¶ 7.20.05.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is
 Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Joint Research Agreement
 Provisions of 35 U.S.C. 102(c)
 

 Applicant has attempted to show that subject matter disclosed in the
 reference [1] is excepted as prior art under 35 U.S.C.
 102(b)(2)(C) by showing that the claimed invention was subject to a
 joint research agreement in effect not later than the effective filing date of the claimed
 invention. However, applicant has failed to [2] . Applicant must file the missing
 requirements in order to properly except the subject matter disclosed in the reference under
 35 U.S.C.
 102(b)(2)(C) . See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii) .
 

 In addition, applicant may overcome the rejection either by a showing
 under 37 CFR
 1.130(a) that the subject matter disclosed in the reference was
 obtained, either directly or indirectly from the inventor or a joint inventor of this
 application, and is therefore, not prior art under 35 U.S.C.
 102(a)(2) . Alternatively, applicant may rely on the exception under
 35 U.S.C.
 102(b)(2)(B) by providing evidence of a prior public disclosure via an
 affidavit or declaration under 37 CFR 1.130(b) .
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph must be included in all actions containing
 obviousness or anticipation rejections where an attempt has been made to except subject
 matter disclosed in the 35 U.S.C. 102(a)(2) prior art
 reference under 35 U.S.C. 102(b)(2)(C) using the
 joint research agreement provisions but the attempt is ineffective.
 

 3. In bracket 1, identify the reference which discloses subject
 matter that is sought to be excepted via 35 U.S.C. 102(b)(2)(C) .
 

 4. In bracket 2, identify the reason(s) why the attempt is
 ineffective. The reason(s) could be noncompliance with the statutory requirements of
 35 U.S.C.
 102(b)(2)(C) or rule requirements relating to the CREATE Act, such
 as failure to submit the required statement or failure to amend the specification to
 include the names of the parties to the joint research agreement. See 37 CFR 1.71(g)(1) 
 and 1.104(c)(4)(ii) .
 
 
 

 Use form paragraph 7.38.01 or
 7.38.02 
 where the submission is persuasive. See MPEP § 707.07(f) . 
 

 

 

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 701-Statutory Authority for Examination 

 702-Requisites of the Application 
 702.01-Obviously Informal Cases 

 
 

 703-[Reserved] 

 704-Search and Requirements for Information 
 704.01-Search 

 704.02-704.09-[Reserved] 

 704.10-Requirements for Information 

 704.11-What Information May Be Required 
 704.11(a)-Examples of Information Reasonably Required 

 704.11(b)-When May a Requirement for Information Be Made 

 
 

 704.12-Replies to a Requirement for Information 
 704.12(a)-Relationship of Requirement for Information to Duty of Disclosure 

 704.12(b)-What Constitutes a Complete Reply 

 704.12(c)-Treatment of an Incomplete Reply 

 
 

 704.13-Time Periods for Reply 

 704.14-Making a Requirement for Information 
 704.14(a)-Format of the Requirement 

 704.14(b)-Examiner’s Obligation Following Applicant’s Reply 

 704.14(c)-Petitions to Requirements Under 37 CFR 1.105 

 704.14(d)-Relationship to Information Disclosure Statements 

 
 

 
 

 705-Patentability Reports 
 705.01-Instructions re Patentability Reports 
 705.01(a)-Nature of P.R., Its Use and Disposal 

 705.01(b)-Sequence of Examination 

 705.01(c)-Counting and Recording P.R.s 

 705.01(d)-[Reserved] 

 705.01(e)-Limitation as to Use 

 705.01(f)-Interviews With Applicants 

 
 

 
 

 706-Rejection of Claims 
 706.01-Contrasted With Objections 

 706.02-Rejection on Prior Art 
 706.02(a)-[Reserved] 
 706.02(a)(1)-[Reserved] 

 706.02(a)(2)-[Reserved] 

 
 

 706.02(b)-[Reserved] 
 706.02(b)(1)-[Reserved] 

 706.02(b)(2)-[Reserved] 

 
 

 706.02(c)-[Reserved] 
 706.02(c)(1) -[Reserved] 

 706.02(c)(2)-[Reserved] 

 
 

 706.02(d)-[Reserved] 

 706.02(e)-[Reserved] 

 706.02(f)-[Reserved] 
 706.02(f)(1)-[Reserved] 

 706.02(f)(2)-[Reserved] 

 
 

 706.02(g)-[Reserved] 

 706.02(h)-[Reserved] 

 706.02(i)-[Reserved] 

 706.02(j)-[Reserved] 

 706.02(k)-[Reserved] 

 706.02(l)-[Reserved] 
 706.02(l)(1)-[Reserved] 

 706.02(l)(2)-[Reserved] 

 706.02(l)(3)-[Reserved] 

 
 

 706.02(m)-[Reserved] 

 706.02(n)-[Reserved] 

 
 

 706.03-Rejections Not Based on Prior Art 
 706.03(a)-[Reserved] 

 706.03(b)-[Reserved] 

 706.03(c)-[Reserved] 

 706.03(d)-[Reserved] 

 706.03(e)-[Reserved] 

 706.03(f) - 706.03(j)-[Reserved] 

 706.03(k)-[Reserved] 

 706.03(l) - 706.03(n)-[Reserved] 

 706.03(o)-[Reserved] 

 706.03(p) - 706.03(r)-[Reserved] 

 706.03(s)-[Reserved] 

 706.03(t)-[Reserved] 

 706.03(u)-[Reserved] 

 706.03(v)-[Reserved] 

 706.03(w)-[Reserved] 

 706.03(x)-[Reserved] 

 706.03(y)-[Reserved] 

 
 

 706.04-Rejection of Previously Allowed Claims 

 706.05-Rejection After Allowance of Application 

 706.06-Rejection of Claims Copied From Patent 

 706.07-Final Rejection 
 706.07(a)-Final Rejection, When Proper on Second Action 

 706.07(b)-Final Rejection, When Proper on First Action 

 706.07(c)-Final Rejection, Premature 

 706.07(d)-Final Rejection, Withdrawal of, Premature 

 706.07(e)-Withdrawal of Final Rejection, General 

 706.07(f)-Time for Reply to Final Rejection 

 706.07(g)-Transitional After-Final Practice 

 706.07(h)-Request for Continued Examination (RCE) Practice 

 
 

 
 

 707-Examiner’s Letter or Action 
 707.01-Primary Examiner Indicates Action for New Assistant 

 707.02-Applications Up for Third Action and 5-Year Applications 

 707.03‑707.04-[Reserved] 

 707.05-Citation of References 
 707.05(a)-Copies of Cited References 

 707.05(b)-Citation of Related Art and Information by Applicants 

 707.05(c)-Order of Listing 

 707.05(d)-Reference Cited in Subsequent Actions 

 707.05(e)-Data Used in Citing References 

 707.05(f)-Non-Patent Documents Having a Lengthy Citation 

 707.05(g)-Incorrect Citation of References 

 
 

 707.06-Citation of Decisions, Orders Memorandums, and Notices 

 707.07-Completeness and Clarity of Examiner’s Action 
 707.07(a)-Complete Action on Formal Matters 

 707.07(b) - 707.07(c)-[Reserved] 

 707.07(d)-Language To Be Used in Rejecting Claims 

 707.07(e)-Note All Outstanding Requirements 

 707.07(f)-Answer All Material Traversed 

 707.07(g)-Piecemeal Examination 

 707.07(h)-Notify of Inaccuracies in Amendment 

 707.07(i)-Each Claim To Be Mentioned in Each Office Action 

 707.07(j)-State When Claims Are Allowable 

 707.07(k)-Numbering Paragraphs 

 707.07(l)-Comment on Examples 

 
 

 707.08-Reviewing and Initialing by Assistant Examiner 

 707.09-Signing by Primary or Other Authorized Examiner 

 707.10-Entry 

 707.11-Date 

 707.12-Mailing 

 707.13-Returned Office Action 

 
 

 708-Order of Examination 
 708.01-List of Special Cases 

 708.02-Petition To Make Special 
 708.02(a)-Accelerated Examination 

 708.02(b)-Prioritized Examination 

 708.02(c)-Patent Prosecution Highway Program 

 
 

 708.03-Examiner Tenders Resignation 

 
 

 709-Suspension of Action 
 709.01-Overlapping Applications by Same Applicant or Owned by Same Assignee 

 
 

 710-Period for Reply 
 710.01-Statutory Period 
 710.01(a)-Statutory Period, How Computed 

 
 

 710.02-Shortened Statutory Period and Time Limit Actions Computed 
 710.02(a)-[Reserved] 

 710.02(b)-Shortened Statutory Period: Situations in Which Used 

 710.02(c)-Specified Time Limits: Situations in Which Used 

 710.02(d)-Difference Between Shortened Statutory Periods for Reply and Specified Time Limits 

 710.02(e)-Extension of Time 

 
 

 710.03-[Reserved] 

 710.04-Two Periods Running 
 710.04(a)-Copying Patent Claims 

 
 

 710.05-Period Ending on Saturday, Sunday, or a Federal Holiday 

 710.06-Situations When Reply Period Is Reset or Restarted 

 
 

 711-Abandonment of Patent Application 
 711.01-Express or Formal Abandonment 

 711.02-Failure To Take Required Action During Statutory Period 
 711.02(a)-Insufficiency of Reply 

 711.02(b)-Special Situations Involving Abandonment 

 711.02(c)-Termination of Proceedings 

 
 

 711.03-Reconsideration of Holding of Abandonment; Revival 
 711.03(a)-Holding Based on Insufficiency of Reply 

 711.03(b)-Holding Based on Failure To Reply Within Period 

 711.03(c)-Petitions Relating to Abandonment 

 711.03(d)-Examiner’s Statement on Petition To Set Aside Examiner’s Holding 

 
 

 711.04-Public Access to Abandoned Applications 
 711.04(a)-Date of Abandonment 

 711.04(b)-Ordering of Patented and Abandoned Files 

 711.04(c)-Notifying Applicants of Abandonment 

 
 

 711.05-Letter of Abandonment Received After Application Is Allowed 

 711.06-Abstracts, Abbreviatures, and Defensive Publications 
 711.06(a)-Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References 

 
 

 
 

 712-[Reserved] 

 713-Interviews 
 713.01-General Policy, How Conducted 

 713.02-Interviews Prior to First Official Action 

 713.03-Interview for “Sounding Out” Examiner Not Permitted 

 713.04-Substance of Interview Must Be Made of Record 

 713.05-Interviews Prohibited or Granted, Special Situations 

 713.06-No Inter Partes Questions Discussed Ex Parte 

 713.07-Exposure of Other Cases 

 713.08-Demonstration, Exhibits, Models 

 713.09-Interviews Between Final Rejection and Notice of Appeal 

 713.10-Interview Preceding Filing Amendment Under 37 CFR 1.312 

 
 

 714-Amendments, Applicant’s Action 
 714.01-Signatures to Amendments 
 714.01(a)-Unsigned or Improperly Signed Amendment 

 714.01(b)-[Reserved] 

 714.01(c)-Signed by Attorney or Agent Not of Record 

 714.01(d)-Amendment Signed by Applicant but Not by Attorney or Agent of Record 

 714.01(e)-Amendments Before First Office Action 

 
 

 714.02-Must Be Fully Responsive 

 714.03-Amendments Not Fully Responsive, Action To Be Taken 
 714.03(a)-Supplemental Amendment 

 
 

 714.04-Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty 

 714.05-Examiner Should Immediately Review 

 714.06-[Reserved] 

 714.07-Amendments Not in Permanent Ink 

 714.08-714.09-[Reserved] 

 714.10-Claims Added in Excess of Claims Previously Paid For 

 714.11-Amendment Filed During Interference Proceedings 

 714.12-Amendments and Other Replies After Final Rejection or Action 

 714.13-Amendments and Other Replies After Final Rejection or Action, Procedure Followed 

 714.14-Amendments After Allowance of All Claims 

 714.15-Amendment Received in Technology Center After Mailing of Notice of Allowance 

 714.16-Amendment After Notice of Allowance, 37 CFR 1.312 
 714.16(a)-Amendments Under 37 CFR 1.312, Copied Patent Claims 

 714.16(b)-Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208 

 714.16(c)-Amendments Under 37 CFR 1.312, Additional Claims 

 714.16(d)-Amendments Under 37 CFR 1.312, Handling 

 714.16(e)-Amendments Under 37 CFR 1.312, Entry in Part 

 
 

 714.17-Amendment Filed After the Period for Reply Has Expired 

 714.18-Entry of Amendments 

 714.19-List of Amendments, Entry Denied 

 714.20-List of Amendments Entered in Part 

 714.21-Amendments Inadvertently Entered, No Legal Effect 

 714.22-714.24-[Reserved] 

 714.25-Discourtesy of Applicant or Attorney 

 
 

 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 

 715.06-[Reserved] 

 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 

 715.07(d)-Disposition of Exhibits 

 
 

 715.08-Decided by Primary Examiner 

 715.09-Timely Presentation 

 715.10-Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode 

 
 

 716-Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections 
 716.01-Generally Applicable Criteria 
 716.01(a)-Objective Evidence of Nonobviousness 

 716.01(b)-Nexus Requirement and Evidence of Nonobviousness 

 716.01(c)-Probative Value of Objective Evidence 

 716.01(d)-Weighing Objective Evidence 

 
 

 716.02-Allegations of Unexpected Results 
 716.02(a)-Evidence Must Show Unexpected Results 

 716.02(b)-Burden on Applicant 

 716.02(c)-Weighing Evidence of Expected and Unexpected Results 

 716.02(d)-Unexpected Results Commensurate in Scope With Claimed Invention 

 716.02(e)-Comparison With Closest Prior Art 

 716.02(f)-Advantages Disclosed or Inherent 

 716.02(g)-[Reserved] 

 
 

 716.03-Commercial Success 
 716.03(a)-Commercial Success Commensurate in Scope With Claimed Invention 

 716.03(b)-Commercial Success Derived From Claimed Invention 

 
 

 716.04-Long-Felt Need and Failure of Others 

 716.05-Skepticism of Experts 

 716.06-Copying 

 716.07-Inoperability of References 

 716.08-Utility and Operability of Applicant’s Disclosure 

 716.09-Sufficiency of Disclosure 

 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 -Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) 
 717.02(a) -Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) 

 717.02(b) -Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked 

 717.02(c) -Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 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) 

 719-File Wrapper 
 719.01-Papers in Image File Wrapper 

 719.02-Residence of Inventor Changed 

 719.03-Classification During Examination 

 719.04-Index of Claims 

 719.05-Field of Search 

 
 

 720-Public Use Proceedings 

 721‑723-[Reserved] 

 724-Trade Secret, Proprietary, and Protective Order Materials 
 724.01-Completeness of the Patent File Wrapper 

 724.02-Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials 

 724.03-Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02 

 724.04-Office Treatment and Handling of Materials Submitted Under MPEP § 724.02 
 724.04(a)-Materials Submitted in an Application Covered by 35 U.S.C. 122 

 724.04(b)-Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b) 

 724.04(c)-Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d) 

 
 

 724.05-Petition To Expunge Information or Copy of Papers in Application File 

 724.06-Handling of Petitions To Expunge Information or Copy of Papers in Application File 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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