Declaration Under 37 C.F.R. § 1.130

Summary

This form is for a declaration under 37 C.F.R. § 1.130 to disqualify a disclosure as prior art during the prosecution of a patent application before the United States Patent and Trademark Office (USPTO). This form includes practical guidance and drafting notes. For additional information see Declarations under 37 C.F.R. § 1.130 and § 1.132 Checklist. You may show that a disclosure does not qualify as prior art by establishing that the disclosure was made by, or was obtained directly or indirectly from, the inventor or a joint inventor. A declaration under 37 C.F.R. § 1.130 is the vehicle for submitting such evidence. It is commonly used to overcome an anticipation or obviousness rejection based on a journal article or other type of printed publication about the invention that lists both the inventor and a non-inventor as co-authors. The declaration is typically filed along with the response to the office action that contains the rejection. For a form that will help you draft a response to an office action, see Patent Office Action Response. A patent application must be filed listing the true inventors. There is, however, no similar requirement for authorship of a journal article that discusses the invention. For example, it is common for a professor to list graduate students as co-authors of a scientific journal article discussing an invention even if they only assisted in routine tasks, such as collecting data or assembling testing equipment. However, the inclusion of an author name on a journal article about an invention that does not match the inventorship of the patent application for the invention makes that journal article available as prior art under 35 U.S.C. § 102, even within the one-year grace period, unless a declaration or affidavit under 37 C.F.R. § 1.130 is filed. For a discussion of what qualifies as prior art, see Prior Art Fundamentals. A declaration under 37 C.F.R. § 1.130 includes a statement by an inventor that: • He or she is a true inventor • He or she co-authored the prior art publication – and – • The others listed as co-authors of the publication did not contribute materially to the work described in the publication While a declaration under 37 C.F.R. § 1.130 often addresses an article in a scientific journal, it can be used to address other types of public disclosures, including other kinds of printed publications. A declaration under 37 C.F.R. § 1.130 should be limited to the issues of inventorship and authorship. Arguments addressing the grounds for rejection set forth in the office action must be included in a separate office action response. Always remind the inventor about the duty of candor to the USPTO and that the information submitted in the declaration must be accurate and not misleading. See 37 C.F.R. § 1.56. Also remember that the declaration, like the accompanying office action response, will form part of the intrinsic record that may later become important in patent enforcement and validity proceedings. For example, courts may consult a declaration by an inventor to help construe claim limitations and evaluate whether the applicant disclaimed particular claim scope during prosecution. Make sure that the statements made in the declaration are limited to inventorship and authorship and do not include any unnecessary admissions that would limit claim scope. Also, avoid unnecessary characterizations of the invention. Stick to the claim language when referring to the invention and, preferably, refer to the "presently claimed subject matter," rather than "the present invention," whenever possible. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). It is important that the declaration is correctly filed and displayed in the file history. You should, therefore, include the following caption in a header in each page of the declaration: Attorney Docket No. [Attorney docket number] Application No. [Application number] Art Unit [Art unit number] Each page should also be numbered to ensure that every page has been properly filed and to facilitate referencing a particular page of the declaration in later prosecution, if necessary.