Declaration Under 37 C.F.R. § 1.132

Summary

This template is for a declaration under 37 C.F.R. § 1.132 submitting evidence to the United States Patent and Trademark Office (USPTO) in response to an examiner's rejection or objection to a patent application. The form includes practical guidance and drafting notes. 37 C.F.R. § 1.132 provides that when a claim in a patent application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be submitted by oath or declaration. While a declaration or affidavit under 37 C.F.R. § 1.132 is typically filed along with the response to the office action that contains the rejection or objection, it should be a separate document from the response; i.e., the declaration or affidavit is filed on its own rather than being attached to the response as, for example, an appendix. For a template that will help you draft a response to an office action, see Patent Office Action Response. If you are responding to an enablement or written description rejection, see Office Action Response Argument (Enablement and Written Description Under Section 112(a)). Typically, the rebuttal of an examiner's rejection takes the form of legal arguments or a response that points out relevant features of the invention described in the application's specification. However, sometimes you will need to submit evidence beyond that found in the specification. You may submit such evidence in a declaration or affidavit under 37 C.F.R. § 1.132. For example: • If the examiner rejects claims for lack of enablement under 35 U.S.C. § 112(a), you may submit evidence to demonstrate that a person skilled in the art would be able to practice the invention without undue experimentation • If the examiner rejects claims for obviousness under 35 U.S.C. § 103 you may rebut the rejection by presenting data from experiments showing that the claimed subject matter exhibits unexpected results. (See Obviousness Rejections: Rebutting the Prima Facie Case). The declaration or affidavit should be limited to the evidence being submitted, and the evidence should directly address the issue raised in the examiner's rejection. The declaration or affidavit and should include the following: • A statement by one of the inventors in the patent application that he or she is a true inventor • A statement that the evidence provided in the declaration or affidavit is true to the best of the inventor's knowledge • The evidence (often experimental data) with sufficient explanation and detail to support the arguments that you are making in your response to the office action It is vital that you reiterate to the inventors that they have a duty of candor to the USPTO and that facts, including data from experiments that they submit to the examiner during prosecution, must be accurate and not misleading. See 37 C.F.R. § 1.56. In any later patent litigation, evidence that the inventors misled the examiner by submitting false data may render the patent unenforceable for inequitable conduct. See, e.g., Intellect Wireless, Inc. v. HTC Corp., 732 F.3d 1339, 1342 (Fed. Cir. 2013). Also remember that the declaration or affidavit, 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 claim construction purposes. 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 declaration or affidavit is limited to the presentation of evidence and does not contain 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.