09Feb 2015

The Two New Declarations within the America Invents Act by Silvia Salvadori, PhD.There are two new declarations that were created by the The America Invents Act (AIA). One is the Declaration of Attribution (130(a) declaration) and the other is the Declaration of Prior Public Disclosure (130(b) declaration). These declarations provide ways to prove the 102 exceptions within the AIA statute.

The first declaration, declaration of attribution under 37 C.F.R. 130(a), is used to prove that a potential prior art subject matter was originated by one or more members of the inventive entity, that is, the disclosure was originated by one of the inventors. 

The second declaration, declaration of prior public disclosure under 37 C.F.R. 130 (b), is used to prove that the potential prior art subject matter was preceded by an inventor-originated disclosure of the same subject matter.

In this way it’s possible to disqualify the prior art cited by the examiner by invoking one of the exceptions allowed under the statute.

If the 130(a) declaration provides both (1) a statement from one or more joint inventors, that he/she/they invented the potential prior art subject matter and (2) a reasonable explanation of the presence of the additional inventors of the potential prior art subject matter, it would generally be acceptable unless there is evidence to the contrary.

The 130(b) declaration must establish that the potential prior art subject matter disclosed was previously publicly disclosed in an inventor-originated disclosure. The declaration must describe the subject matter disclosed with sufficient details and particularity, and must be accompanied by a copy of the disclosure, if it was a printed publication.

As with any evidentiary declaration, the person who signs either of the declarations must be someone with actual knowledge of the facts. So, the declarations must be signed by an inventor, joint inventor, or someone else who knows the details involved.

Of course, an applicant cannot rely on a declaration to establish an exception when the disclosure was publicly available before the grace period. In other words, a disclosure is not subject to an exception if it was made more than one year before the effective filing date of the claimed invention. In this case, the declaration will not be examined on the merits, but the applicant will be informed that the declaration is not compliant.

Both the 130(a) or (b) declarations are very important tools to overcome rejections under 102(a)(1), 102(a)(2) or both.

 

Silvia Salvadori, PhDSilvia Salvadori, PhD.
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