C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 1—RULES OF PRACTICE IN PATENT CASES › Subpart B—National Processing Provisions

37 C.F.R. § 1.130

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

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(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.

[78 FR 11058, Feb. 14, 2013, as amended at 80 FR 17963, Apr. 2, 2015]
Notes of Decisions
Cited in 4 cases (2 in the last 5 years), 2007–2025 · leading case: Regents of the Univ. of Minnesota v. AGA Med. Corp., 660 F. Supp. 2d 1037 (D. Minnesota 2009).
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Regents of the Univ. of Minnesota v. AGA Med. Corp., 660 F. Supp. 2d 1037 (D. Minnesota 2009). “; 37 C.F.R. § 1.130 ; Manual of Pat. Exam. Proc.”
Carlson Mktg. Grp., Inc. v. Royal Indem. Co., 517 F. Supp. 2d 1089 (D. Minnesota 2007). “; 37 C.F.R. 1.130; Manual of Pat. Exam. Proc.”
Gilbert Hyatt v. Omb (9th Cir. 2021). “37 C.F.R. §§ 1.130 , 1.131, 1.132. II. FACTUAL & PROCEDURAL BACKGROUND In August 2013, Hyatt requested that OMB review USPTO Rules 111, 115, and 116, arguing that those Rules imposed “collections of information” under the PRA and thus required OMB approval and control numbers.”
In Re Selenious Acid Litig. (D.N.J. 2025). “) To support this argument, Defendants point to statements made by Plaintiff’s representatives in the prosecution history that Plaintiff developed “specialized tests and instruments . .”
— 37 C.F.R. § 1.130(a) — 1 case
In Re Selenious Acid Litig. (D.N.J. 2025). “) To support this argument, Defendants point to statements made by Plaintiff’s representatives in the prosecution history that Plaintiff developed “specialized tests and instruments . .”
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