'Why, I Declare' Proper Use Of Evidentiary Declarations Under New (Post-AIA) Rule 37 C.F.R. 1.130

The Leahy-Smith America Invents Act (AIA) was signed into law on September 16, 2011. While the AIA alters U.S. patent practice in several ways, perhaps the most significant change brought about by the law is the switch from a "first to invent" to a "first inventor to file" system, largely for purposes of harmonizing U.S. practice with the majority of other countries. This article explains the different ways that declarations can be used for evidentiary purposes under AIA rules and provides practical tips for right (and wrong) ways of using declarations.

U.S. utility applications fall under the AIA regime if the application contains or ever contained a claim to an invention with an effective filing date on or after March 16, 2013 or is a continuation, divisional, or continuation-in-part of an earlier application that at any time contained a claim to an invention with an effective filing date on or after March 16, 2013. As of September 2014, based on information provided by the U.S. Patent and Trademark Office (USPTO), approximately 34% of currently pending applications filed on or after March 16, 2013 are subject to the requirements of the new law.1

Before describing the use of evidentiary declarations in a post-AIA world, it is important to first understand what qualifies as prior art under the statute.

The AIA Redefines Prior Art and Sets Out Exceptions for Its Application

In addition to the switch to a first inventor to file system, the AIA also overhauled the definitions of what is considered prior art for purposes of assessing the novelty and obviousness of claims during prosecution. In contrast to pre-AIA 35 U.S.C. §102, only two subsections of the AIA identify potential prior art. 2

AIA 35 U.S.C. §102(a)(1) is most directly comparable to pre-AIA 35 U.S.C. §§102(a) and (b) and is for public disclosures having a public availability date prior to the effective filing date of the claimed invention under examination. AIA 35 U.S.C. §102(a)(2) is similar to old 35 U.S.C. §102(e) and is directed to issued or published U.S. patent documents3 "by another" with an effective filing date prior to the effective filing date of the claimed invention under examination.

In contrast to pre-AIA rules, the AIA now contains exceptions to prior art identified under §§102(a)(1) and 102(a)(2). That is, even if a prior disclosure of claimed subject matter falls within the scope of §102(a)(1) and/or §102(a)(2), it may not be used in a prior art rejection if one of the exceptions of §§102(b)(1) or 102(b)(2) applies.4

Practice Tip: With respect to the exceptions to §§102(a)(1) and 102(a)(2), it is important for practitioners to remember that §102(b)(1) exceptions apply only to §102(a)(1) prior art and that §102(b)(2) exceptions apply only to §102(a)(2) art, respectively. In other words, the exceptions for §102(b)(2) cannot be applied to §102(a)(1) art and §102(b)(1) exceptions cannot be applied to §102(a)(2) art.

Declarations for §§102(b)(1)(A) and 102(b)(2)(A) Exceptions to Prior Art

While differing in their statutory requirements, the §§102(b)(1)(A) and 102(b)(2)(A) exceptions for art raised under §§102(a)(1) and 102(a)(2), respectively, are exceptions based on "attribution." That is, if an applicant can demonstrate that the potential prior art...