On April 7, 2021, an attorney for AB Corp. files a U.S. nonprovisional patent application claiming subject matter X. Anwesha is the inventor named in a signed application data sheet (ADS), but there is no inventor's oath or declaration under 37 CFR 1.63 of record. The examiner finds a journal article disclosing subject matter X with a publication date of November 1, 2020, which is within the grace period. The journal article lists Anwesha and Bob as coauthors. There is no evidence of record to indicate that Bob did not invent subject matter X disclosed in the journal article. Accordingly, the examiner rejects the claim to X as being anticipated under 35 U.S.C. 102(a)(1) by the journal article. In response to the prior art rejection, AB Corp.'s attorney files a declaration under 37 CFR 1.130(a) signed by Anwesha averring that she is the sole inventor of the subject matter X disclosed in the article. Anwesha also explains in the declaration that Bob was a graduate student working under her direction and supervision and did not contribute to the conception of the claimed invention. In other words, Anwesha’s declaration establishes that Bob was not a joint inventor of subject matter X.

The examiner should withdraw the rejection because the declaration establishes that the journal article is not prior art. Anwesha's declaration includes a statement that Anwesha invented X, so there is no need for the examiner to require a signed inventor's oath or declaration under 37 CFR 1.63 at this time in order to withdraw the rejection. Furthermore, the declaration properly includes a reasonable explanation of Bob's involvement with the journal article. A statement from Bob is not needed. There is no evidence in the record to suggest that Bob was a joint inventor of X.

An attorney for AB Corp. files a U.S. patent application disclosing and claiming subject matter Y on June 2, 2021. Alexis is the inventor named in a signed ADS, but there is no inventor's oath or declaration under 37 CFR 1.63 on file. The examiner finds a U.S. patent application publication (PGPub) claiming subject matter Y and Z that was published on January 14, 2021, which is within the grace period. The PGPub lists Alexis and Mehdi as joint inventors. There is no evidence of record to indicate that Mehdi did not invent subject matter Y as disclosed and claimed in the PGPub to Alexis and Mehdi. Accordingly, the examiner rejects the claim to Y as being anticipated by the PGPub under 35 U.S.C. 102(a)(1) based on its publication date, and under 35 U.S.C. 102(a)(2) based on its effectively filed date.

In response to the prior art rejections, AB Corp.’s attorney files a 37 CFR 1.130(a) declaration signed by Alexis averring that she invented subject matter Y as disclosed and claimed in the PGPub. The examiner should maintain the rejections under both 35 U.S.C. 102(a)(1) and 102(a)(2) because the declaration fails to establish that Mehdi is not a joint inventor of Y. Alexis' declaration under 37 CFR 1.130(a) does include a statement that Alexis invented Y, so there is no need for the examiner to require a signed inventor's oath or declaration under 37 CFR 1.63 at this time in order to withdraw the rejection. However, Alexis’ declaration is ineffective because it lacks a reasonable explanation of Mehdi’s role in the PGPub. If Alexis’ declaration had stated that Mehdi was named as an inventor of the PGPub because Mehdi invented Z, the declaration would have been sufficient; a corroborating statement from Mehdi would not have been needed.

Note that in accordance with compact prosecution, it is appropriate in Example 2 for the examiner to reject under both sections of 35 U.S.C. 102(a) because the U.S. patent document reference has a public availability date (that is, either a publication date or an issue date) within the grace period. If the 35 U.S.C. 102(a)(1) date had been prior to the grace period, then no 35 U.S.C. 102(a)(2) rejection over the same disclosure would have been necessary because no exception could possibly have applied to overcome the 35 U.S.C. 102(a)(1) rejection. Given the facts of Example 2, however, an applicant’s response could possibly establish an exception to overcome one of the rejections while allowing the examiner to maintain the other rejection. At the time that a rejection is made, the examiner cannot foresee how the applicant will respond. Thus, in order to conclude prosecution in a timely manner and avoid the possibility of an additional non-final action, the examiner should make both a 35 U.S.C. 102(a)(1) rejection and a 35 U.S.C. 102(a)(2) rejection when the 35 U.S.C. 102(a)(1) date of a U.S. patent document is within the grace period year.

On March 16, 2021, an attorney for Acme Corp. files a U.S. patent application claiming subject matter X. Ali is the inventor named in a signed ADS, but there is no inventor's oath or declaration under 37 CFR 1.63 on record. The examiner finds a September 10, 2021 U.S. patent application publication (PGPub) that names Ming as the inventor and that discloses but does not claim subject matter X. The effectively filed date of Ming’s application is January 7, 2020, which is before Acme's filing date. Therefore, Ming’s PGPub is potential prior art under 35 U.S.C. 102(a)(2). However, Ming’s PGPub is not potential prior art under 35 U.S.C. 102(a)(1) because it published after Acme's filing date. The examiner should reject the claim to X under 35 U.S.C. 102(a)(2) as being anticipated by Ming’s PGPub. At the time of the rejection, the examiner has no information about Ali's interaction with Ming.

In the reply to the Office action, Acme's attorney files a declaration under 37 CFR 1.130(a) signed by Ali to show that Ming's disclosure of X is not prior art because Ming learned about X from Ali. The declaration from Ali explains the circumstances under which Ali privately told Ming about X. Ali's declaration does not state that Ali is the inventor of X.

The examiner should maintain the rejection under 35 U.S.C. 102(a)(2) because the record fails to establish that Ali invented X. Specifically, Ali's 37 CFR 1.130(a) declaration does not state that Ali invented X, and there is also no inventor's oath or declaration under 37 CFR 1.63 of record to establish that Ali invented X. Thus, although Ali told Ming about X, it is not clearly established on the record that Al invented X. In order to establish that the exception under 35 U.S.C. 102(b)(2)(A) applies and overcome the rejection, it is necessary to establish that Ali invented X. Acme's attorney could do that by submitting either a new declaration under 37 CFR 1.130(a) which states that Ali invented X or an inventor's oath or declaration under 37 CFR 1.63 signed by Ali.

Note that, in this example, determining the grace period is not needed because the grace period is only relevant to potential prior art as of a public availability date. In other words, the grace period is only relevant when there is potential prior art under 35 U.S.C. 102(a)(1). In this example, Ming's PGPub was not publicly available until after Acme Corp. filed the application claiming X. Therefore, Ming’s PGPub was not prior art under 35 U.S.C. 102(a)(1) and no exceptions involving the grace period can possibly apply.

Similar to Example 3, on March 16, 2021, an attorney for Acme Corp. files a U.S. patent application claiming subject matter X. In contrast to Example 3, an inventor's oath or declaration under 37 CFR 1.63 signed by Ali is with the application. The examiner finds a U.S. patent to Gopal that issued on November 10, 2020 and discloses but does not claim subject matter X. Gopal’s patent is potential prior art under 35 U.S.C. 102(a)(1) because the issue date of Gopal’s patent is before Acme's filing date and falls within the grace period. Accordingly, it is possible for an exception under 35 U.S.C. 102(b)(1)(A) to apply. In addition, the effectively filed date of Gopal’s application is also before Acme's filing date, so Gopal’s patent is potential prior art under 35 U.S.C. 102(a)(2) as well.

Similar to example 2, it is appropriate for the examiner to reject the claims to X as anticipated under both sections of 35 U.S.C. 102(a) because the reference is a U.S. patent document having a public availability date (in this case, an issue date) that is within the grace period. The examiner should be aware that it is possible for the applicant to invoke a prior art exception under 35 U.S.C. 102(b)(1)(A) and show that Gopal’s patent is not prior art under 35 U.S.C. 102(a)(1) but Gopal’s patent still remains available as prior art under 35 U.S.C. 102(a)(2). Therefore, the examiner should make anticipation rejections under both 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) in accordance with compact prosecution guidance. At the time of the rejection, the examiner has no information about Ali's interaction with Gopal.

In reply to the Office action, Acme's attorney files a 37 CFR 1.130(a) declaration signed by Gopal averring that Ali told him about subject matter X as disclosed in Gopal’s patent. In the reply, Acme's attorney also calls the examiner's attention to the fact that an inventor's oath or declaration signed by Ali is already of record. Note that this example is similar to example 3, but here Gopal signs the 37 CFR 1.130(a) declaration rather than Ali.

The examiner should withdraw the rejections under both 35 U.S.C. 102(a)(1) and 102(a)(2) based on the Gopal patent because the evidence of record establishes that the disclosure of X in Gopal’s patent is attributable to Ali. In other words, there is evidence of record that Ali invented X and Gopal’s disclosure originated with Ali. In view of Gopal’s 37 CFR 1.130(a) declaration, it is clear that Gopal did not invent X because the record shows that Gopal learned about it from Ali. Furthermore, there is an inventor's oath or declaration under 37 CFR 1.63, signed by Ali, of record in the application file. The above evidence shows that Ali is an inventor of X.

Note that, in this example, the fact that Gopal’s patent did not claim X eliminates the possibility of derivation. If Gopal’s patent did claim X, then derivation issues may be present. The PTAB will consider instituting a derivation proceeding when a patent applicant submits a petition under 37 CFR 42.402 alleging derivation by an earlier applicant or patentee.

On May 18, 2021, an attorney for Acme Corp. files a U.S. patent application claiming subject matter X. An inventor’s oath or declaration under 37 CFR 1.63 signed by Maria is also filed with the application. During the prior art search, the examiner finds a journal article authored by Keiko that published on March 16, 2021 and discloses the same subject matter X. The journal article by Keiko is publicly available before Acme's filing date. Accordingly, the examiner should reject the claims to X as being anticipated by Keiko under 35 U.S.C. 102(a)(1). At the time of the rejection, the examiner has no information about Maria’s prior public disclosure.

In reply to the Office action, Acme’s attorney files a 37 CFR 1.130(b) declaration signed by Maria averring that she had disclosed X at a virtual conference on June 7, 2020, which is prior to the public availability date of Keiko’s disclosure of X in the journal article. The reply also includes a copy of Maria’s presentation slides at the virtual conference. In addition, the reply calls the examiner's attention to the inventor's oath or declaration signed by Maria that is already of record.

The examiner should withdraw the anticipation rejection under 35 U.S.C. 102(a)(1) because the evidence of record establishes that Maria had made a prior public disclosure of the same subject matter disclosed in Keiko’s journal article. It is important to note that if a prior public disclosure is made by a printed publication, 37 CFR 1.130(b)(1) requires that a copy be included with the declaration. Acme has complied with this requirement by supplying a copy of the conference presentation slides. Furthermore, the application file includes an inventor's oath or declaration under 37 CFR 1.63 signed by Maria. Therefore, the record contains sufficient evidence that Maria is the inventor of X. Finally, it is clear that Maria disclosed the same subject matter as Keiko because both disclosed X.

This example has the same facts as example 1 above, but in this example, the journal article to Keiko discloses not only X, but also Y and a genus that encompasses both X and Y. As in example 1, the examiner should make an anticipation rejection under 35 U.S.C. 102(a)(1) for the claims to X.

At the time of the rejection, the examiner has no information about Maria’s prior public disclosure and cannot predict how the applicant will respond. Thus, in order to conclude prosecution in a timely manner and avoid the possibility of an additional non-final action, the examiner should consider whether Acme's claim to X can be rejected as obvious over Keiko’s disclosure of Y. The disclosure of Y by Keiko is still available as prior art because Maria’s disclosure of X is not the same subject matter as Keiko’s disclosure of Y. If the applicant shows that the Keiko’s disclosure of X and the genus that encompasses X and Y is not prior art in response to the rejection, the examiner could maintain the obviousness rejection based on Keiko’s disclosure of Y and make the next Office action final, unless it is not appropriate for other reasons. Stated another way, the second Office action cannot be made final if a new obviousness rejection based on Keiko’s disclosure of Y is made in response to the filing of the 37 CFR 1.130(b) declaration, assuming Acme did not amend the claims.

Note that Maria’s prior public disclosure of X is considered to be the same subject matter as Keiko’s later‐disclosed genus that includes X, in the same sense that a species can be said to anticipate a genus. In other words, the inventor is not penalized just because a third party sees the inventor's disclosure and then re‐publicizes it in a more generalized fashion.