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77 J. Pat. & Trademark Off. Soc'y 391 (1995)
Affidavit or Declaration Practice Guideline

handle is hein.journals/jpatos77 and id is 417 raw text is: Affidavit or Declaration Practice Guideline Chung K. Pak** D uring prosecution of a patent application, an intellectual property attorney might decide, with his client's approval, to file either an affidavit or a declaration to overcome an objection and/or rejection. The attorney's decision to file an affidavit or a declaration may be part of his patent prosecution strategy, or may be suggested by the patent Ex- aminer. In either instance, the attorney must consider all factors af- fecting prosecution and litigation (enforcement of the patent). Many of these factors, e.g., the content, procedures, problems and solutions as- sociated with an affidavit or a declaration, are elucidated in outline form below: AFFIDAVIT OR DECLARATION PRACTICE I. Purpose: To present facts not evident from the application and the prior art to overcome rejections during EXParte prosecution before the PTO. II. Rules: A. 37 CFR 1.131: A basis for eliminating or removing certain types of references applied in a rejection by showing that the invention in question was made in the U.S. prior to the effec- tive date of the references. B. 37 CFR 1.132: A catch-all basis for presenting affidavits or declarations, which are not specifically sanctioned by other rules or regulations, to traverse a ground of rejections. Ill. Procedural Considerations A. Timing: (MPEP 715.09) 1. An affidavit or declaration presented prior to final rejection is entered and considered. 2. An affidavit or declaration presented after final rejection for the purpose of overcoming a new ground of rejection or a new requirement is entered and considered. 3. No other affidavits or declarations presented after final re- jection will be entered or considered unless a satisfactory **The author was a patent Counsel for Praxair, Inc. and was a primary examiner in Group 110 of the U.S. Patent and Trademark Office.

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