By Victoria Rieman and Marygrace Fagan

Rule 132 Declarations are an additional tool that allows applicants to submit factual evidence in response to a rejection or objection raised in a USPTO Office Action. A Rule 132 Declaration provides a mechanism for presenting evidence and secondary considerations not otherwise provided through traditional arguments. However, it is often viewed as a last resort prosecution strategy.

To have probative value, a Rule 132 Declaration must both satisfy a nexus requirement by relating to the claimed invention and be supported by objective evidence rather than legal conclusions. An examiner at the USPTO then weighs this evidence with the rest of the application’s record to make a final determination of patentability.

Reasons to Use a Rule 132 Declaration

Rule 132 Declarations are not always appropriate for every patent application, but they can be an effective tool when additional factual evidence is needed to support patentability. Below are some of the most common situations where an applicant and their patent practitioner may consider submitting a Rule 132 Declaration during prosecution:

1. Secondary Considerations – Rule 132 Declarations can be used to provide evidence of secondary considerations including unexpected results, commercial success, long-felt need and failure of others, inoperability of references, skepticism of experts, and copying by others. This evidence can be helpful when attempting to overcome an obviousness rejection under 35 U.S.C. § 103, as the information provided may point towards proof that the claimed invention would not have been obvious to a person of ordinary skill in the art.
2. Subject Matter Eligibility – Recently, the Director of the USPTO has encouraged applicants and examiners to use Rule 132 Declarations to overcome subject matter eligibility rejections under 35 U.S.C. § 101. These declarations may be particularly helpful when explaining intangible areas of innovation in software, AI, quantum, and diagnostics patent applications.

Risks When Using a Rule 132 Declaration

A Rule 132 Declaration can be a valuable tool during patent prosecution, but it may also have implications if the patent is later challenged. The declaration becomes part of the patent’s official record. As such, it may provide additional material for an opposing party to rely on, and the patent owner may be bound by statements in the declaration when addressing issues of novelty and nonobviousness in a dispute.

While filing a Rule 132 Declaration during prosecution can be an effective way to overcome an examiner’s concerns, it may not always be the right approach. As with any strategic decision, patent practitioners should weigh the potential benefits against the long-term implications and consider whether a declaration benefits the overall prosecution strategy.