MPEP says,

When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.

I have not received the first office action yet.

If I submit "objective evidence" now, do I have to file any Affidavit or Declaration?

  • "application or a patent under reexamination": is your application/patent under reexamination? I do not get why would you file any evidence if no claim has been rejected or objected to since no office action has been issued so far. Commented Dec 26, 2019 at 19:55
  • To give a good answer it would help to have an idea what type of evidence you are thinking would help you overcome the rejection you are expecting.
    – George White
    Commented Dec 26, 2019 at 23:22
  • @theEuropeist MPEP says, Objective evidence relevant to the issue of obviousness must be evaluated by Office personnel. Id. at 17-18, 148 USPQ at 467. Such evidence, sometimes referred to as “secondary considerations,” may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results. The evidence may be included in the specification as filed, accompany the application on filing, or be provided in a timely manner at some other point during the prosecution.. Commented Dec 27, 2019 at 4:54
  • @theEuropeist I'm just worried about the timely manner part. If the company that's copying my work stopped copying and if I submit the evidence at that time, i'm not sure whether that will be accepted as evidence. That's the reason I wanna submit the evidence now. Commented Dec 27, 2019 at 4:56
  • @GeorgeWhite The evidence is for 103 rejection. I believe that I can overcome the 103 rejection without submit evidence by providing enough rationale(s), but I also believe that submitting evidence can make the job easier. I have "objective evidence" for "copying" and "failure of others". I would like to submit evidence for both of them. Thanks Commented Dec 27, 2019 at 5:01

1 Answer 1


The way rejections and objections are usually addressed is point by point according to the actual rejection or objection. The evidence you need to submit really does depend on the details of the office action.

When you have the rejection you will be in a better position to tailor your affidavit.

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