How NOT to Write a 1.132 Affidavit

MARK TERRY, ESQ.

A Board decision involving an online marketplace for healthcare products illustrates a common weakness in declarations submitted under 37 C.F.R. §1.132. The applicant offered a declaration to rebut an examiner’s prima facie case of obviousness, but the Board found it insufficient.

The declaration largely presented the declarant’s conclusions and opinions without factual corroboration. The Board has discretion to give little weight to broad expert statements that are unsupported by references, testing, data, or other objective evidence.

Opinion evidence may be considered during prosecution, but its persuasive value depends on the factual foundation beneath it. A declaration that simply repeats the applicant’s legal position can look like an endorsement rather than independent evidence.

The practical lesson is to make the declaration fact-driven. It should identify concrete technical facts, explain methodology, cite supporting materials, and allow the examiner or Board to draw the ultimate conclusion from the evidentiary record.