From Rule 132 Declarations to Korean Experimental Evidence: A Two-Way Guide for U.S. and Korean Patent Prosecutors

Executive Summary: This article compares U.S. 37 C.F.R. § 1.132 declaration practice with the closest Korean analogue: a KIPO written argument supported by experimental results, comparative data, expert explanation, or other technical evidence. It explains that both systems use evidence to overcome examiner rejections when attorney argument alone is insufficient, especially in obviousness or inventive-step disputes involving unexpected or advantageous technical effects. But the article emphasizes several critical differences: Korea has no formal Rule 132-style declaration mechanism; Korean post-filing evidence may clarify or verify the original disclosure but cannot become part of the specification or cure an inadequate filing; and Korean inventive step is not determined by advantageous effect alone, but by a broader inquiry into ease of conception, motivation to combine or select, ordinary creativity, technical configuration, and effect. For U.S. practitioners, the article teaches how to adapt Rule 132 habits to Korean practice without overvaluing declaration formalities or relying on new post-filing effects. For Korean practitioners, it explains how U.S. Rule 132 declarations function as formal evidentiary submissions, who may serve as a declarant, and why nexus, commensurability, closest-prior-art comparison, and disclosure boundaries remain essential.

I.             Introduction

Patent prosecutors in the United States and Korea often face the same practical problem: an examiner has made a patentability rejection, attorney argument alone may not be enough, and the applicant needs to put technical facts into the prosecution record. In the United States, the familiar tool is the declaration or affidavit under 37 C.F.R. § 1.132. In Korea, there is no exact equivalent to a U.S. Rule 132 declaration. The closest practical counterpart is a written argument submitted in response to a notice of grounds for rejection, supported where appropriate by experimental results, comparative data, a certificate of experimental results, expert technical explanation, or other documentary evidence. See 37 C.F.R. § 1.132; Manual of Patent Examining Procedure § 716; Korean Intell. Prop. Off., Patent Examination Guidelines pt. V, ch. 3, § 6.2 (Feb. 2026). Rule 1.132 requires evidence submitted to traverse a rejection or objection, where not otherwise provided for, to be submitted by oath or declaration; the KIPO Guidelines state that written arguments and documents including experimental results may be considered by the examiner even though they do not become part of the specification.

This article uses each system to teach the other. For U.S. practitioners, Korean practice can be understood as Rule 132 practice without the formal Rule 132 declaration vehicle, but with a stronger tether to the original specification. For Korean practitioners, Rule 132 practice can be understood as a formal evidentiary mechanism that often performs the same practical function as Korean experimental-results submissions, but with U.S.-specific requirements of sworn/declaration form, nexus, commensurability, and closest-prior-art comparison.

The strongest practical overlap is obviousness or inventive step. In U.S. practice, Rule 132 declarations are frequently used to rebut a prima facie case of obviousness with unexpected results, commercial success, long-felt need, failure of others, skepticism, technical prejudice, inoperability of prior art, attribution, or other factual showings. See 37 C.F.R. § 1.132; MPEP § 716; In re Piasecki, 745 F.2d 1468, 1472–73 (Fed. Cir. 1984). In Korean practice, written arguments and experimental results may support inventive step by showing an advantageous technical effect. But Korean inventive step is not an “effect-only” inquiry. Korean examination guidance requires a multi-factor analysis that considers, among other things, the ease or difficulty of conceiving the claimed invention, motivation to arrive at the claimed subject matter, ordinary creativity, the technical configuration, and the invention’s advantageous effects. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, §§ 4.2, 5, 6.3.

A second limitation is equally important. In Korea, post-filing experimental evidence cannot cure an inadequate original disclosure. Written arguments and experimental results do not become part of the specification; they may be referred to only to clarify or verify matters in the description; and reference materials cannot substitute for or supplement the description. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. V, ch. 3, §§ 6.2, 6.4. U.S. law has a related limitation: later-submitted evidence may support an obviousness rebuttal, but it does not cure lack of written description, lack of enablement, or new matter problems in the application as filed. See 35 U.S.C. §§ 112(a), 132(a); MPEP §§ 2161, 2164, 2164.05(a).

II.          The U.S. Baseline: What Rule 132 Does

Rule 132 provides that, when a claim in an application or reexamination is rejected or objected to, evidence submitted to traverse the rejection or objection “on a basis not otherwise provided for” must be submitted by oath or declaration. 37 C.F.R. § 1.132. A declaration may be used in lieu of an oath if it satisfies 37 C.F.R. § 1.68, including the warning that willful false statements are punishable under 18 U.S.C. § 1001 and may jeopardize the validity of the application or any resulting patent. 37 C.F.R. § 1.68.

The phrase “on a basis not otherwise provided for” does real work. Rule 132 is the USPTO’s general evidentiary channel; it is not the exclusive declaration mechanism in patent prosecution. Some factual showings that remove or disqualify prior art are governed by more specific rules. For applications subject to the AIA first-inventor-to-file provisions, attribution and prior-public-disclosure showings generally proceed under 37 C.F.R. § 1.130, not Rule 132. Rule 1.130(a) addresses a disclosure made by the inventor or a joint inventor, or subject matter obtained directly or indirectly from the inventor or a joint inventor. Rule 1.130(b) addresses a prior public disclosure by the inventor, a joint inventor, or another who obtained the subject matter from the inventor or a joint inventor. See MPEP §§ 717, 717.01, 2155.

Pre-AIA practice requires a separate distinction. Rule 131(a) may be available to antedate certain pre-AIA prior-art rejections by establishing prior invention, while certain pre-AIA attribution or derivation-type showings may remain Rule 132 matters. See 37 C.F.R. § 1.131; MPEP §§ 715, 716.10. Thus, a practitioner should not ask only whether evidence is needed. The practitioner should first ask what factual proposition is being proved and whether a specific rule—such as Rule 130 or Rule 131—provides the proper vehicle.

This article therefore uses “Rule 132 practice” in its narrower and more precise sense: factual evidence submitted to traverse a rejection or objection when no more specific declaration rule controls. In that role, Rule 132 is commonly used for evidence of unexpected results, commercial success, long-felt need, failure of others, skepticism, technical prejudice, inoperability of prior art, expert understanding, and other factual showings relevant to patentability. See MPEP §§ 716, 716.01. It should not be treated as a shorthand for every affidavit or declaration filed during U.S. prosecution.

The MPEP treats Rule 132 as the USPTO’s general evidentiary channel for evidence traversing rejections or objections when no more specific rule applies. MPEP § 716. The primary examiner must review Rule 132 affidavits or declarations and other evidence submitted to traverse grounds of rejection, decide whether the evidence is responsive, and determine whether it presents sufficient facts to overcome the rejection. Id. If the examiner finds the declaration insufficient, the examiner must explain why—for example, because the evidence is untimely, fails to set forth facts, is not germane to the rejection, or is not commensurate in scope with the claims. Id.

For Korean practitioners, the point is that a Rule 132 declaration is not merely a more formal version of attorney argument. It is designed to place evidence into the record. That evidence may be technical, commercial, historical, or testimonial. It may come from an inventor, a company scientist, an outside expert, a testing laboratory, a business witness, a customer, or another person with knowledge of the relevant facts. The declaration is then weighed with the rejection and the rest of the prosecution record. See In re Piasecki, 745 F.2d 1468, 1472–73 (Fed. Cir. 1984); MPEP § 716.01(d).

A typical Rule 132 declaration used to rebut obviousness by unexpected results will identify the declarant, establish qualifications and personal knowledge, identify the closest prior art, describe the testing protocol, present comparative data, explain why the result would have been unexpected to a person of ordinary skill in the art, and tie the result to the claim limitations. See In re Chupp, 816 F.2d 643, 646 (Fed. Cir. 1987); In re Johnson, 747 F.2d 1456, 1460–61 (Fed. Cir. 1984); MPEP § 716.02.

III.      The Korean Baseline: The Functional Counterpart

Korea does not have a direct counterpart to 37 C.F.R. § 1.132. There is no single Korean rule that says, in U.S.-style terms, “submit an affidavit or declaration to traverse a rejection.” The closest practical counterpart is a written argument—often accompanied by experimental results, comparative test data, a certificate of experimental results, or other supporting materials—submitted after a KIPO notice of grounds for rejection. See Patent Act art. 63(1) (S. Kor.); Korean Intell. Prop. Off., Patent Examination Guidelines pt. V, ch. 3, § 6.2. Korean Patent Act Article 63 provides that, before rejecting an application, the examiner must notify the applicant of the grounds for rejection and provide an opportunity to submit a written argument.

The Korean Guidelines explain how examiners treat written arguments and supporting documents. If a written argument is submitted with an amendment, the examiner reviews both. If only a written argument is submitted, the examiner must sufficiently consider the written argument in determining whether the notified grounds for rejection have been overcome. Korean Intell. Prop. Off., Patent Examination Guidelines pt. V, ch. 3, § 6.2.

The most important black-letter point for U.S. practitioners is this: Korean post-filing evidence does not become part of the specification and cannot cure an inadequate original disclosure. The Guidelines state that written arguments or other documents, including experimental results submitted in response to a notice of grounds for rejection, are not part of the specification. They may be referred to by the examiner because they clarify or verify the legitimacy of matters in the description of the invention. Id. In addition, where an examiner requests reference materials such as samples or experimental results, those materials must confirm that the description was definite and sufficient at filing, and documents submitted at the examiner’s request are reference materials that cannot substitute for or supplement the description. Korean Intell. Prop. Off., Patent Examination Guidelines pt. V, ch. 3, § 6.4.

The Korean submission therefore performs a Rule 132-like function only in a limited sense. It may supply technical proof beyond attorney argument. It may help the examiner evaluate inventive step, enablement, support, or other patentability issues. But it does not rewrite the application, add new matter, or supply a technical teaching that was missing from the application as filed.

IV.       Who Can Author, Sign, or Supply the Evidence?

Authorship should be separated into three questions: who signs the procedural response, who signs or authors the evidentiary statement, and who supplies the underlying facts or data. U.S. practice tends to merge the second and third questions into the identity of the Rule 132 “declarant.” Korean practice usually does not. In Korea, the counterpart is not a sworn declarant, but the person, laboratory, company, expert, inventor, or researcher whose evidence supports the written argument.

A. United States: the declarant need not be the inventor

Rule 132 does not limit the declarant to the inventor. The rule requires that evidence submitted to traverse a rejection or objection be submitted by oath or declaration, but it does not say that only an inventor may provide that oath or declaration. 37 C.F.R. § 1.132. The better question is whether the declarant has the right factual foundation for the point being proved.

The declaration itself must satisfy 37 C.F.R. § 1.68. The declarant must be warned that willful false statements are punishable and may jeopardize the application or patent, and must state that matters of the declarant’s own knowledge are true and that matters stated on information and belief are believed to be true. 37 C.F.R. § 1.68; MPEP § 716.

The person who signs the office-action response is a separate issue. Under 37 C.F.R. § 1.33(b), amendments and other papers filed in a patent application generally must be signed by a patent practitioner of record, a practitioner acting in a representative capacity under 37 C.F.R. § 1.34, or the applicant; papers submitted on behalf of a juristic entity generally must be signed by a patent practitioner. 37 C.F.R. § 1.33(b). Thus, the response may be signed by counsel, while the Rule 132 declaration is signed by the factual declarant.

A Rule 132 declarant may be an inventor, a named or unnamed company scientist, a laboratory employee who conducted testing, an outside expert, a business executive, a customer, or another person with relevant knowledge. The MPEP recognizes that objective evidence such as unexpected results, commercial success, long-felt need, inoperability of prior art, and attribution or derivation-type facts must be factually supported by appropriate evidence rather than by attorney argument alone. See MPEP §§ 716, 716.01(c); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

The choice of declarant affects weight, not merely form. A declaration from an interested inventor or assignee employee is not disregarded simply because the witness is interested, but the relationship may affect weight. An outside expert’s declaration may carry little weight if it merely states the legal conclusion that the claims are nonobvious. See MPEP § 716.01(c); In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997).

For U.S. drafting, select the declarant whose knowledge matches the evidentiary proposition. Inventors are often appropriate for conception, attribution, technical history, and experiments they personally supervised. Laboratory personnel are often better for testing protocol and raw results. Outside experts are useful for explaining what a person of ordinary skill would have expected. Business witnesses are needed for commercial success, market share, customer demand, and nexus. Attorney declarations should generally be avoided for technical or commercial facts because attorney argument cannot substitute for evidence. See In re De Blauwe, 736 F.2d at 705; MPEP § 716.01(c).

B. Korea: there is no Rule 132 “declarant,” but there is an authorized submitter and an evidentiary source

Korean practice should be described differently. The formal procedural document is the written argument or written opinion submitted in response to a KIPO notice of grounds for rejection. The Korean Patent Act and Guidelines frame this as the applicant’s opportunity to respond to the examiner’s rejection, usually through a written argument and, where appropriate, amendment. See Patent Act art. 63(1) (S. Kor.); Korean Intell. Prop. Off., Patent Examination Guidelines pt. V, ch. 3, § 6.2.

The person who may formally conduct the Korean procedure is the applicant or the applicant’s authorized representative. For nonresidents, Korean law is especially important: a person without a residential or business address in Korea generally may not initiate patent-related procedures or appeal administrative decisions unless represented by a patent administrator, except in limited circumstances when the nonresident or its representative is sojourning in Korea. Patent Act art. 5(1) (S. Kor.). A patent administrator represents the principal, within the scope of conferred authority, in patent-related procedures and appeals from administrative decisions. Patent Act art. 5(2) (S. Kor.).

The Korean written argument may be prepared and submitted by the applicant’s Korean representative or patent administrator. But the supporting technical evidence may come from many sources. In practice, the evidence may be generated or explained by the inventor, the applicant’s researchers, an in-house testing group, an outside testing laboratory, a university researcher, an independent expert, or another person or entity with relevant technical knowledge. Korean practice does not ask whether that person has executed a U.S.-style declaration with Rule 1.68 penalty language. It asks whether the material helps clarify or verify matters in the original description and whether it is persuasive on patentability. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. V, ch. 3, § 6.2.

The Korean equivalent to the U.S. question “Who should sign the declaration?” is more accurately: Who should generate, explain, or authenticate the technical evidence that the Korean written argument relies on? For advantageous technical effects, the strongest source is usually the person or institution responsible for the comparative testing. For technical interpretation, an inventor or expert may be helpful. For commercial or industry facts, a business witness may be relevant, although commercial-success evidence is usually less central to Korean ex parte prosecution than comparative technical-effect evidence.

V.          Inventive Step: Useful Analogy, but Not an Effect-Only Inquiry

A. U.S. obviousness and Rule 132 evidence

In U.S. practice, unexpected results are a familiar way to rebut a prima facie case of obviousness. The Federal Circuit has explained that an applicant may rebut obviousness by showing that the claimed invention exhibits a superior property or advantage that a person of ordinary skill in the art would have found surprising or unexpected. See In re Soni, 54 F.3d 746, 750–51 (Fed. Cir. 1995). The MPEP likewise states that evidence of unexpected results, commercial success, long-felt need, failure of others, and skepticism must be considered when timely presented. MPEP § 716.01(d).

That proposition should not be overread. Later-submitted Rule 132 evidence may help rebut a § 103 obviousness rejection, including by proving unexpected results or another objective indicium. But later evidence does not cure every defect. In particular, it does not rewrite the application’s disclosure for purposes of written description, enablement, or new matter. Written description requires possession of the claimed invention as of the filing date; enablement asks whether the specification as filed enabled a person of ordinary skill to make and use the invention without undue experimentation; and new matter may not be added to the disclosure after filing. See 35 U.S.C. §§ 112(a), 132(a); MPEP §§ 2161, 2164, 2164.05(a).

The MPEP recognizes a limited role for later evidence on enablement-related issues: an applicant may submit post-filing affidavits or other evidence to show what a skilled artisan knew at the filing date or to demonstrate that the invention works, but the showing must still establish that the disclosure was enabling as of filing. Later publications cannot supplement an insufficient disclosure to make it enabling, except as evidence of the state of the art at the relevant time. See MPEP §§ 2164.05(a), 2124.

B. Korean inventive step requires a multi-factor analysis

Korean practice uses “advantageous effect” language, but inventive step is not determined by effect alone. Under Korean Patent Act Article 29(2), an invention lacks inventive step if, before filing, a person having ordinary skill in the art could have easily made the invention based on prior art. The Guidelines explain that “could have been easily made” refers to whether the claimed invention could have been easily conceived from the prior art through ordinary creativity or through motivation induced by the prior art. See Patent Act art. 29(2) (S. Kor.); Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, §§ 4.2, 5.

KIPO’s examination framework directs the examiner to consider the overall state of the art, the technical field, the problem to be solved, the technical configuration, and advantageous effects. The Guidelines state that inventive step is determined comprehensively, while focusing on the difficulty of the technical configuration. They also state that advantageous effects should be considered, but that the determination mainly focuses on whether there was motivation to arrive at the claimed subject matter or whether the difference from the prior art amounts only to ordinary creativity. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, §§ 5, 6.3.

For U.S. practitioners, the Korean phrase “advantageous effect” should sound familiar, but it should not be treated as a perfect synonym for U.S. “unexpected results.” The Korean analysis asks whether the claimed invention would have been easy to conceive in view of the prior art, whether the prior art supplied a reason or motivation to combine or select, whether the difference reflects ordinary creativity, and whether the claimed invention produces an advantageous effect that supports inventive step.

C. Selection inventions after Supreme Court precedent

The multi-factor character of Korean inventive-step analysis is especially important for selection inventions. Earlier discussions of Korean selection-invention practice often focused heavily on remarkable or outstanding effects. Current guidance, reflecting Korean Supreme Court precedent, warns against determining inventive step only by outstanding effect when the technical feature itself was difficult to conceive.

KIPO’s Guidelines state that where a prior art reference discloses a superordinate concept and a later application claims a subordinate concept, if the technical feature covered by the subordinate concept would have been difficult to conceive even though the superordinate concept was known, inventive step is not denied. The Guidelines further state that inventive step should not be determined only on the basis of an outstanding effect, without considering the difficulty of conceiving the technical feature, and cite Supreme Court [S. Kor.], Apr. 8, 2021, 2019Hu10609. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, § 6.4.1.

Commentary on the 2021 Supreme Court decision similarly describes the Court as applying general inventive-step principles to selection inventions, considering both technical-configuration difficulty and remarkable effects. Relevant factors include the number of alternatives encompassed by the prior-art genus, whether the prior art provided reason or motivation to select the claimed species, structural similarity, and whether the claimed invention produced a remarkable effect. See Supreme Court [S. Kor.], Apr. 8, 2021, 2019Hu10609.

For article purposes, this point is worth stating plainly: advantageous effect can be powerful evidence of Korean inventive step, but it is not the whole inquiry. Where the claimed technical feature itself was difficult to select or conceive, that difficulty may support inventive step even apart from an outstanding effect. Conversely, where selection or combination was strongly motivated and technically straightforward, effect evidence must be especially well tied to the claim, the prior art, and the original disclosure.

D. Korean post-filing evidence remains tethered to the original disclosure

Korean advantageous-effect evidence is also limited by the original disclosure. The Guidelines state that, even if an advantageous effect is not explicitly disclosed, the examiner may assess inventive step from argument and evidence such as experimental results if the effect is easily recognized by a person skilled in the art from the description and drawings. But if the asserted effect is not supported by the description and is not inferred from the description or drawings, the effect should not be considered. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, § 6.3.

For selection inventions, the Guidelines permit an applicant to concretely assert an advantageous effect by submitting materials relating to experimental comparisons if the effect is doubted. But supplementary experimental data should not go beyond the scope of the disclosure in the specification as originally filed. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, § 6.4.1.

The resulting practice point is central for U.S. counsel: post-filing data in Korea should be drafted as confirmation of what the application already disclosed or reasonably taught, not as a new technical story.

VI.       Federal Circuit Lessons for Korean Experimental-Evidence Practice

Federal Circuit Rule 132 cases are useful in this comparative article because they show what makes evidentiary submissions succeed or fail. The same lessons are useful in Korea, with the caveat that the Korean submission is not formally a sworn declaration and remains bounded by the original-disclosure rules discussed above.

A. Evidence must be evidence, not attorney characterization

The Federal Circuit has repeatedly distinguished factual evidence from attorney argument. In In re De Blauwe, the court held that unexpected results must be established by factual evidence and that mere argument or conclusory statements are not enough. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). The applicant had argued that the claimed heat-shrinkable articles unexpectedly solved a splitting problem, but the record lacked comparative experimental data showing that prior-art articles split and that the claimed articles avoided that result. Id. at 705–06.

For Korean practitioners learning U.S. law, a Rule 132 declaration should not merely say that the invention has a “remarkable effect,” “excellent performance,” or “unexpected superiority.” It should prove the effect with facts. For U.S. practitioners learning Korean practice, a written argument may carry more weight when it is supported by experimental results or comparative evidence, because the evidence verifies the technical assertions made in the argument. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. V, ch. 3, § 6.2.

B. Compare against the right prior art

The Federal Circuit’s best positive example is In re Chupp. There, the claimed herbicidal compound differed from the closest prior-art compound by a single methylene group. In re Chupp, 816 F.2d 643, 644–45 (Fed. Cir. 1987). To rebut obviousness, the applicant submitted declarations comparing the claimed compound with the closest prior-art compounds and commercial herbicides. Id. at 645. The evidence showed superior selectivity—crop safety combined with weed-killing activity—over the closest prior art. Id. The Federal Circuit reversed the obviousness rejection, holding that evidence that a compound is unexpectedly superior in one property within a spectrum of common properties can be enough to rebut a prima facie case. Id. at 646.

The negative counterpart is In re Johnson. The applicant argued unexpected results based on a comparison to one prior-art compound, but the Federal Circuit affirmed the rejection because the evidence did not permit a conclusion respecting the relative effectiveness of the claimed compounds and the compounds of the closest prior art. In re Johnson, 747 F.2d 1456, 1460–61 (Fed. Cir. 1984). The MPEP states the corresponding rule: a Rule 132 declaration should compare the claimed subject matter with the closest prior art to effectively rebut a prima facie obviousness case. See MPEP § 716.02(e).

The Korean drafting point is comparable but not identical. A Korean experimental-results submission should address the cited invention or closest prior-art teaching that actually drives the inventive-step rejection. But the response should also address ease of conception, motivation to combine or select, and whether the claimed difference reflects ordinary creativity, not only the effect shown by the data.

C. The whole record must be weighed

In re Piasecki explains the role of rebuttal evidence in U.S. examination. Once the examiner has made a prima facie case and the applicant submits rebuttal evidence, the decisionmaker must evaluate the whole record. In re Piasecki, 745 F.2d 1468, 1472–73 (Fed. Cir. 1984). Evidence of secondary considerations is not reserved only for close cases; it must be considered as part of all the evidence. Id. at 1473; see also Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983).

For Korean practitioners, Piasecki explains why U.S. prosecutors invest in declarations. A Rule 132 declaration is intended to change the evidentiary record on which patentability is decided. For U.S. practitioners, Korean experimental results or certificates may similarly shape the examiner’s view of inventive step, but within a framework that separately evaluates technical configuration, motivation, ordinary creativity, advantageous effect, and original-disclosure support.

D. Unexpected means unexpected, not merely better

In re Soni is applicant-friendly, but it should be read carefully. The Federal Circuit held that where an applicant demonstrates substantially improved results and states that the results were unexpected, that showing may suffice absent evidence to the contrary. In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). But Soni also reaffirmed that unexpected results must be established by factual evidence and that mere argument or conclusory statements do not suffice. Id. at 750.

The Korean counterpart is that a claimed invention’s effect may support inventive step where the effect is qualitatively different or quantitatively prominent and not foreseeable. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, § 6.3. But the evidence should not be presented as if effect alone ends the inquiry. The submission should also explain why the claimed technical configuration was not easily conceived or selected from the prior art and why the prior art did not provide sufficient motivation to arrive at it.

E. A prosecution declaration may not survive litigation if the evidentiary theory is weak

Pfizer Inc. v. Apotex Inc. is a useful litigation stress test. During prosecution, Pfizer relied on the Wells Declaration to argue that amlodipine besylate had a desirable and unpredictable combination of properties. Pfizer Inc. v. Apotex Inc., 480 F.3d 1348, 1355–56 (Fed. Cir. 2007). The Federal Circuit later held the claims invalid for obviousness, reasoning among other things that Pfizer had not adequately shown that the alleged superiority was unexpected compared with the closest prior art or with what skilled artisans would have expected. Id. at 1370–72.

Pfizer is valuable for both audiences because it shows that declaration evidence should be drafted for more than immediate allowance. A declaration that says a result was unpredictable may be insufficient if it fails to define the expected baseline, fails to compare against the closest prior art, or proves only routine optimization. Id. at 1368–72. Korean submissions face a parallel discipline: data should be comparative, legally framed, tied to the claims, and anchored in the original disclosure.

VII.   How U.S. Practitioners Should Translate Rule 132 Habits into Korean Practice

A U.S. practitioner preparing a Korean response should begin with familiar Rule 132 questions: What fact must be proved? Who can prove it? What data support it? What prior art should be used as the comparator? Which claim limitation creates the asserted effect? Korean law requires several adjustments.

First, Korea does not require the U.S. practitioner to reproduce a Rule 132 declaration format. The stronger Korean practice is usually a written argument that explains the legal relevance of the evidence, accompanied by experimental results, a comparative test report, or a certificate of experimental results. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. V, ch. 3, § 6.2. The evidence should be framed as clarifying or verifying matters in the originally filed disclosure, not as a substitute specification. Id.

Second, for a nonresident applicant, the Korean filing and response should be coordinated through Korean counsel or an authorized patent administrator. See Patent Act art. 5(1)–(2) (S. Kor.). Thus, the U.S. question “Who signs the Rule 132 declaration?” becomes two Korean questions: who is authorized to make the procedural submission to KIPO, and who is the best source of the technical evidence?

Third, for a Rule 132-style unexpected-results argument, the strongest Korean evidence package usually includes comparative data generated or verified by a technically credible source: an in-house scientist who ran the tests, an independent laboratory, a university researcher, or an expert who can explain why the result is qualitatively different or quantitatively prominent over the prior art. But the argument should also address the inventive-step framework beyond effect: the prior art’s teaching, the motivation to combine or select, ordinary creativity, and whether the claimed technical configuration itself was difficult to conceive. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, §§ 5, 6.3, 6.4.1.

Fourth, the original-disclosure tether should be treated as a threshold issue, not a drafting afterthought. If the asserted effect is not supported by the description and cannot be inferred from the description or drawings, the effect should not be considered. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, § 6.3. Written arguments and experimental results do not become part of the specification, and reference materials cannot substitute for or supplement the description. See id. pt. V, ch. 3, §§ 6.2, 6.4.

For selection inventions, the Korean rule is especially important. The Guidelines state that a selection invention may have inventive step if it achieves an advantageous effect over the prior art and that all specific means included in the selection invention should have advantageous effects that are qualitatively different or quantitatively prominent. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, § 6.4.1. But after Supreme Court [S. Kor.], Apr. 8, 2021, 2019Hu10609, the inquiry should not focus only on outstanding effect; the difficulty of conceiving the claimed subordinate concept or technical feature must also be considered. Id.

For numerical-range inventions, Korea likewise focuses on whether the alleged criticality is objectively confirmed. The Guidelines state that, for critical significance of a numerical range to be recognized, the technical meaning of the numerical limitation should be described, and embodiments or supplemental materials should prove that the upper and lower limits are critical; generally, criticality should be objectively confirmed with experimental results covering the whole numerical range. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, § 6.4.2.

A practical U.S.-to-Korea checklist is therefore:

U.S. Rule 132 habit	Korean adaptation
Identify the rejection	Identify the specific KIPO notice of grounds for rejection and the cited invention.
Choose the declarant	Choose the evidence source: inventor, applicant researcher, in-house testing group, outside laboratory, university researcher, or expert.
Sign and submit the response	Coordinate with the applicant’s Korean representative or patent administrator, especially for nonresident applicants.
Compare to closest prior art	Compare to the cited invention or prior art that actually drives the inventive-step rejection.
Show unexpected results	Show advantageous effect that is qualitatively different or quantitatively prominent.
Address the full inventive-step inquiry	Discuss ease or difficulty of conception, motivation to combine or select, ordinary creativity, technical configuration, and effect.
Establish nexus	Tie the effect to the claimed feature and to the problem solved.
Address commensurability	Show the effect across the claim scope, especially for selection or numerical-range inventions.
Use post-filing data	Frame later data as verifying an effect disclosed or inferable from the original specification or drawings.
Avoid disclosure overreach	Do not use experimental results as a substitute for an inadequate original description.

VIII.                  How Korean Practitioners Should Translate Korean Evidence Practice into Rule 132 Practice

Korean practitioners approaching U.S. practice should resist the instinct to rely only on attorney explanation in an office-action response. In the United States, the prosecutor should ask whether the critical assertion is a legal argument or an evidentiary fact. If the assertion is factual—unexpected technical superiority, commercial success, long-felt need, failure of others, industry skepticism, inoperability of prior art, expert understanding, or attribution—a Rule 132 declaration may be the proper vehicle. See 37 C.F.R. § 1.132; MPEP § 716.

A U.S. declaration must satisfy formal declaration practice. The declarant should sign a declaration containing the required warning that willful false statements are punishable and may jeopardize the validity of the application or resulting patent. See 37 C.F.R. § 1.68. The declaration should state the declarant’s qualifications, personal knowledge, documents reviewed, testing performed, and factual conclusions. It should avoid legal conclusions such as “the claims are patentable” and focus instead on the underlying facts that support patentability. See MPEP § 716.

Korean practitioners should also separate response signature from declaration signature. The office-action response may be signed by U.S. counsel under 37 C.F.R. § 1.33(b), while the declaration is signed by the witness with the relevant facts. See 37 C.F.R. §§ 1.33(b), 1.68, 1.132. For a corporate applicant, U.S. counsel will often sign the response, while a scientist, inventor, technical expert, business witness, or other declarant signs the Rule 132 declaration.

For Korean practitioners, the most important U.S. drafting concepts are nexus, commensurability, and closest prior art. Nexus means a legally and factually sufficient connection between the evidence and the claimed invention. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996); MPEP § 716.01(b). Commensurability means the evidence must support the claim scope for which it is offered. See In re Dill, 604 F.2d 1356, 1361 (C.C.P.A. 1979); MPEP § 716.02(d). Closest prior art means the evidence should compare the claimed invention to the most relevant prior-art embodiment, not to an artificially weak comparator. See In re Johnson, 747 F.2d at 1460–61; MPEP § 716.02(e).

The treatment of later evidence also requires care. U.S. practice is more receptive than Korean practice to later-discovered advantages in the obviousness analysis. But that does not mean later data can cure an inadequate original disclosure. Written description, enablement, and new matter must still be assessed against the application as filed. See 35 U.S.C. §§ 112(a), 132(a); MPEP §§ 2161, 2164, 2164.05(a). Korean practitioners should therefore treat Rule 132 as an evidentiary tool for traversing appropriate rejections, not as a way to repair a specification that failed to describe or enable the invention at filing.

A practical Korea-to-U.S. checklist is therefore:

Korean prosecution habit	U.S. Rule 132 adaptation
Submit written argument explaining technical effect	Consider whether the factual assertion needs a separate Rule 132 declaration.
Attach experimental results	Have the scientist, testing lab, or expert explain the protocol, data, and expected baseline.
Rely on applicant/inventor explanation	Choose the declarant based on personal knowledge and evidentiary need, not title alone.
Explain advantageous effect	Explain unexpectedness from the viewpoint of a person of ordinary skill in the art.
Address cited invention	Compare to the closest prior art, not merely a convenient comparator.
Argue inventive step holistically	In U.S. obviousness, integrate the declaration with the whole-record obviousness analysis.
Use post-filing evidence	Use it to rebut obviousness where appropriate; do not assume it cures written description, enablement, or new matter issues.
Submit through Korean representative	U.S. response may be signed by counsel, but the declaration must be signed by the witness/declarant with Rule 1.68 language.

IX.       Comparative Hypothetical

Assume a claim recites a pharmaceutical composition containing compound A within a specified dosage range. The examiner cites prior art disclosing a genus containing many structurally related compounds, including compound B, and rejects the claim as obvious in the United States or lacking inventive step in Korea. After filing, the applicant generates comparative data showing that compound A has ten-fold improved oral bioavailability and materially reduced toxicity compared with compound B.

In the United States, the applicant may submit a Rule 132 declaration from a scientist. The declaration should identify the closest prior art, explain why compound B is the relevant comparator, describe the testing protocol, present the bioavailability and toxicity data, explain the expected baseline, and state why a person of ordinary skill would not have expected the magnitude or combination of improvements. See In re Chupp, 816 F.2d at 646; In re Soni, 54 F.3d at 750–51; Pfizer, 480 F.3d at 1370–72. The accompanying response should argue that the declaration rebuts the prima facie case on the whole record. See In re Piasecki, 745 F.2d at 1472–73.

The U.S. declarant should be selected based on the fact being proved. If the key evidence is the comparative bioavailability and toxicity data, the best declarant may be the scientist who conducted or supervised the testing. If the issue is what a skilled artisan would have expected before the invention, an outside expert may be useful. If the evidence concerns commercial adoption of compound A, a business witness may be needed. The office-action response itself may be signed by U.S. counsel, but the declaration should be signed by the witness with the relevant knowledge. See 37 C.F.R. §§ 1.33(b), 1.68, 1.132.

In Korea, the applicant would usually submit a written argument supported by comparative experimental results or a certificate of experimental results. The response should explain that the original specification disclosed, or at least enabled the skilled person to recognize, the relevant therapeutic, pharmacological, or safety effect. It should then show that the later data verify an advantageous effect that is qualitatively different or quantitatively prominent compared with the prior art and that the effect could not have been foreseen. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, §§ 6.3, 6.4.1; id. pt. V, ch. 3, § 6.2.

The Korean response should not stop there. If the prior art disclosed a broad genus and the claim selects compound A, the response should also address whether a skilled person would have had reason or motivation to select compound A from the genus, the number and nature of alternatives disclosed in the prior art, structural similarity, and whether the technical feature of compound A was difficult to conceive. See Supreme Court [S. Kor.], Apr. 8, 2021, 2019Hu10609; Korean Intell. Prop. Off., Patent Examination Guidelines pt. III, ch. 3, § 6.4.1. The effect data remain important, but they are part of a broader inventive-step showing.

The same data may therefore be useful in both systems, but the legal framing changes. In the United States, the question is whether the evidence rebuts the prima facie case of obviousness on the whole record without overstepping separate disclosure requirements. In Korea, the question is whether the evidence confirms an advantageous technical effect recognizable from the original disclosure and supports inventive step when considered together with ease of conception, motivation to select or combine, ordinary creativity, and the claimed technical configuration.

X.          Conclusion

Rule 132 practice and Korean experimental-evidence practice share a common prosecutorial instinct: when legal argument is not enough, prove the technical fact. They implement that instinct differently.

In the United States, 37 C.F.R. § 1.132 supplies a formal evidentiary mechanism. It allows applicants to place sworn or declared factual evidence into the prosecution record, and the examiner must consider that evidence in deciding whether the rejection has been overcome. See 37 C.F.R. § 1.132; MPEP § 716. The declarant need not be the inventor; the declarant should be the person best positioned to prove the relevant fact. The response may be signed by counsel, but the declaration should be signed by the witness whose facts matter.

In Korea, the counterpart is not a declaration rule, but a response structure: a written argument supported by experimental results, comparative data, or other materials that clarify or verify the original disclosure. See Korean Intell. Prop. Off., Patent Examination Guidelines pt. V, ch. 3, § 6.2. The formal submission is made by the applicant or authorized representative, and nonresident applicants generally must act through a patent administrator. See Patent Act art. 5(1)–(2) (S. Kor.). The supporting evidence may come from whoever is technically best positioned to supply it: an inventor, researcher, testing laboratory, expert, or other knowledgeable source.

For U.S. practitioners, the Korean lesson is to bring the evidentiary discipline of Rule 132 practice while respecting Korean limits: post-filing evidence cannot repair an inadequate original disclosure, and inventive step should be argued through the full Korean framework of motivation, ease of conception, ordinary creativity, technical configuration, and advantageous effect. For Korean practitioners, the U.S. lesson is to use Rule 132 as a formal evidentiary tool where a factual showing is needed, while remembering that later evidence useful for obviousness does not erase separate written-description, enablement, or new matter problems.

The best submission in either office answers the same core question: what claimed feature produces what technical effect, compared with what prior art, proved by whom, within what disclosure boundary, and why should that fact change the patentability analysis?