The Four Requirements of Pre-AIA 35 U.S.C. 102(d)

[Editor Note: This MPEP section is

not applicable

to applications

subject to examination under the first inventor to file (FITF) provisions of the AIA

as set forth in

35 U.S.C. 100 (note)

. See

MPEP

§ 2159

et seq. to determine whether an application is

subject to examination under the FITF provisions, and

MPEP §

2150

et seq. for examination of applications subject to

those provisions.]

I.

FOREIGN APPLICATION MUST BE FILED MORE THAN 12 MONTHS BEFORE THE EFFECTIVE

U.S. FILING DATE

A.

An Anniversary Date Ending on a Weekend or Holiday Results in an

Extension to the Next Business Day

The U.S. application is filed in time to prevent a

pre-AIA

35 U.S.C. 102(d)

bar from arising if it is filed on the 1

year anniversary date of the filing date of the foreign application. If this day

is a Saturday, Sunday or federal holiday, the year would be extended to the

following business day. See

Ex parte Olah,

131 USPQ 41 (Bd.

App. 1960). Despite changes to

37 CFR 1.6(a)(2)

and

37 CFR

1.10

, which require the USPTO to accord a filing date to an

application as of the date of deposit as Priority Mail Express® with the U.S.

Postal Service in accordance with

37 CFR 1.10

(e.g., a Saturday

filing date), the rule changes do not affect applicant’s concurrent right to defer

the filing of an application until the next business day when the last day for

“taking any action” falls on a Saturday, Sunday, or a federal holiday (e.g., the

last day of the 1-year grace period falls on a Saturday).

B.

A Continuation-in-Part Breaks the Chain of Priority as to Foreign as

Well as U.S. Parents

In the case where applicant files a foreign application, later

files a U.S. application claiming priority based on the foreign application, and

then files a continuation-in-part (CIP) application whose claims are not entitled

to the filing date of the U.S. parent, the effective filing date is the filing

date of the CIP and applicant cannot obtain the benefit of either the U.S. parent

or foreign application filing dates

icant files a foreign application, later

files a U.S. application claiming priority based on the foreign application, and

then files a continuation-in-part (CIP) application whose claims are not entitled

to the filing date of the U.S. parent, the effective filing date is the filing

date of the CIP and applicant cannot obtain the benefit of either the U.S. parent

or foreign application filing dates.

In re Van Langenhoven,

458

F.2d 132, 137, 173 USPQ 426, 429 (CCPA 1972). If the foreign application issues

into a patent before the filing date of the CIP, it may be used in a

pre-AIA 35

U.S.C. 102(d)

/

103

rejection if the subject

matter added to the CIP does not render the claims nonobvious over the foreign

patent.

Ex parte Appeal No. 242-47,

196 USPQ 828 (Bd. App.

1976) (Foreign patent can be combined with other prior art to bar a U.S. patent in

an obviousness rejection based on

pre-AIA 35 U.S.C.

102(d)

/

103

).

II.

FOREIGN APPLICATION MUST HAVE BEEN FILED BY SAME APPLICANT, HIS OR HER LEGAL

REPRESENTATIVE OR ASSIGNS

Note that where the U.S. application was made by two or more

inventors, it is permissible for these inventors to claim priority from separate

applications, each to one of the inventors or a subcombination of inventors. For

instance, a U.S. application naming inventors A and B may be entitled to priority

from one application to A and one to B filed in a foreign country.

III.

THE FOREIGN PATENT OR INVENTOR’S CERTIFICATE WAS ACTUALLY GRANTED BEFORE THE

U.S. FILING DATE

A.

To Be “Patented” an Exclusionary Right Must Be Awarded to the

Applicant

“Patented” means “a formal bestowal of patent rights from the

sovereign to the applicant.”

In re Monks,

588 F.2d 308, 310,

200 USPQ 129, 131 (CCPA 1978);

American Infra-Red Radiant Co. v. Lambert

Indus.,

360 F.2d 977, 149 USPQ 722 (8th Cir.),

cert.

denied,

385 U.S. 920 (1966) (German Gebrauchsmuster petty patent was

held to be a patent usable in a

pre-AIA 35 U.S.C. 102(d)

rejection

o the

Applicant

“Patented” means “a formal bestowal of patent rights from the

sovereign to the applicant.”

In re Monks,

588 F.2d 308, 310,

200 USPQ 129, 131 (CCPA 1978);

American Infra-Red Radiant Co. v. Lambert

Indus.,

360 F.2d 977, 149 USPQ 722 (8th Cir.),

cert.

denied,

385 U.S. 920 (1966) (German Gebrauchsmuster petty patent was

held to be a patent usable in a

pre-AIA 35 U.S.C. 102(d)

rejection. A Gebrauchsmuster petty patent is not examined and, at the time of the

decision, had only a 6-year patent term. However, except as to duration, the

exclusionary patent right granted is as extensive as in the U.S.).

B.

A Published Application Is Not a “Patent”

An application must issue into a patent before it can be applied

in a

pre-AIA 35

U.S.C. 102(d)

rejection.

Ex parte

Fujishiro,

199 USPQ 36 (Bd. App. 1977) (“Patenting,” within the

meaning of

pre-AIA 35 U.S.C. 102(d)

, does not occur upon laying open

of a Japanese utility model application (kokai or kohyo));

Ex parte

Links,

184 USPQ 429 (Bd. App. 1974) (German applications, which have

not yet been published for opposition, are published in the form of printed

documents called Offenlegungsschriften 18 months after filing. These applications

are unexamined or in the process of being examined at the time of publication. The

Board held that an Offenlegungsschrift is not a patent under

pre-AIA 35 U.S.C.

102(d)

even though some provisional rights are granted. The

Board explained that the provisional rights are minimal and do not come into force

if the application is withdrawn or refused.).

C.

An Allowed Application Can Be a “Patent” for Purposes of Pre-AIA 35

U.S.C. 102(d) as of the Date Published for Opposition Even Though It Has Not

Yet Been Granted as a Patent

An examined application which has been allowed by the examiner

and published to allow the public to oppose the grant of a patent has been held to

be a “patent” for purposes of rejection under

pre-AIA 35 U.S.C

or refused.).

C.

An Allowed Application Can Be a “Patent” for Purposes of Pre-AIA 35

U.S.C. 102(d) as of the Date Published for Opposition Even Though It Has Not

Yet Been Granted as a Patent

An examined application which has been allowed by the examiner

and published to allow the public to oppose the grant of a patent has been held to

be a “patent” for purposes of rejection under

pre-AIA 35 U.S.C. 102(d)

as of

the date of publication for opposition if substantial provisional enforcement

rights arise.

Ex parte Beik,

161 USPQ 795 (Bd. App. 1968) (This

case dealt with examined German applications. After a determination that an

application is allowable, the application is published in the form of a printed

document called an Auslegeschrift. The publication begins a period of opposition

were the public can present evidence showing unpatentability. Provisional patent

rights are granted which are substantially the same as those available once the

opposition period is over and the patent is granted. The Board found that an

Auslegeschrift provides the legal effect of a patent for purposes of rejection

under

pre-AIA 35

U.S.C. 102(d)

.).

D.

Grant Occurs When Patent Becomes Enforceable

The critical date of a foreign patent as a reference under

pre-AIA 35

U.S.C. 102(d)

is the date the patent becomes enforceable

(issued, sealed or granted).

In re Monks,

588 F.2d 308, 310,

200 USPQ 129, 131 (CCPA 1978) (British reference became available as prior art on

date the patent was “sealed” because as of this date applicant had the right to

exclude others from making, using or selling the claimed invention.).

E.

Pre-AIA 35 U.S.C. 102(d) Applies as of Grant Date Even If There Is a

Period of Secrecy After Patent Grant

A period of secrecy after granting the patent, as in Belgium and

Spain, has been held to have no effect in connection with

pre-AIA 35 U.S.C.

102(d)

. These patents are usable in rejections under

pre-AIA 35

U.S.C. 102(d)

as of the date patent rights are granted.

In re Kathawala,

9 F.3d 942, 28 USPQ2d 1789 (Fed. Cir

(d) Applies as of Grant Date Even If There Is a

Period of Secrecy After Patent Grant

A period of secrecy after granting the patent, as in Belgium and

Spain, has been held to have no effect in connection with

pre-AIA 35 U.S.C.

102(d)

. These patents are usable in rejections under

pre-AIA 35

U.S.C. 102(d)

as of the date patent rights are granted.

In re Kathawala,

9 F.3d 942, 28 USPQ2d 1789 (Fed. Cir. 1993)

(An invention is “patented” for purposes of

pre-AIA 35 U.S.C. 102(d)

when

the patentee’s rights under the patent become fixed. The fact that applicant’s

Spanish application was not published until after the U.S. filing date is

immaterial since the Spanish patent was granted before U.S. filing.);

Gramme Elec. Co. v. Arnoux and Hochhausen Elec. Co.,

17 F.

838, 1883 C.D. 418 (S.D.N.Y. 1883) (Rejection made under a predecessor of

pre-AIA 35

U.S.C. 102(d)

based on an Austrian patent granted an

exclusionary right for 1 year but was kept secret, at the option of the patentee,

for that period. The court held that the Austrian patent grant date was the

relevant date under the statute for purposes of

pre-AIA 35 U.S.C.

102(d)

but that the patent could not have been used to in a

rejection under

pre-AIA 35 U.S.C. 102(a) or (b)

);

In re

Talbott,

443 F.2d 1397, 170 USPQ 281 (CCPA 1971) (Applicant cannot

avoid a

pre-AIA

35 U.S.C. 102(d)

rejection by exercising an option to keep

the subject matter of a German Gebrauchsmuster (petty patent) in secrecy until

time of U.S. filing.).

IV.

THE SAME INVENTION MUST BE INVOLVED

“Same Invention” Means That the Application Claims Could Have Been

Presented in the Foreign Patent

Under

pre-AIA 35 U.S.C. 102(d)

, the

“invention... patented” in the foreign country must be the same as the invention

sought to be patented in the U.S. When the foreign patent contains the same claims

as the U.S. application, there is no question that “the invention was first

patented... in a foreign country.”

In re Kathawala,

9 F.3d 942,

945, 28 USPQ2d 1785, 1787 (Fed. Cir. 1993)

e Foreign Patent

Under

pre-AIA 35 U.S.C. 102(d)

, the

“invention... patented” in the foreign country must be the same as the invention

sought to be patented in the U.S. When the foreign patent contains the same claims

as the U.S. application, there is no question that “the invention was first

patented... in a foreign country.”

In re Kathawala,

9 F.3d 942,

945, 28 USPQ2d 1785, 1787 (Fed. Cir. 1993). However, the claims need not be

identical or even within the same statutory class. If applicant is granted a

foreign patent which fully discloses the invention and which gives applicant a

number of different claiming options in the U.S., the reference in

pre-AIA

35 U.S.C. 102(d)

to “‘invention... patented’ necessarily

includes all the disclosed aspects of the invention. Thus, the

[pre-AIA] section

102(d)

bar applies regardless whether the foreign patent

contains claims to less than all aspects of the invention.” 9 F.3d at 946,

28 USPQ2d at 1788. In essence, a

pre-AIA 35 U.S.C. 102(d)

rejection applies if applicant’s foreign application supports the subject matter

of the U.S. claims.

Id.

at 944, 947, 28 USPQ2d at 1786, 1789

(Applicant was granted a Spanish patent claiming a method of making a composition.

The patent disclosed compounds, methods of use and processes of making the

compounds. After the Spanish patent was granted, the applicant filed a U.S.

application with claims directed to the compound but not the process of making it.

The Federal Circuit held that it did not matter that the claims in the U.S.

application were directed to the composition instead of the process because the

foreign specification would have supported claims to the composition. It was

immaterial that the formulations were unpatentable pharmaceutical compositions in

Spain.).

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