Pre-AIA 35 U.S.C. 102(g)

[Editor Note: This MPEP section

has limited applicability

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)

. Patents and

applications that contain (or contained at any time) at least one claim with a pre-AIA

effective filing date (before March 16, 2013) and at least one claim with a post-AIA

effective filing date (on or after March 16, 2013) are subject to the patentability

requirements in

AIA 35 U.S.C. 102

-

103

and

subject to

pre-AIA 35

U.S.C. 102(g)

.See

MPEP §

2159

et seq.]

Pre-AIA 35 U.S.C. 102

Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless -

*****

(g) (1) during the course of an interference conducted under

section

135

or

section 291

, another inventor

involved therein establishes, to the extent permitted in

section 104

,

that before such person’s invention thereof the invention was made by such other

inventor and not abandoned, suppressed, or concealed, or (2) before such person’s

invention thereof, the invention was made in this country by another inventor who

had not abandoned, suppressed, or concealed it. In determining priority of

invention under this subsection, there shall be considered not only the respective

dates of conception and reduction to practice of the invention, but also the

reasonable diligence of one who was first to conceive and last to reduce to

practice, from a time prior to conception by the other.

Pre-AIA 35 U.S.C.

102(g)

bars the issuance of a patent where another made the invention

in the United States before the inventor and had not abandoned, suppressed, or concealed

it. This section of

pre-AIA 35 U.S.C. 102

forms a basis for interference practice. See

MPEP Chapter

2300

for more information on interference procedure. See below

and

MPEP §§

2138.01

-

2138.06

for more information on the

requirements of

pre-AIA

35 U.S.C. 102(g)

.

Pre-AIA 35 U.S.C

ere another made the invention

in the United States before the inventor and had not abandoned, suppressed, or concealed

it. This section of

pre-AIA 35 U.S.C. 102

forms a basis for interference practice. See

MPEP Chapter

2300

for more information on interference procedure. See below

and

MPEP §§

2138.01

-

2138.06

for more information on the

requirements of

pre-AIA

35 U.S.C. 102(g)

.

Pre-AIA 35 U.S.C.

102(g)

issues such as conception, reduction to practice and

diligence, while more commonly applied to interference matters, also arise in other

contexts.

Pre-AIA 35 U.S.C.

102(g)

may form the basis for an

ex parte

rejection if: (1) the subject matter at issue has been actually reduced to

practice by another before the inventor’s invention; and (2) there has been no abandonment,

suppression or concealment. See, e.g.,

Amgen, Inc. v. Chugai Pharmaceutical

Co.,

927 F.2d 1200, 1205, 18 USPQ2d 1016, 1020 (Fed. Cir. 1991);

New

Idea Farm Equipment Corp. v. Sperry Corp.,

916 F.2d 1561, 1566, 16 USPQ2d

1424, 1428 (Fed. Cir. 1990);

E.I. DuPont de Nemours & Co. v. Phillips

Petroleum Co.,

849 F.2d 1430, 1434, 7 USPQ2d 1129, 1132 (Fed. Cir. 1988);

Kimberly-Clark v. Johnson & Johnson,

745 F.2d 1437, 1444-46, 223

USPQ 603, 606-08 (Fed. Cir. 1984). To qualify as prior art under

pre-AIA 35 U.S.C.

102(g)

, however, there must be evidence that the subject matter was

actually reduced to practice, in that conception alone is not sufficient. See

Kimberly-Clark,

745 F.2d at 1445, 223 USPQ at 607. While the filing

of an application for patent is a constructive reduction to practice, the filing of an

application does not in itself provide the evidence necessary to show an actual reduction

to practice of any of the subject matter disclosed in the application as is necessary to

provide the basis for an

ex parte

rejection under

pre-AIA 35 U.S.C.

102(g)

Clark,

745 F.2d at 1445, 223 USPQ at 607. While the filing

of an application for patent is a constructive reduction to practice, the filing of an

application does not in itself provide the evidence necessary to show an actual reduction

to practice of any of the subject matter disclosed in the application as is necessary to

provide the basis for an

ex parte

rejection under

pre-AIA 35 U.S.C.

102(g)

. Thus, absent evidence showing an actual reduction to practice

(which is generally not available during

ex parte

examination), the

disclosure of a United States patent application publication or patent falls under

pre-AIA 35 U.S.C.

102(e)

and not under

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

.

Cf.

In re Zletz,

893 F.2d 319, 323, 13 USPQ2d 1320, 1323 (Fed. Cir. 1989)

(the disclosure in a reference United States patent does not fall under

pre-AIA 35 U.S.C.

102(g)

but under

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

).

In addition, subject matter qualifying as prior art only under

pre-AIA 35 U.S.C.

102(g)

may also be the basis for an

ex parte

rejection under

pre-AIA

35 U.S.C. 103

. See

In re Bass,

474 F.2d 1276,

1283, 177 USPQ 178, 183 (CCPA 1973) (in an unsuccessful attempt to utilize a

37 CFR

1.131

affidavit relating to a combination application, the inventors

admitted that the subcombination screen of a copending application which issued as a patent

was earlier conceived than the combination).

Pre-AIA 35 U.S.C. 103(c)

, however,

states that subsection

-AIA

35 U.S.C. 103

. See

In re Bass,

474 F.2d 1276,

1283, 177 USPQ 178, 183 (CCPA 1973) (in an unsuccessful attempt to utilize a

37 CFR

1.131

affidavit relating to a combination application, the inventors

admitted that the subcombination screen of a copending application which issued as a patent

was earlier conceived than the combination).

Pre-AIA 35 U.S.C. 103(c)

, however,

states that subsection

(g)

of

pre-AIA 35 U.S.C. 102

will not preclude

patentability where subject matter developed by another person, that would otherwise

qualify under

pre-AIA 35

U.S.C. 102(g)

, and the claimed invention of an application under

examination were owned by the same person, subject to an obligation of assignment to the

same person, or involved in a joint research agreement, which meets the requirements of

pre-AIA 35 U.S.C.

103(c)(2) and (c)(3)

, at the time the invention was made. See

MPEP §

2146

.

For additional examples of

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

issues such as

conception, reduction to practice and diligence outside the context of interference

matters, see

In re Costello,

717 F.2d 1346, 219 USPQ 389 (Fed. Cir.

1983) (discussing the concepts of conception and constructive reduction to practice in the

context of a declaration under

37 CFR 1.131

), and

Kawai v.

Metlesics,

480 F.2d 880, 178 USPQ 158 (CCPA 1973) (holding constructive

reduction to practice for foreign priority under

35 U.S.C. 119

requires meeting the

requirements of

35 U.S.C.

101

and

35 U.S.C. 112

).