Determining Whether To Apply Pre-AIA 35 U.S.C. 102(a), (b), or (e)

[Editor Note: This MPEP section is

not applicable

to applications

subject to examination under the first inventor to file 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 first inventor to file (FITF) provisions, and

MPEP

§ 2150

et seq. for examination of applications subject to

those provisions. See

MPEP § 2152.05

for the examination

of applications subject to the first inventor to file provisions of the

AIA.]

I.

PRE-AIA 35 U.S.C. 102(b)

First, the examiner should consider whether the

reference qualifies as prior art under

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

because

this section results in a statutory bar to obtaining a patent. If the publication or

issue date of the reference is more than 1 year prior to the effective filing date of

the claimed invention (

MPEP § 2139.01

), the reference

qualifies as prior art under

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

.

Publications, patents, public uses and sales, however,

will not bar a patent if the 1-year grace period otherwise ends on a Saturday,

Sunday, or federal holiday and the application’s U.S. filing date is the next

succeeding business day.

Ex parte Olah,

131 USPQ 41 (Bd. App.

1960) and

35 U.S.C.

21(b)

. The provisions of

35 U.S.C. 21(b)

still apply

notwithstanding the provisions of

37 CFR 1.6(a)(2)

and

37 CFR

1.10

, which accord a filing date as of the date of deposit as

Priority Mail Express

®

with the U.S. Postal Service and

37 CFR

1.6(a)(4)

, which accords a filing date as of the date of

submission using the USPTO patent electronic filing system.

If there is evidence of public use or sale activity

more than one year prior to the effective filing date of the claimed invention, a

rejection should be made under

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

, which

results in a statutory bar to obtaining a patent, rather than under

pre-AIA 35 U.S.C.

102(a)

. Note that mere knowledge of the invention by the public

does not warrant rejection under

pre-AIA 35 U.S.C

.

If there is evidence of public use or sale activity

more than one year prior to the effective filing date of the claimed invention, a

rejection should be made under

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

, which

results in a statutory bar to obtaining a patent, rather than under

pre-AIA 35 U.S.C.

102(a)

. Note that mere knowledge of the invention by the public

does not warrant rejection under

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

,

although public knowledge may provide grounds for rejection under

pre-AIA 35 U.S.C.

102(a)

. See

MPEP §§ 2132

and

2133.03(a)

.

II.

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

If the publication or issue date of the reference is

too recent for

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

to apply, then the examiner should

consider

pre-AIA 35

U.S.C. 102(e)

.

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

allows

the use of certain international application publications and U.S. patent application

publications, and certain U.S. patents as prior art under

pre-AIA 35 U.S.C.

102(e)

as of their respective U.S. filing dates, including

certain international filing dates. The prior art date of a reference under

pre-AIA 35

U.S.C. 102(e)

may be the international filing date if the

international filing date was on or after November 29, 2000, the international

application designated the United States, and the international application was

published by the World Intellectual Property Organization (WIPO) under the Patent

Cooperation Treaty

(PCT) Article 21(2)

in the English language. See

MPEP §

2136

for examination guidelines on the application of

pre-AIA 35

U.S.C. 102(e)

. References based on international applications

that were filed prior to November 29, 2000 are subject to the "pre-AIPA" version of

35 U.S.C. 102(e) in force on November 28, 2000. See

subsection

III

, below and

MPEP § 2136.03

for additional

information.

In order to apply a reference under

pre-AIA 35 U.S.C.

102(e)

, the inventive entity of the application must be

different from that of the reference

References based on international applications

that were filed prior to November 29, 2000 are subject to the "pre-AIPA" version of

35 U.S.C. 102(e) in force on November 28, 2000. See

subsection

III

, below and

MPEP § 2136.03

for additional

information.

In order to apply a reference under

pre-AIA 35 U.S.C.

102(e)

, the inventive entity of the application must be

different from that of the reference. Note that, where there are joint inventors,

only one joint inventor needs to be different for the inventive entities to be

different and a rejection under

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

is

applicable even if there are some joint inventors in common between the application

and the reference.

35 U.S.C. 102 (pre-AIA)

Conditions for patentability; novelty and

loss of right to patent.

*****

(e) the invention was described in — (1) an

application for patent, published under

section 122(b)

, by

another filed in the United States before the invention by the applicant for

patent or (2) a patent granted on an application for patent by another filed

in the United States before the invention by the applicant for patent,

except that an international application filed under the treaty defined in

section

351(a)

shall have the effects for the purposes of this

subsection of an application filed in the United States only if the

international application designated the United States and was published

under

Article 21(2)

of such treaty in the English language;

or

*****

Pre-AIA 35 U.S.C.

102(e)

has two separate clauses, namely,

pre-AIA 35 U.S.C.

102(e)(1)

for publications of patent applications and

pre-AIA 35

U.S.C. 102(e)(2)

for U.S. patents.

Pre-AIA 35 U.S.C.

102(e)(1)

, in combination with

pre-AIA 35 U.S.C.

374

, created a new category of prior art by providing prior art

effect for certain publications of patent applications, including certain

international applications, as of their effectively filed dates in the United States

(which include certain international filing dates). Under

pre-AIA 35 U.S.C

.S.C. 102(e)(2)

for U.S. patents.

Pre-AIA 35 U.S.C.

102(e)(1)

, in combination with

pre-AIA 35 U.S.C.

374

, created a new category of prior art by providing prior art

effect for certain publications of patent applications, including certain

international applications, as of their effectively filed dates in the United States

(which include certain international filing dates). Under

pre-AIA 35 U.S.C.

102(e)

, an international filing date which is on or after

November 29, 2000 is the United States filing date if the international application

designated the United States and was published by the World Intellectual Property

Organization (WIPO) under the Patent Cooperation Treaty

(PCT) Article

21(2)

in the English language. Therefore, the prior art date of

a reference under

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

may be the international filing date

(if all three conditions noted above are met) or an earlier U.S. filing date for

which priority or benefit is properly claimed.

Publication under

PCT Article 21(2)

may result from

a request for early publication by an applicant of an international application or

after the expiration of 18-months after the earliest claimed priority date in an

international application. International applications, which: (1) were filed prior to

November 29, 2000, or (2) did not designate the U.S., or (3) were not published in

English under

PCT

Article 21(2)

by WIPO, may not be used to reach back (bridge)

to an earlier filing date through a priority or benefit claim for prior art purposes

under

pre-AIA 35

U.S.C. 102(e)

. An international filing date which is on or

after November 29, 2000 is a United States filing date for purposes of determining

the earliest effective prior art date of a patent if the international application

designated the United States and was published in the English language under

PCT Article

21(2)

by WIPO. No international filing dates prior to November

29, 2000 may be relied upon as a prior art date under

pre-AIA 35 U.S.C.

102(e)

.

III.

“PRE-AIPA” 35 U.S.C

is a United States filing date for purposes of determining

the earliest effective prior art date of a patent if the international application

designated the United States and was published in the English language under

PCT Article

21(2)

by WIPO. No international filing dates prior to November

29, 2000 may be relied upon as a prior art date under

pre-AIA 35 U.S.C.

102(e)

.

III.

“PRE-AIPA” 35 U.S.C. 102(e) AS IN FORCE ON NOVEMBER 28, 2000

“Pre-AIPA” 35 U.S.C. 102

Conditions for patentability; novelty and

loss of right to patent (as in force on November 28, 2000).

A person shall be entitled to a patent unless -

*****

(e) the invention was described in a patent

granted on an application for patent by another filed in the United States

before the invention thereof by the applicant for patent, or on an

international application by another who has fulfilled the requirements of

paragraphs (1), (2), and (4) of section 371(c) of this title before the

invention thereof by the applicant for patent.

*****

Patents issued directly, or indirectly, from

international applications filed before November 29, 2000 may only be used as prior

art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28,

2000. Thus, the pre-AIPA 35 U.S.C. 102(e) date of such a prior art patent is the

earliest of the date of compliance with 35 U.S.C. 371(c)(1), (2) and (4), or the

filing date of the later-filed U.S. continuing application that claimed the benefit

of the international application. Publications of international applications filed

before November 29, 2000 (which would include WIPO publications and U.S. publications

of the national stage (35 U.S.C. 371)) do not have a pre-AIPA 35 U.S.C. 102(e) date

at all (however, such publications are available as prior art under

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

or (b)

as of their publication date).

IV.

PRE-AIA 35 U.S.C. 102(a)

Even if the reference is prior art under

pre-AIA 35

U.S.C. 102(e)

, the examiner should still consider

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

for two reasons

publications

of the national stage (35 U.S.C. 371)) do not have a pre-AIPA 35 U.S.C. 102(e) date

at all (however, such publications are available as prior art under

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

or (b)

as of their publication date).

IV.

PRE-AIA 35 U.S.C. 102(a)

Even if the reference is prior art under

pre-AIA 35

U.S.C. 102(e)

, the examiner should still consider

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

for two reasons. First, if the

reference is a U.S. patent or patent application publication of, or claims benefit

of, an international application, the publication of the international application

under

PCT Article

21(2)

may be the earliest prior art date under

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

for the disclosure. Second,

references that are only prior art under

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

(g)

and applied in a rejection under

pre-AIA 35 U.S.C.

103(a)

are subject to being disqualified under

pre-AIA 35

U.S.C. 103(c)

if the reference and the application were

commonly owned, or subject to an obligation of common assignment, at the time the

invention was made. For

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

to

apply, the reference must have a publication date earlier in time than the effective

filing date of the claimed invention in the application under examination, and must

not be the inventor or at least one joint inventor's own work.

If the claimed invention is the subject of activity by

an entity other than the inventor, such as sale by another, manufacture by another or

disclosure of the invention by at least one joint inventor to another entity then

both

pre-AIA 35

U.S.C. 102(a) and (b)

may be applicable. If the evidence only

points to knowledge within the year prior to the effective filing date then

pre-AIA 35

U.S.C. 102(a)

applies. However, no rejection under

pre-AIA 35

U.S.C. 102(a)

should be made if there is evidence that

applicant made the invention and only disclosed it to others within the year prior to

the effective filing date.