Examination Guidelines for 35 U.S.C. 102(e)(2), as
amended by the
American Inventors Protection Act of 1999
This notice sets forth the interpretation by the United States
Patent and Trademark Office (USPTO or Office) of 35 U.S.C.
102(e)(2), as amended the American Inventors Protection Act of 1999
(AIPA). Pub. L. 106-113, 113 Stat. 1501 (1999). Specifically, this
notice provides guidance to patent examiners and the public as to why
the filing date of an application being examined is important and when
United States patents are available as prior art. Further,
this notice provides examples of common situations that will arise. At
this time, the Office is not providing guidance as to its
interpretation of new prior art treatment of application publications
under 102(e)(1). Such guidance will be provided in a future Official
Gazette notice.
SUMMARY:
First, the AIPA establishes when the amendments to 102(e)
are effective. According to the AIPA, the new criteria for
determining patentability under post-AIPA 102(e) will apply to
applications: (a) filed on or after November 29, 2000, or (b) that have
been voluntarily published. Thus, the revised patentability defeating
provisions of post-AIPA 102(e) are only prospective in nature. The
criteria for determining patentability under pre-AIPA 102(e) will
apply to applications filed before November 29, 2000, and not
voluntarily published pursuant to 35 U.S.C. 122(b). As a result, the
filing date of the application being examined is a factor in
determining which version of 102(e) applies, i.e.,
pre-AIPA 102(e) or post-AIPA 102(e).
Second, paragraph (e) of 35 U.S.C. 102 was amended
by the AIPA to eliminate the reference to fulfillment of the 35 U.S.C.
s 371(c)(1), (2) and (4) requirements. As a result, United States
patents issued directly from International Applications will
no longer be available as prior art under post-AIPA 102(e)(2) as of
the date the requirements of 371 (c)(1), (2) and (4) have been
satisfied. Post-AIPA 102(e)(2) also precludes the use of the
international filing date as a United States filing date for purposes
of determining the earliest effective prior art date of a patent. Thus,
under the AIPA, United States patents issued directly from
International Applications do not have a " 102(e)(2)" date.
As illustrated in the examples, the effective prior art dates for
patents being applied as references under pre and post-AIPA
102(e) are the same except for patents issued directly
from International Applications having fulfilled the National Stage
requirements or from continuing applications of International
Applications having fulfilled the National Stage requirements.
DISCUSSION: Sections I-VI below set forth the
USPTO's examination procedures for the amendments to 35 U.S.C. 102(e)
made by the AIPA.
I) Statutory Language of 35 U.S.C. 102(e):
Pre-AIPA 102(e): For Applications Filed
before November 29, 2000 which are not Voluntarily Published:
"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
applicant for patent, or".
Post-AIPA 102(e): For Applications Filed on
or after November 29, 2000, and Applications Filed prior to November
29, 2000 which are Voluntarily Published:
A person shall be entitled to a patent unless -
(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, except that an international application
filed under the treaty defined in section 351(a) shall have the effect
under this subsection of a national application published under section
122(b) only if the international application designating the United
States was published under Article 21(2)(a) of such treaty in the
English language; 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 a patent shall not be deemed filed in the United
States for the purposes of this subsection based on the filing of an
international application filed under the treaty defined in section
351(a); or
II) Impact of Statutory Changes and Effective Date of the
Changes
Paragraph (e) of 35 U.S.C. 102 was amended by the AIPA. What
U.S. patents are available as prior art under this
subsection has been modified as post-AIPA 102(e)(2) no longer
recognizes the date of fulfillment of the 35 U.S.C. 371(c)(1), (2)
and (4) requirements for prior art purposes. Post-AIPA 102(e)(2)
also precludes the use of the international filing date as a United
States filing date for purposes of determining the earliest effective
prior art date of a patent. Thus, under post-AIPA 102(e)(2),
patents issued directly from the National Stage of
International Applications are not available as prior art since they
have no 102(e)(2) date at all.
Paragraph (e) of 35 U.S.C. 102 was also amended to establish
the criteria for when publications of U.S. patent applications and
International Applications may be available as prior art (post-AIPA
102(e)(1)) as of their earliest effective filing dates. While a patent
issued from an International Application may not be available as prior
art under post-AIPA 102(e)(2), the same disclosure in the form of an
application publication may be available prior art under post-AIPA
102(e)(1) as of the international filing date. Guidance on post-AIPA
102(e)(1) will be provided in a future Official Gazette notice.
The AIPA establishes when the amendments to 102(e) must be
applied during the examination process. First, the AIPA sets forth that
the amendments to 102(e) apply to all applications filed under 35
U.S.C. 111 that were filed on or after November 29, 2000 and all
applications complying with 35 U.S.C. 371 that resulted from
International Applications filed on or after November 29, 2000. See
4508 of the AIPA. Second, the AIPA provides that the amendments to
102(e) also apply to any application that is voluntarily published. See
the second sentence of 4508 of the AIPA. Because 102(e) is
"applied" to the claims of an application during examination to
determine patentability, post-AIPA 102(e) is only used to determine
the prior art dates of United States patents or patent application
publications when examining the above noted classes of applications.
Accordingly, any application filed before November 29, 2000 that
is not voluntarily published is subject to pre-AIPA 102(e).
Therefore, pre-AIPA 102(e) is used to determine the prior art dates
of United States patents when examining such applications.
III) Applications Subject to Post-AIPA 102(e)(2)
All applications filed on or after November 29, 2000 (including
International Applications filed on or after November 29, 2000 that
have fulfilled the National Stage requirements) and applications filed
before November 29, 2000 that are voluntarily published,
must be examined in view of patents, whenever granted, with
effective prior art dates per post-AIPA 102(e)(2).
The following applications, when examined, will be subject to
prior art available and accorded prior art dates under post-AIPA
102(e)(2):
(1) utility, design and plant patent applications (including
first-filed applications, continuing applications under 37 CFR 1.53(b),
continued prosecution applications (CPAs) under 37 CFR 1.53(d), and
reissues) filed under 35 U.S.C. 111(a) on or after November 29,
2000;
(2) International Applications complying with National Stage
requirements (35 U.S.C. 371(c)) having international filing dates on
or after November 29, 2000; and
(3) applications filed before November 29, 2000 and pending on
November 29, 2000 that are voluntarily published by the applicant under
the publication procedures of the USPTO (see 37 CFR 1.221).
All other applications, not listed in 1-3 above, must continue to
be examined in view of pre-AIPA 102(e).
IV) Applications Subject to Pre-AIPA 102(e)
All applications filed before November 29, 2000, and
not voluntarily published pursuant to 35 U.S.C. 122(b), will be
examined in view of pre-AIPA 102(e). In addition, pre-AIPA 102(e)
continues to apply regardless of whether: (1) applicant files a request
for consideration of a submission under 37 CFR 1.129(a), (2) applicant
files a request for continued examination (RCE) under 37 CFR 1.114, or
(3) a request for reexamination is filed on a patent issued from the
application.
V) Examination Procedures under Pre-AIPA 102(e) and
Post-AIPA 102(e)(2)
(1) Determine which version of 102(e) applies to the
application being examined, as follows:
(a) If the application being examined was filed
before November 29, 2000 and has not been voluntarily
published pursuant to 35 U.S.C. 122(b), then the application is
examined under pre-AIPA 102(e). This includes an International
Application complying with National Stage requirements having an
international filing date prior to November 29, 2000 and which has not
been voluntarily published. A request for continued examination (RCE)
under 37 CFR 1.114 does not change the status of the application even
if the RCE is filed on or after November 29, 2000.
(b) If the application being examined was filed on
or after November 29, 2000, or was filed prior to November 29,
2000 but was voluntarily published pursuant to 35 U.S.C.
122(b), then the application is examined under post-AIPA 102(e).
This includes an International Application complying with National
Stage requirements having an international filing date on or after
November 29, 2000, or having an international filing date prior to
November 29, 2000 but voluntarily published pursuant to 35 U.S.C.
122(b). The Patent Application Location and Monitoring (PALM) system
will be modified to indicate the publication status of an
application.
(c) Examiners should provide a copy of the appropriate
102(e) text in the first Office action utilizing such a rejection.
The Office action should make it clear whether the pre or post-AIPA
version of 102(e) is being relied upon. Form paragraphs for
providing this material will be provided in due course.
(2) Determine the effective filing date(s) of the
application being examined.
See the Manual of Patent Examining Procedure (MPEP), sections
706.02, 1893.03(b), 1893.03(c), 1895 and 1895.01, Seventh Edition (rev.
1, Feb. 2000).
(3) Determine and perform an appropriate prior art
search.
The Examiner should search for the most relevant prior art under
35 U.S.C. 102 and 103, including patents accorded prior art dates
under post-AIPA 102(e)(2), if appropriate.
(4) Determine the appropriate 102(e) date for
each reference, if necessary, by following the guidelines and examples
set forth under Part VI below:
(a) Examiners should be aware that although a U.S. Patent
based upon an International Application may not have a post-AIPA
102(e)(2) date, the corresponding World Intellectual Property
Organization (WIPO) publication of an International Application
(published under PCT Article 21(2)) will likely have an earlier
102(a) or (b) date.
(b) Examiners should note that an appropriate prior art
rejection under pre-AIPA 102(e) made in an application filed before
November 29, 2000 based on a U.S. patent issued from an International
Application (the patent having a prior art date under pre-AIPA s
102(e) as of the 371(c)(1), (2) and (4) fulfillment date) may be
overcome by voluntary publication of the application being examined.
The identical disclosure of the U.S. patent issued from the
International Application, however, is likely to be published by WIPO
prior to the patent's 371(c)(1), (2) and (4) fulfillment date.
Thus, examiners are encouraged to apply the WIPO publication
under 102(a) or (b) against claims being examined in applications
filed prior to November 29, 2000 rather than the patent issued from the
International Application which had fulfilled the National Stage
requirements. In the event that the patent is used, but the rejection
must be withdrawn in view of voluntary publication, the examiner should
look for the WIPO publication, and apply it, if appropriate. Such a
rejection based on the WIPO publication may not be made final the first
time it is made as the rejection was not necessitated by an amendment
to the claims.
(5) Determine whether common assignee considerations
apply. If a 102(e) reference is applied in an
obviousness rejection under 35 U.S.C. 103 (including provisional
rejections) in an application filed on or after November 29, 1999, the
examiner should ascertain whether there is evidence that the claimed
invention and the reference were owned by the same person, or subject
to an obligation of assignment to the same person, at the time the
claimed invention was made. A clear statement of entitlement to the
prior art exclusion by applicant(s) or a registered practitioner would
be sufficient evidence to establish the prior art exclusion. See
"Guidelines Concerning the Evidence of Common Ownership, or an
Obligation of Assignment to the Same Person, as Required by 35 U.S.C.
103(c)," 1241 O.G. 96 (Dec. 26, 2000) which modifies "Guidelines
Concerning the Implementation of Changes to 35 USC 102(g) and 103(c)
and the Interpretation of the Term `Original Application' in the
American Inventors Protection Act of 1999," 1233 O.G. 54, 55-56
(April 11, 2000).
VI) Examples
In order to illustrate the prior art dates of patents under
post-AIPA 102(e)(2), seven examples are presented below. The first
two examples are limited to patents issued from only applications filed
under 111(a) and/or (b). The remaining five examples are for patents
issued directly or indirectly from International Applications. The
examples show the effect on applications filed prior to and after
November 29, 2000, the effective date of the amendments to 102(e)
made by the AIPA. The dates in the examples below are arbitrarily used
and are presented for illustrative purposes only. In the examples, IA,
and WIPO has been used for International Application and the World
Intellectual Property Organization, respectively.
Example 1: Reference Patent Issued from an Application
Filed under 35 U.S.C. 111(a) with No Priority Claim.
For reference patents issued from only applications filed under
35 U.S.C. 111(a), the prior art dates accorded these reference
patents are the same under pre and post-AIPA 102(e). Thus, a patent
issued from a 111(a) application, which does not claim any benefit
under either 35 U.S.C. 119(e) or 120, would be accorded the
application's filing date as its prior art date.
(Refer to OG for Graphic)
Example 2: Reference Patent Issued from an Application Filed under
35 U.S.C. 111(a) with a Domestic Priority/Continuity Claim.
For reference patents issued from applications filed under s
111(a) claiming the benefit under 35 U.S.C. 119(e) or 120 of a
prior application, the prior art dates accorded these reference patents
are the same under pre and post-AIPA 102(e). Thus, a patent issued
from such application would be accorded the prior application's filing
date as its 102(e) prior art date assuming that the prior
application provides proper support for the relied upon subject
matter.
(Refer to OG for Graphic)
Example 3: Reference Patent Issued Directly from an
International Application (a 371 Application)
For reference United States patents issued directly from
International Applications the prior art dates accorded to reference
patents under post-AIPA 102(e)(2) are different than the
prior art date accorded under pre-AIPA 102(e). A United States
patent issued from an International Application will have neither
the international filing date, nor its " 371(c)(1), (2) and (4)
date," as its post-AIPA 102(e)(2) date. Thus, such patent
have no prior art date under post-AIPA 102(e)(2).
Obviously, the patent would continue to have its grant or publication
date as a prior art date under 102(a) and (b). In addition,
International Applications published in the English language may be
available as prior art as of their international filing date under
post-AIPA 102(e)(1).
(Refer to OG for Graphic)
Example 4: Reference Patent Issued from an
Application Filed under 35 U.S.C. 111(a), which is a Continuation of
an International Application.
For reference patents issued from applications filed under 35
U.S.C. 111(a), which claim the benefit of the filing dates of prior
International Applications pursuant to 35 U.S.C. 120 and 365(c),
the prior art dates accorded these patents are the same
under pre and post-AIPA 102(e). A patent issuing from an
application filed under 35 U.S.C. 111(a), which claims the benefit
of the filing date of a prior International Application under 35 U.S.C.
120 and 365(c), will be accorded the 111(a) filing date as its
102(e) prior art date.
(Refer to OG for Graphic)
Example 5: Reference Patent Issued from an
International Application Complying with National Stage requirements,
which International Application Claims Priority to a United States
Patent Application.
For reference United States patents issuing from International
Applications complying with National Stage requirements, which claim
priority to prior United States patent applications under 35 U.S.C.
119(e) or 120 and 365(c), the prior art dates accorded these
reference patents by post-AIPA 102(e)(2) are different
than the prior art dates accorded by pre-AIPA 102(e). A patent
issued from an International Application complying with National Stage
requirements that claims the benefit of the filing date of an earlier
United States application has no prior art date under post-AIPA
102(e)(2). Any United States filing date prior to the filing
date of an International Application is not relevant for
102(e)(2) prior art purposes.
(Refer to OG for Graphic)
Example 6: Reference Patent Issued from an
Application filed under 35 U.S.C. 111(a) Claiming the Benefit of an
Intermediate International Application and a Prior Provisional
Application.
For reference patents issued from applications filed under 35
U.S.C. 111(a), which claim the benefit of an intermediate
International Application under 35 U.S.C. 120 and 365(c) and a
prior United States provisional application under 35 U.S.C. 119(e)
and 365(c), the prior art dates accorded these reference patents are
the same under pre and post-AIPA 102(e). Thus, a patent
issuing from an application filed under 35 U.S.C. 111(a), which
claims the benefit of an intermediate International Application and a
prior United States provisional application, would be accorded the
application's actual filing date under 35 U.S.C. 111(a) as its
prior art date.
(Refer to OG for Graphic)
Example 7: Reference Patent issued from an
Application filed under 35 U.S.C. 111(a), which is a Continuation of
the National Stage of an International Application.
For reference patents issued from applications filed under 35
U.S.C. 111(a), which claim the benefit of the filing dates of prior
International Applications pursuant to 35 U.S.C. 120 and 365(c),
which International Applications had complied with the National Stage
requirements, the prior art dates accorded to these reference patents
by post-AIPA 102(e)(2) are different than the prior art
dates accorded by pre-AIPA 102(e). A patent issued from an
application filed under 35 U.S.C. 111(a), which was a continuation
of an International Application which had complied with the National
Stage requirements, will have its 111(a) filing date as
its prior art date under post-AIPA 102(e)(2).
(Refer to OG for Graphic)
FOR FURTHER INFORMATION CONTACT: Jeanne Clark or Robert Clarke,
Legal Advisors in the Office of Patent Legal Administration, by
telephone at (703) 305-1622, by fax at (703) 305-1013, or by e-mail
addressed to Jeanne.Clark@USPTO.gov or
Robert.Clarke@USPTO.gov.
STEPHEN G. KUNIN
Deputy Commissioner for Patent Examination Policy