United States Patent and Trademark Office OG Notices: 14 January 2003
Examination Guidelines for
35 U.S.C. 102(e), as amended by the
American Inventors Protection Act of 1999, and
further amended by the Intellectual Property and
High Technology Technical Amendments Act
of 2002, and 35 U.S.C. 102(g)
(Revised i)
This notice sets forth the interpretation by the United States
Patent and Trademark Office (USPTO or Office) of 35 U.S.C. 102(e)
and 374, as amended by the American Inventors Protection Act of 1999
(AIPA) (Pub. L. 106-113, 113 Stat. 1501 (1999)), and as further amended
by the Intellectual Property and High Technology Technical Amendments
Act of 2002 (H.R. 2215) (Pub. L. 107-273 (2002)). This notice also
clarifies the Office's policy on prior art rejections based on 35
U.S.C. 102(g).
Generally, 35 U.S.C. 102(e), after enactment of the AIPA and
H.R. 2215, is similar to the pre-AIPA 102(e), with two significant
differences, which may be summarized as: (1) in addition to U.S.
patents, now certain publications of U.S. and international
applications may be applied as of their filing dates in a prior art
rejection; and (2) certain international filing dates are
now U.S. filing dates for prior art purposes under 102(e), and U.S.
patents and certain application publications may now be applied as of
these international filing dates in a prior art rejection.
Specifically, this notice provides guidance that prior art, as defined
by 102(e) of the patent code in effect on November 29, 2000,
includes U.S. patents, publications of U.S. patent applications and
World Intellectual Property Organization's (WIPO) publications of
international applications, provided such references do not directly or
indirectly result from an international application filed before
November 29, 2000. If a U.S. patent resulted from an international
application filed before November 29, 2000, the U.S. patent will have a
prior art date per 102(e) in effect prior to November 29, 2000,
which is the earlier of the date of compliance with 371(c)(1), (2)
and (4) of the patent code (e.g. National Stage entry) or the filing
date of the later-filed U.S. application that claimed the benefit of
the international application. A U.S. or WIPO publication of an
international application filed prior to November 29, 2000 will have no
prior art effect under 102(e). Such publications do, however, have
prior art effect under 102(a) or (b) as of their publication dates.
Furthermore, all pending U.S. patent applications being
examined, and all U.S. patents being reexamined, or otherwise being
contested, whenever filed, are subject to the amended version of
102(e).
This notice also provides examples of the determination of
102(e) dates for references based on the most common factual scenarios.
The examples that best highlight the recent change to 102(e) and
374 are the examples that involve a WIPO publication of an
international application under PCT Article 21(2), a U.S. publication
of an international application, or a U.S. patent derived from an
international application.
The policy and practice set forth in the Official Gazette
Notice entitled "Examination Guidelines for 35 U.S.C. 102(e)(2),
as amended by the American Inventors Protection Act of 1999," 1243
O.G. 1037 (Feb. 27, 2001) and guidelines provided in the Manual of
Patent Examining Procedure (MPEP) concerning the changes made by the
AIPA to 35 U.S.C. 102(e) (e.g., MPEP 706.02(a), Part II; 901.03;
1895.01, Part E; 1896; and 2136 et seq., Eighth Edition (August 2001))
are superceded by this notice and should no longer be followed.
SIGNIFICANT PROVISIONS:
A. Effective Date Provisions of the Amendments.
The technical correction legislation in H.R. 2215 provides for the
application of revised 35 U.S.C. 102(e) in the examination of all
applications, whenever filed, and the reexamination of, or other
proceedings to contest, all patents. The filing date of the application
is no longer relevant in determining what version of 102(e) to apply
in determining the patentability of that application, or the patent
resulting from that application. The revised statutory provisions
supercede all previous versions of 102(e) and 374, with only one
exception, which is when the potential reference is based on an
international application filed prior to November 29, 2000 (discussed
further in section D below). Furthermore, the provisions amending
102(e) and 374 in H.R. 2215 are completely retroactive to the effective
date of the relevant provisions in the AIPA (November 29, 2000).
B. U.S. and WIPO application publications may have a 102(e)(1) prior art
date.
Paragraph (e) of 35 U.S.C. 102 was amended by the AIPA to create two
separate clauses, namely, 102(e)(1) for publications of
patent applications and 102(e)(2) for patents. Section 102(e)(1), in
combination with amended 374, created a new category of prior art by
providing prior art effect for certain publications of
patent applications, including international applications, as of their
effective United States filing dates (which will include certain
international filing dates). Under H.R. 2215's revised 102(e), an
international filing date, which is on or after November 29, 2000, is a
United States filing date for prior art purposes under 35 U.S.C.
102(e) 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. Publication under PCT Article 21(2) may result from a
request for early publication by an international applicant or after
the expiration of 18-months after the earliest claimed filing date in
an international application. An applicant that has designated only the
U.S. would continue to be required to request publication from WIPO as
the reservation under PCT Article 64(4) continues to be in effect for
such applicants.
C. A patent from an international application may have a 102(e)(2) prior
art date of its international filing date.
Paragraph (e) of 35 U.S.C. 102 was also amended by the AIPA to
eliminate the reference to fulfillment of the 35 U.S.C. 371(c)(1),
(2) and (4) requirements. As a result, United States patents
issued directly from international applications filed on or after
November 29, 2000 will no longer be available as prior art under
102(e) as of the date the requirements of 371 (c)(1), (2) and (4)
have been satisfied. Under 102(e)(2), as amended by the AIPA and
H.R. 2215, 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.
D. International filing dates prior to November 29, 2000 cannot be used
under 102(e) for prior art purposes.
No international filing dates prior to November 29, 2000 may be
relied upon as a prior art date under 102(e) in accordance with the
last sentence of the effective date provisions (reproduced below in
section I). 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 102(e) in effect before
November 29, 2000. Thus, the 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 ( 371)) do not have a 102(e)
date at all. Specifically, under 374, the international application
must be filed on or after November 29, 2000 for its WIPO publication to
be "deemed a publication under section 122(b)" and thus available
as a possible prior art reference under 102(e) as amended by the
AIPA.
E. Additional requirements for international applications filed on or
after November 29, 2000.
If an international application was filed on or after November 29,
2000, the international application must have designated the U.S.
and been published in English under PCT Article 21(2)
by WIPO in order for its international filing date to be a U.S. filing
date for purposes of 102(e) and be relied upon as a prior art date.
F. When an international application cannot serve as a bridge to an
earlier-filed application.
International applications, which: (1) were filed prior to
November 29, 2000, (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 35 U.S.C. 102(e).
DISCUSSION: Sections I - V below set forth the USPTO's examination
procedures for the amendments to 35 U.S.C. 102(e) made by the AIPA and
H.R. 2215.
I) Statutory Language of 35 U.S.C. 102(e) and 374:
Pre-AIPA 102(e): Now, only applies to Patents derived from
International Applications filed before November 29, 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
applicant for patent, or".
Revised 102(e): For examining all Applications, whenever filed, and
for reexamining of all Patents, and for determining the prior art dates ii
of Patents and certain Application Publications:
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 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-AIPA 374: For WIPO Publications of International Applications
filed prior to November 29, 2000:
The publication under the treaty of an international application shall
confer no rights and shall have no effect under this title other than that
of a printed publication.
Revised 374: For WIPO Publications of International Applications filed
on or after November 29, 2000:
The publication under the treaty defined in section 351(a) of
this title, of an international application designating the United
States shall be deemed a publication under section 122(b), except as
provided in sections 102(e) and 154(d) of this title.
Effective Date Provisions for the amendments to 102(e) and 374 iii,
as amended by H.R. 2215:
Except as otherwise provided in this section, sections 4502
through 4504 and 4506 through 4507, and the amendments made by such
sections, shall be effective as of November 29, 2000, and shall apply
only to applications (including international applications designating
the United States) filed on or after that date. The amendments made by
section 4504 shall additionally apply to any pending application filed
before November 29, 2000, if such pending application is published
pursuant to a request of the applicant under such procedures as may be
established by the Director. Except as otherwise provided in this
section, the amendments made by section 4505 shall be effective as of
November 29, 2000 and shall apply to all patents and all applications
for patents pending on or filed after November 29, 2000. Patents
resulting from an international application filed before November 29,
2000 and applications published pursuant to section 122(b) or Article
21(2) of the treaty defined in section 351(a) resulting from an
international application filed before November 29, 2000 shall not be
effective as prior art as of the filing date of the international
application; however, such patents shall be effective as prior art in
accordance with section 102(e) in effect on November 28, 2000.
II) Impact of Statutory Changes and Effective Date of the Changes
As shown above, 35 U.S.C. 102(e) has been amended to have
two separate clauses, namely, (e)(1) for publications of patent
applications, and (e)(2) for patents.
With respect to revised 35 U.S.C. 102(e)(1) and 35 U.S.C. 374, a new
category of prior art is created for publications of patent applications.
This new category includes the following two types of published patent
applications:
(1) U.S. publications of patent applications filed in the United States
by another which are published under 122(b) of title 35, United
States Code; and
(2) U.S. and WIPO publications of international applications, filed on
or after November 29, 2000, by another that designated the United
States and were published in the English language under PCT Article
21(2) by WIPO.
In summary, under amended 102(e)(1) and 374, certain
publications of patent applications, including certain WIPO
publications of international applications (under PCT Article 21(2))
which are filed on or after November 29, 2000, are considered to be
prior art as of their earliest effective United States filing date. It
is important to note that a U.S. application publication of a National
Stage of an international application or a WIPO publication of an
international application under 102(e)(1) and 374, as
amended by H.R. 2215, can be prior art as of the international
filing date if the international application had an international
filing date on or after November 29, 2000, designated the United
States, and was published in English under PCT Article
21(2) by WIPO. Prior to the AIPA amendments to 102(e) and 374, a
WIPO publication of an international application could only be prior
art under 102(a) or (b) as of the publication date (and there were
no U.S. application publications).
Paragraph (e) of 35 U.S.C. 102 was also amended to modify
what U.S. patents are available as prior art under this subsection.
Section 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. Section 102(e)(2), however, considers an international
filing date that is on or after November 29, 2000 as 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.
The AIPA and H.R. 2215 also establish when the amendments to
102(e) and 374 must be applied. First, the AIPA and H.R. 2215 set
forth that the amendments to 102(e) apply to all applications being
examined and all patents under reexamination. See the third sentence of
4508 of the AIPA, as amended by H.R. 2215 (addressing 4505 of the
AIPA). In other words, the revised version of 102(e) is completely
retroactive, and it applies to all applications, no matter when filed,
and all patents, with only one exception, which pertains to applying,
as prior art under 102(e), patents or publications based on
international applications filed prior to November 29, 2000. Further,
the amendments to 374, which "deems" certain WIPO publications
of international applications under PCT Article 21(2) as U.S.
publications of applications filed under 35 U.S.C. 111(a), are only
effective for international applications filed on or after November 29,
2000. Therefore, an international application must be filed on or after
November 29, 2000 for its WIPO publication to be "deemed a
publication under section 122(b)," and thus available as a possible
prior art reference under 102(e)(1).
III) Prior Art Rejections based on 35 U.S.C. 102(g)
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.
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 applicant'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 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 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 35 U.S.C. 102(e) and not under 35 U.S.C. 102(g). Cf.
In re Zletz, 893 F.2d 319, 323, 13 USPQ2d 1320, 1323 (Fed.
Cir. 1990) (the disclosure in a reference United States patent does not
fall under 35 U.S.C. 102(g) but under 35 U.S.C. 102(e)).
In addition, subject matter qualifying as prior art only under
35 U.S.C. 102(g) may also be the basis for an ex parte
rejection under 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, applicants admitted that the subcombination screen of a
copending application which issued as a patent was earlier conceived
than the combination). 35 U.S.C. 103(c), however, states that
subsection (g) of 35 U.S.C. 102 will not preclude patentability
where subject matter developed by another person, that would otherwise
qualify under 35 U.S.C. 102(g), and the claimed invention of an
application under examination were owned by the same person or subject
to an obligation of assignment to the same person at the time the
invention was made. See MPEP 706.02(l) and 2146 (Eighth Edition
(Aug. 2001)).
For additional examples of 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 priority under 35 U.S.C. 119 requires meeting the requirements
of 35 U.S.C. 101 and 112).
IV) Examination Procedures under 35 U.S.C. 102(e) and 374
(1) 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, Eighth Edition (Aug. 2001) as
revised by this notice.
(2) 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 U.S. and WIPO publications of patent
applications, and U.S. patents accorded prior art dates under 102(e).
(3) Determine if the potential reference under 102(e) is "by another."
The inventive entity of the application must be different than that of
the reference in order to apply a reference under 102(e). Note that,
where there are joint inventors, only one inventor need be different
for the inventive entities to be different and a rejection under
102(e) may be applicable even if there are some common inventors. See
MPEP 706.02(a), Eighth Edition (Aug. 2001) as revised by this notice.
(4) Determine the appropriate 102(e) date for each
potential reference by following the guidelines below and examples set
forth under Part V:
(a) The potential reference must be a U.S. patent, a U.S. application
publication (35 U.S.C. 122(b)) or a WIPO publication of an
international application under PCT Article 21(2) in order to apply the
reference under 102(e).
(b) Determine if the potential reference resulted from, or claimed the
benefit of, an international application. If the reference does, go to
step (c) below. The 102(e) date of a reference that did not result
from, nor claimed the benefit of, an international application is its
earliest effective U.S. filing date, taking into consideration any
proper priority or benefit claims to prior U.S. applications under
119(e) or 120 if the prior application(s) properly supports the subject
matter used to make the rejection. See MPEP 706.02(a), Eighth Edition
(Aug. 2001) as revised by this notice.
(c) If the potential reference resulted from, or claimed the benefit
of, an international application, the following must be determined:
i. If the international application meets the following three
conditions:
1. an international filing date on or after November 29, 2000;
2. designated the United States; and
3. published under PCT Article 21(2) in English, the international
filing date is a U.S. filing date for prior art purposes under
102(e). If such an international application properly claims benefit to
an earlier-filed U.S. or international application, or priority to an
earlier-filed U.S. provisional application, apply the reference under
102(e) as of the earlier filing date, assuming all the conditions of
102(e), 119(e), 120, or 365(c) are met. Note, where the earlier
application is an international application, the earlier international
application must satisfy the same three conditions (i.e., filed on or
after November 29, 2000, designated the U.S. and had been published in
English under PCT Article 21(2)).
ii. If the international application was filed on or after November
29, 2000, but did not designate the United States or was not published in
English under PCT Article 21(2), do not treat the international filing date
as a U.S. filing date for use under 35 U.S.C. 102(e) as a prior art date.
In this situation, do not apply the reference as of its international
filing date, its date of completion of the 371(c)(1), (2) and (4)
requirements, or any earlier filing date to which such an international
application claims benefit or priority. The reference may be applied under
102(a) or (b) as of its publication date, or 102(e) as of any later
U.S. filing date of an application that properly claimed the benefit of
the international application (if applicable).
iii. If the international application has an international filing
date prior to November 29, 2000, apply the reference under the provisions
of 102 and 374, prior to the AIPA amendments:
1. For U.S. patents, apply the reference under 102(e) as of the
earlier of the date of completion of the requirements of 371(c)(1),
(2) and (4) or the filing date of the later-filed U.S. application that
claimed the benefit of the international application.
2. For U.S. application publications and WIPO publications of
international applications under PCT Article 21(2), never apply these
references under 102(e). These references may be applied as of their
publication dates under 102(a) or (b).
3. For U.S. application publications of applications that claim
the benefit of an international application filed prior to November 29,
2000, apply the reference under 102(e) as of the actual filing date
of the later-filed U.S. application that claimed the benefit of the
international application.
iv. Examiners should be aware that although a publication of, or a
U.S. Patent issued from, an international application may not have a
102(e) date at all, or may have a 102(e) date that is after the
effective filing date of the application being examined (so it is not
"prior art"), the corresponding WIPO publication of an
international application will likely have an earlier 102(a) or (b)
date.
(d) Foreign applications' filing dates that are claimed (via 35 U.S.C.
119(a)-(d) or 365(a)) in applications, which have been published
as U.S. or WIPO application publications or patented in the U.S., may
not be used as 102(e) dates for prior art purposes. This
would include international filing dates claimed as foreign priority
dates under 35 U.S.C. 365(a).
(5) Determine whether 35 U.S.C. 103(c) common assignee considerations
apply.
If a 102(e) reference is applied in an obviousness rejection under
35 U.S.C. 103(a) (including provisional rejections) in an
application filed on or after November 29, 1999 iv, 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. A double
patenting rejection, however, based on the 102(e) reference could be
applied, if appropriate, even if the reference is disqualified from
being used a rejection under 103(a). See MPEP 706.02(l), Eighth
Edition (Aug. 2001).
(6) Apply the reference(s) under 102 or 103, based on the provision
of 102 that gives the best prior art date for the disclosure. If a
reference is prior art under both 102 (a) and (e), but not 102(b),
the reference should be applied under both provisions.
(a) Examiners should provide a copy of the appropriate statutory
language under which the rejection is made in the first Office action
utilizing such a rejection. Only revised (October 2002, or more
current) Form Paragraphs pertaining to 102(e) should be used.
(7) Final rejection practice: If a second or
subsequent action contains a new ground of rejection necessitated by
the change to 35 U.S.C. 102(e) that was not also necessitated by an
amendment to the claims or as a result of certain information
disclosure statements, that action cannot be made final. See MPEP
706.07(a), Eighth Edition (Aug. 2001).
V) Examples
In order to illustrate the prior art dates of U.S. and WIPO
publications of patent applications and United States
patents under 102(e), nine examples are presented below.
The examples only cover the most common factual situations that might
be encountered when determining the 102(e) date of a reference.
Examples 1 and 2 involve only U.S. application publications and U.S.
patents. Example 3 involves a priority claim to a foreign patent
application. Examples 4-9 involve international applications. The
time lines in the examples below show the history of the
prior art references that could be applied against the
claims of the application under examination, or the patent under
reexamination.
The dates in the examples below are arbitrarily used and are
presented for illustrative purposes only. Therefore, correlation of
patent grant dates with Tuesdays or application publication dates with
Thursdays may not be portrayed in the examples.
Example 1: Reference Publication and Patent of 111(a) Application with
no Priority/Benefit Claims
For reference publications and patents of patent applications
filed under 35 U.S.C. 111(a) with no claim for the benefit of, or
priority to, a prior application, the prior art dates under 102(e)
accorded to these references are the earliest effective United States
filing date. Thus, a publication and patent of a 111(a) application,
which does not claim any benefit under either 35 U.S.C. 119(e),
120 or 365(c), would be accorded the application's actual filing date
as its prior art date under 102(e).
Insert (See O.G. for drawing)
The 102(e)(1) date for Publication is: 08 Dec 2000
The 102(e)(2) date for the Patent is: 08 Dec 2000
Example 2: Reference Publication and Patent of 111(a) Application with
Priority/Benefit Claim to a Prior U.S. Provisional or Nonprovisional
Application
For reference publications and patents of patent applications
filed under 35 U.S.C. 111(a), the prior art dates under 102(e)
accorded to these references are the earliest effective United States
filing dates. Thus, a publication and patent of a 111(a)
application, which claims priority under 35 U.S.C. 119(e) to a prior
U.S. provisional application or claims the benefit under 35 U.S.C.
120 of a prior nonprovisional application, would be accorded the
earlier filing date as its prior art date under 102(e), assuming the
earlier-filed application has proper support for the subject matter as
required by 119(e) or 120.
Insert (See O.G. for drawing)
The 102(e)(1) date for Publication is: 01 Jan 2000
The 102(e)(2) date for the Patent is: 01 Jan 2000
Example 3: Reference Publication and Patent of 111(a) Application with
119(a)-(d) Benefit Claim to a Prior Foreign Application
For reference publications and patents of patent applications
filed under 35 U.S.C. 111(a), the prior art dates under 102(e)
accorded to these references are the earliest effective United States
filing dates. No benefit of the filing date of the foreign application
is given under s 102(e) for prior art purposes (In re Hilmer,
149 USPQ 480 (CCPA 1966)). Thus, a publication and patent of a
111(a) application, which claims benefit under 35 U.S.C. 119(a)-(d)
to a prior foreign-filed application, would be accorded its United
States filing date as its prior art date under 102(e).
Insert (See O.G. for drawing)
The 102(e)(1) date for Publication is: 21 Jun 1999
The 102(e)(2) date for the Patent is: 21 Jun 1999
Example 4: References based on the National Stage ( 371) of an
International Application filed on or after November 29, 2000 and which
was published in English under PCT Article 21(2).
All references, whether the WIPO publication, the U.S.
application publication or the U.S. patent, of an international
application (IA) that was filed on or after November 29, 2000,
designated the U.S., and was published in English under PCT Article
21(2) by WIPO, have the 102(e) prior art date of the international
filing date or earlier effective U.S. filing date. No benefit of the
international filing date (nor any U.S. filing dates prior to the IA),
however, is given for 102(e) prior art purposes if the IA was
published under PCT Article 21(2) in a language other than English.
Insert (See O.G. for drawing)
The 102(e)(1) date for the IA publication by WIPO is: 01 Jan 2001
The 102(e)(1) date for Publication by USPTO is: 01 Jan 2001
The 102(e)(2) date for the Patent is: 01 Jan 2001
Additional Priority/Benefit Claims:
. If a later-filed U.S. nonprovisional ( 111(a)) application
claimed the benefit of the IA in the example above, the 102(e) date
of the patent or publication of the later-filed U.S. application would
be the international filing date, assuming the earlier-filed IA has
proper support for the subject matter relied upon as required by 120.
. If the IA properly claimed priority to an earlier-filed U.S.
provisional ( 111(b)) application or the benefit of an earlier-filed
U.S. nonprovisional ( 111(a)) application, the 102(e) date for all
the references would be the filing date of the earlier-filed U.S.
application, assuming the earlier-filed application has proper support
for the subject matter relied upon as required by 119(e) or 120.
Example 5: References based on the National Stage ( 371) of an
International Application filed on or after November 29, 2000 and which was
not published in English under PCT Article 21(2).
All references, whether the WIPO publication, the U.S.
application publication or the U.S. patent, of an international
application (IA) that was filed on or after November 29, 2000 but was
not published in English under PCT Article 21(2)
by WIPO, have no 102(e) prior art date at all. According to
102(e), no benefit of the international filing date (nor any U.S.
filing dates prior to the IA) is given for 102(e) prior art purposes
if the IA was published under PCT Article 21(2) in a language other
than English regardless of whether the international application
entered the National Stage. Such references may be applied under
102(a) or (b) as of their publication dates, but never under 102(e).
Insert (See O.G. for drawing)
The 102(e)(1) date for the IA publication by WIPO is: None
The 102(e)(1) date for Publication by USPTO is: None
The 102(e)(2) date for the Patent is: None
The IA publication by WIPO can be applied under 102(a) or (b) as of
its publication date (01 July 2002).
Additional Priority/Benefit Claims:
. If the IA properly claimed priority/benefit to any earlier-filed
U.S. application (whether provisional or nonprovisional), there would
still be no 102(e) date for all the references.
. If a later-filed U.S. nonprovisional ( 111(a)) application
claimed the benefit of the IA in the example above, the 102(e) date
of the patent or publication of the later-filed U.S. application would
be the actual filing date of the later-filed U.S. application.
Example 6: References based on the National Stage ( 371) of an
International Application filed prior to November 29, 2000 (language of the
publication under PCT Article 21(2) is not relevant)
The reference U.S. patent issued from an international
application (IA) that was filed prior to November 29, 2000 has a
102(e) prior art date of the date of fulfillment of the requirements of
35 U.S.C. 371(c)(1), (2) and (4). This is the pre-AIPA 102(e).
The application publications, both the WIPO publication and the U.S.
publication, published from an international application that was filed
prior to November 29, 2000, do not have any 102(e) prior art date.
According to the effective date provisions as amended by H.R. 2215, the
amendments to 102(e) and 374 are not applicable to international
applications having international filing dates prior to November 29,
2000. The application publications can be applied under 102(a) or
(b) as of their publication dates.
Insert (See O.G. for drawing)
The 102(e)(1) date for the IA publication by WIPO is: None
The 102(e)(1) date for Publication by USPTO is: None
The 102(e) date for the Patent is: 01 July 2002
The IA publication by WIPO can be applied under 102(a) or (b) as of
its publication date (01 July 2001).
Additional Priority/Benefit Claims:
. If the IA properly claimed priority/benefit to any earlier-filed
U.S. application (whether provisional or nonprovisional), there would
still be no 102(e)(1) date for the U.S. and WIPO application
publications, and the 102(e) date for the patent will still be 01
July 2002 (the date of fulfillment of the requirements under
371(c)(1), (2) and (4)).
. If a later-filed U.S. nonprovisional ( 111(a)) application
claimed the benefit of the IA in the example above, the 102(e)(1)
date of the application publication of later-filed U.S. application
would be the actual filing date of the later-filed U.S. application,
and 102(e) date of the patent of the later-filed U.S. application
would be 01 July 2002 (the date that the earlier-filed IA fulfilled the
requirements of 371(c)(1), (2) and (4)).
. If the patent was based on a later-filed U.S. application that
claimed the benefit of the international application and the later
filed U.S. application's filing date is before the date the
requirements of 35 U.S.C. 371(c)(1)(2) and (4) were fulfilled (if
fulfilled at all), the 102(e) date of the patent would be the filing
date of the later-filed U.S. application that claimed the benefit of
the international application.
Example 7: References based on a 111(a) Application which is a
Continuation of an International Application, which was filed on or after
November 29, 2000, designated the U.S. and was published in English under
PCT Article 21(2)
All references, whether the WIPO publication, the U.S.
application publication or the U.S. patent of, or claiming the benefit
of, an international application (IA) that was filed on or after
November 29, 2000, designated the U.S. and was published in English
under PCT Article 21(2) by WIPO, have the 102(e) prior art date of
the international filing date or earlier effective U.S. filing date. No
benefit of the international filing date (nor any U.S. filing dates
prior to the IA), however, is given for 102(e) purposes if the IA
was published under PCT Article 21(2) by WIPO in a language other than
English.
Insert (See O.G. for drawing)
The 102(e)(1) date for the IA publication by WIPO is: 01 Mar 2001
The 102(e)(1) date for Publication by USPTO is: 01 Mar 2001
The 102(e)(2) date for the Patent is: 01 Mar 2001
Additional Priority/Benefit Claims:
. If the IA properly claimed priority to an earlier-filed U.S.
provisional ( 111(b)) application or the benefit of an earlier-filed
U.S. nonprovisional ( 111(a)) application, the 102(e) date for all
the references would be the filing date of the earlier-filed U.S.
application, assuming the earlier-filed application has proper support
for the subject matter relied upon as required by 119(e) or 120.
. If a second, later-filed U.S. nonprovisional ( 111(a))
application claimed the benefit of the 111(a) application in the
example above, the 102(e) date of the patent or publication of the
second, later-filed U.S. application would still be the international
filing date of the IA, assuming the earlier-filed IA has proper support
for the subject matter relied upon as required by 120 and 365(c).
Example 8: References based on a 111(a) Application which is a
Continuation of an International Application, which was filed on or after
November 29, 2000 and was not published in English under PCT Article 21(2)
Both the U.S. publication and the U.S. patent of the 111(a)
continuation of an international application (IA) that was filed on or
after November 29, 2000 but was not published in English under PCT
Article 21(2) by WIPO have the 102(e) prior art date of its actual
U.S. filing date under 111(a). No benefit of the international
filing date (nor any U.S. filing dates prior to the IA) is given for
102(e) purposes if the IA was published under PCT Article 21(2) in a
language other than English. The IA publication under PCT Article 21(2)
does not have a prior art date under 102(e)(1) because the IA was
not published in English under PCT Article 21(2). The IA publication
under PCT Article 21(2) can be applied under 102(a) or (b) as of its
publication date.
Insert (See O.G. for drawing)
The 102(e)(1) date for the IA publication by WIPO is: None
The 102(e)(1) date for Publication by USPTO is: 01 May 2003
The 102(e)(2) date for the Patent is: 01 May 2003
The IA publication by WIPO can be applied under 102(a) or
(b) as of its publication date (01 Sept 2002).
Additional Priority/Benefit Claims:
. If the IA properly claimed priority/benefit to any earlier-filed
U.S. application (whether provisional or nonprovisional), there would
still be no 102(e)(1) date for the IA publication by WIPO, and the
U.S. application publication and patent would still have a 102(e)
date of the actual filing date of the later-filed 111(a) application
in the example above (01 May 2003).
. If a second, later-filed U.S. nonprovisional ( 111(a))
application claimed the benefit of the 111(a) application in the
example above, the 102(e) date of the patent or publication of the
second, later-filed U.S. application would still be the actual filing
date of the 111(a) application in the example above (01 May 2003).
Example 9: References based on a 111(a) Application which is a
Continuation (filed prior to any entry of the National Stage) of an
International Application, which was filed prior to November 29, 2000
(language of the publication under PCT Article 21(2) is not relevant)
Both the U.S. publication and the U.S. patent of the 111(a)
continuation (filed prior to any entry of the National Stage) of an
international application (IA) that was filed prior to November 29,
2000 have the 102(e) prior art date of its actual U.S. filing date
under 111(a). No benefit of the international filing date (nor any
U.S. filing dates prior to the IA) is given for 102(e) prior art
purposes if the IA was filed prior to November 29, 2000. The IA
publication under PCT Article 21(2) does not have a prior art date
under 102(e)(1) because the IA was filed prior to November 29, 2000.
The IA publication under PCT Article 21(2) can be applied under
102(a) or (b) as of its publication date.
Insert (See O.G. for drawing)
The 102(e)(1) date for the IA publication by WIPO is: None
The 102(e)(1) date for Publication by USPTO is: 01 Dec 2000
The 102(e) date for the Patent is: 01 Dec 2000
The IA publication by WIPO can be applied under 102(a) or
(b) as of its publication date (01 Sept 2000).
Additional Priority/Benefit Claims:
. If the IA properly claimed priority/benefit to any earlier-filed
U.S. application (whether provisional or nonprovisional), there would
still be no 102(e)(1) date for the IA publication by WIPO, and the
U.S. application publication and patent would still have a 102(e)
date of the actual filing date of later-filed 111(a) application in
the example above (01 Dec 2000).
. If a second, later-filed U.S. nonprovisional ( 111(a))
application claimed the benefit of 111(a) application in the example
above, the 102(e) date of the patent or publication of the second,
later-filed U.S. application would still be the actual filing date of
the 111(a) application in the example above (01 Dec 2000).
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
i An original version of this Notice, signed on
November 4, 2002, was posted on the Office's web site, and disseminated
in paper copy form as a Pre-OG Notice as it was expected that the
Notice would soon publish in the Official Gazette. In view of comments
received, however, this revised version of the Notice additionally
includes a clarification of Office policy in "(7) Final Rejection
Practice" in Section IV of the Discussion portion, some further
applicability notes in Examples 5 and 6 in Section V of the Discussion
portion, and some minor edits. In addition, Item B of the Significant
Provisions portion, the third paragraph of Section II of the Discussion
portion and part (c)(ii) of "(4) Determine the appropriate 102(e)
date for each potential reference by following the guidelines below and
examples set forth under Part V" in Section IV of the Discussion
portion have been revised to note that the filing dates of
international applications that designate the U.S. (which are filing
dates in the U.S.) are only treated as prior art dates under 35 U.S.C.
102(e) under certain circumstances. This revised Notice signed
December 11, 2002, therefore, supercedes the original Notice.
ii If the reference is a patent based on an International Application filed
prior to November 29, 2000, 102(e) prior to the AIPA is used to determine
its 102(e) prior art date.
iii The amendments to 102(e) were set forth in
section 4505 of the AIPA, as amended by H.R. 2215. The amendments to
374 were set forth in section 4507 of the AIPA, as amended by H.R. 2215.
iv The revision to 35 U.S.C. 103(c) was made in
4807 of the AIPA and is applicable only to applications filed on or
after November 29, 1999.