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2136.03 Critical Reference Date [R-2] - 2100 Patentability
2136.03 Critical Reference Date [R-2]
I. FOREIGN PRIORITY DATE
Reference's Foreign Priority Date Under 35 U.S.C. 119(a)-(d) and (f) Cannot Be Used as the 35 U.S.C. 102(e) Reference Date
35 U.S.C. 102(e) is explicitly limited to certain references "filed in the United States before the invention thereof by the applicant" (emphasis added). Foreign applications' filing dates that are claimed (via 35 U.S.C. 119(a) - (d), (f) 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 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).Therefore, the foreign priority date of the reference under 35 U.S.C. 119(a)-(d) (f), and 365(a) cannot be used to antedate the application filing date. In contrast, applicant may be able to overcome the 35 U.S.C. 102(e) rejection by proving he or she is entitled to his or her own 35 U.S.C. 119 priority date which is earlier than the reference's U.S. filing date. In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966) (Hilmer I) (Applicant filed an application with a right of priority to a German application. The examiner rejected the claims over a U.S. patent to Habicht based on its Swiss priority date. The U.S. filing date of Habicht was later than the application's German priority date. The court held that the reference's Swiss priority date could not be relied on in a 35 U.S.C. 102(e) rejection. Because the U.S. filing date of Habicht was later than the earliest effective filing date (German priority date) of the application, the rejection was reversed.). See MPEP § 201.15 for information on procedures to be followed in considering applicant's right of priority.
Note that certain international application (PCT) filings are considered to be "filings in the United States" for purposes of applying an application publication as prior art . See MPEP § 706.02(a).
II. INTERNATIONAL (PCT) APPLICA-TIONS; INTERNATIONAL APPLICA-TION PUBLICATIONS
If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined:
(A) 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
35 U.S.C. 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 35 U.S.C. 102(e) as of the earlier filing date, assuming all the conditions of 35 U.S.C. 102(e) and 35 U.S.C. 119(e), 120, or 365(c) are met. >In addition, the subject matter relied upon in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112, first paragraph, in order to give that subject matter the benefit of the earlier filing date under 35 U.S.C. 102(e).< 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)) for the earlier international filing date to be a U.S. filing date for prior art purposes under 35 U.S.C.102(e).(B) 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. In this situation, do not apply the reference as of its international filing date, its date of completion of the 35 U.S.C. 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 35 U.S.C. 102(a) or (b) as of its publication date, or 35 U.S.C. 102(e) as of any later U.S. filing date of an application that properly claimed the benefit of the international application (if applicable).
(C) If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of 35 U.S.C. 102 and 374, prior to the AIPA amendments:
(1) For U.S. patents, apply the reference under 35 U.S.C. 102(e) as of the earlier of the date of completion of the requirements of 35 U.S.C. 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 directly resulting from international applications under PCT Article 21(2), never apply these references under 35 U.S.C. 102(e). These references may be applied as of their publication dates under 35 U.S.C. 102(a) or (b);
(3) For U.S. application publications of applications that claim the benefit under 35 U.S.C. 120 or 365(c) of an international application filed prior to November 29, 2000, apply the reference under 35 U.S.C. 102(e) as of the actual filing date of the later-filed U.S. application that claimed the benefit of the international application.
Examiners should be aware that although a publication of, or a U.S. patent issued from, an international application may not have a 35 U.S.C. 102(e) date at all, or may have a 35 U.S.C. 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 may have an earlier 35 U.S.C. 102(a) or (b) date.
III. PRIORITY FROM PROVISIONAL APPLICATION UNDER 35 U.S.C. 119(e)
The 35 U.S.C. 102(e) critical reference date of a U.S. patent or U.S. application publications and certain international application publications entitled to the benefit of the filing date of a provisional application under 35 U.S.C. 119(e) is the filing date of the provisional application with certain exceptions >if the provisional application(s) properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C. 112, first paragraph<. See MPEP § 706.02(f)(1), examples 5 to 9. Note that 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 35 U.S.C. 102(e).
IV. PARENT'S FILING DATE WHEN REFERENCE IS A CONTINUATION-IN-PART OF THE PARENT
Filing Date of U.S. Parent Application Can Only Be Used as the 35 U.S.C. 102(e) Date If It Supports the Claims of the Issued Child
In order to carry back the 35 U.S.C. 102(e) critical date of the U.S. patent reference to the filing date of a parent application, the **>U.S. patent reference< must * have a right of priority to the earlier date under 35 U.S.C. 120 or 365(c) and *>the parent application must< support the invention claimed as required by 35 U.S.C. 112, first paragraph. "For if a patent could not theoretically have issued the day the application was filed, it is not entitled to be used against another as 'secret prior art' " under 35 U.S.C. 102(e). In re Wertheim, 646 F.2d 527, 537, 209 USPQ 554, 564 (CCPA 1981) (The examiner made a 35 U.S.C. 103 rejection over a U.S. patent to Pfluger. The Pfluger patent (Pfluger IV) was the child of a string of abandoned parent applications (Pfluger I, the first application, Pfluger II and III, both CIPs). Pfluger IV was a continuation of Pfluger III. The court characterized the contents of the applications as follows: Pfluger I - subject matter A, II-AB, III-ABC, IV-ABC. ABC anticipated the claims of the examined application, but the filing date of III was later than the application filing date. So the examiner reached back to "A" in Pfluger I and combined this disclosure with another reference to establish obviousness. The court held that the examiner impermissibly carried over "A" and should have instead determined which of the parent applications contained the subject matter which made Pfluger patentable. Only if B and C were not claimed, or at least not critical to the patentability of Pfluger IV, could the filing date of Pfluger I be used. The court reversed the rejection based on a determination that Pfluger IV was only entitled to the Pfluger III filing date. The added new matter (C) was critical to the claims of the issued patent.). Note that In re Wertheim modified the holding of In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) as to "carrying back" the subject matter to the parent applications.
See also Ex parte Gilderdale, 1990 Pat. App. LEXIS 25 (Bd. Pat. App. & Inter. Appeal no. 89-0352) (The examiner made a 35 U.S.C. 102(e) rejection over a U.S. patent to Hernandez. Hernandez was a continuation of a continuation-in-part. Both the parent and grandparent had been abandoned. The parent listed a different inventive entity but supported the subject matter of the child's claims. The parent was filed on the same day as the examined application and thus no 35 U.S.C. 102(e) rejection could be made based on the parent's filing date. The Board reversed the rejection, explaining that the Hernandez patent was entitled to the filing date of its parent, as the parent supported the patent claims and 35 U.S.C. 120 was satisfied. Under 35 U.S.C. 120, an application can claim the benefit of an earlier filing date even if not all inventors are the same. However, Hernandez was not entitled to the grandparent filing date because the parent and child applications contained new matter as compared to the grandparent.).
Compare Ex parte Ebata, 19 USPQ2d 1952 (Bd. Pat. App. & Inter. 1991) (The claims were directed to a method of administering a salt of lysocellin to animals. A 35 U.S.C. 102(e) rejection was made over Martin. Martin was a continuation of an application which was in turn a continuation-in-part of an abandoned application. The grandparent application disclosed administering a manganese complex of lysocellin to animals. The Board found that "the new matter relates to additional forms of lysocellin which are useful in Martin's process, i.e., species or embodiments other than the manganese complex. This is far different from adding limitations which are required or necessary for patentability." Unlike the situation in In re Wertheim, Martin's invention was patentable as presented in the grandparent application.).
See also MPEP § 706.02(f)(1), examples 2 and 5 to 9.
V. DATE OF CONCEPTION OR REDUCTION TO PRACTICE
35 U.S.C. 102(e) Reference Date Is the Filing Date Not Date of Inventor's Conception or Reduction to Practice
If a reference available under 35 U.S.C. 102(e) discloses, but does not claim the subject matter of the claims being examined or an obvious variant, the reference is not prior art under 35 U.S.C. 102(g). Furthermore, the reference does not qualify as "prior art" under 35 U.S.C. 102** as of a date earlier than its filing date based upon any prior inventive activity that is disclosed in the U.S. patent or U.S. patent application publication >in the absence of evidence that the subject matter was actually reduced to practice in this country on an earlier date<. See MPEP § 2138. When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing dates), as stated in 35 U.S.C. 102(e). See MPEP § 706.02(a). The date that the prior art subject matter was conceived or reduced to practice is of no importance when 35 U.S.C. 102(g) is not at issue. Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 983, 10 USPQ2d 1338, 1342 (Fed. Cir. 1989) (The defendant sought to invalidate patents issued to Mason and Sohn assigned to Sun Studs. The earliest of these patents issued in June 1973. A U.S. patent to Mouat was found which issued in March 1976 and which disclosed the invention of Mason and Sohn. While the patent to Mouat issued after the Mason and Sohn patents, it was filed 7 months earlier than the earliest of the Mason and Sohn patents. Sun Studs submitted affidavits showing conception in 1969 and diligence to the constructive reduction to practice and therefore antedated the patent to Mouat. The defendant sought to show that Mouat conceived the invention in 1966. The court held that conception of the subject matter of the reference only becomes an issue when the claims of the conflicting patents cover inventions which are the same or obvious over one another. When 35 U.S.C. 102(e) applies but not 35 U.S.C. 102(g), the filing date of the prior art patent is the earliest date that can be used to reject or invalidate claims.).
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