2127 Domestic and Foreign Patent Applications as Prior Art
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I. ABANDONED APPLICATIONS, INCLUDING PROVISIONAL APPLICATIONS
Abandoned Applications Disclosed to the Public Can Be Used as Prior Art
“An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent [application] is reference[d] in the disclosure of another patent, in a publication, or by voluntary disclosure under former Defensive Publication rule
An abandoned patent application becomes available as prior art only as of the date the public gains access to it.
- However, the subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent or U.S. patent application publication may be relied on in a 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) rejection based on that patent or patent application publication if the disclosure of the abandoned application is actually included or incorporated by reference in the patent.
The court reversed a rejection over a patent which was a continuation-in-part of an abandoned application. Applicant’s filing date preceded the issue date of the patent reference. The abandoned application contained subject matter which was essential to the rejection but which was not carried over into the continuation-in-part. The court held that the subject matter of the abandoned application was not available to the public as of either the parent’s or the child’s filing dates and thus could not be relied on in the pre-AIA 35 U.S.C. 102(e) rejection.
II. APPLICATIONS WHICH HAVE ISSUED AS PATENTS
A. A 35 U.S.C. 102(a)(2) or Pre-AIA 35 U.S.C. 102(e) Rejection Cannot Rely on Matter Which Was Canceled from the Application and Thus Did Not Get Published in the Issued Patent or Application Publication
Canceled matter in the application file of a U.S. patent cannot be relied upon in a rejection under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e).
- The canceled matter only becomes available as prior art as of the date the application issues into a patent since this is the date the application file history becomes available to the public.
- However, such matter may be available as prior art under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(b).
B. A 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(b) Rejection Over a Published Application May Rely on Information that Was Canceled Prior to Publication
Figures that had been canceled from a Canadian patent application before issuance of the patent were available as prior art under pre-AIA 35 U.S.C. 102(b) as of the date the application became publicly accessible.
- The patent at issue and its underlying application were available for public inspection at the Canadian Patent Office more than one year before the effective filing date of the patents in suit.
III. FOREIGN APPLICATIONS OPEN FOR PUBLIC INSPECTION (LAID OPEN APPLICATIONS)
Laid Open Applications May Constitute “Published” Documents
When the specification is not issued in printed form but is announced in an official journal and anyone can inspect or obtain copies, it is sufficiently accessible to the public to constitute a “publication” within the meaning of 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) and (b).
- Older cases have held that laid open patent applications are not “published” and cannot constitute prior art.
- However, whether or not a document is “published” for the purposes of 35 U.S.C. 102 and 35 U.S.C. 103 depends on how accessible the document is to the public.
- As technology has made reproduction of documents easier, the accessibility of the laid open applications has increased. Items provided in easily reproducible form have thus become “printed publications” as the phrase is used in 35 U.S.C. 102.
Laid open Australian patent application held to be a “printed publication” even though only the abstract was published because it was laid open for public inspection, microfilmed, “diazo copies” were distributed to five suboffices having suitable reproduction equipment and the diazo copies were available for sale.
The contents of a foreign patent application should not be relied upon as prior art until the date of publication (i.e., the insertion into the laid open application) can be confirmed by an examiner’s review of a copy of the document.
IV. PENDING U.S. APPLICATIONS
As specified in 37 CFR 1.14(a), all pending U.S. applications are preserved in confidence except for published applications (see also 35 U.S.C. 122(b)), reissue applications, and applications in which a request to open the complete application to inspection by the public has been granted by the Office.
- However, if an application that has not been published has an assignee or inventor in common with the application being examined, a rejection will be proper in some circumstances.
- For instance, when the claims between the two applications are not independent or distinct, a provisional double patenting rejection is made.
- If the copending applications differ by at least one inventor and at least one of the applications would have been obvious in view of the other, a provisional rejection over 35 U.S.C. 102(a)(2) or 35 U.S.C. 102(e) or 35 U.S.C. 103 is made when appropriate
