2135 Pre-AIA 35 U.S.C. 102(d)
This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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A person shall be entitled to a patent unless -
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(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.
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I. GENERAL REQUIREMENTS OF 35 U.S.C. 102(d)
Pre-AIA 35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a bar against the granting of a patent in this country:
- (A) The foreign application must be filed more than 12 months before the effective U.S. filing date;
- (B) The foreign application must have been filed by the same applicant as in the United States or by his or her legal representatives or assigns.
- (C) The foreign patent or inventor’s certificate must be actually granted (e.g., by sealing of the papers in Great Britain) before the U.S. filing date. It need not be published.
- (D) The same invention must be involved.
If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory bar.
II. SEARCHING FOR PRE-AIA 35 U.S.C. 102(d) PRIOR ART
The examiner should only undertake a search for an issued foreign patent for use as pre-AIA 35 U.S.C. 102(d) prior art if there is a reasonable possibility that a foreign patent covering the same subject matter as the U.S. application has been granted to the same inventive entity before the U.S. effective filing date, i.e., the time period between foreign and U.S. filings is greater than the usual time it takes for a patent to issue in the foreign country.
- Normally, the probability of the inventor’s foreign patent issuing before the U.S. filing date is so slight as to make such a search unproductive.
- However, it should be kept in mind that the average pendency varies greatly between foreign countries.
2135.01 The Four Requirements of Pre-AIA 35 U.S.C. 102(d)
This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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I. FOREIGN APPLICATION MUST BE FILED MORE THAN 12 MONTHS BEFORE THE EFFECTIVE U.S. FILING DATE
A. An Anniversary Date Ending on a Weekend or Holiday Results in an Extension to the Next Business Day
The U.S. application is filed in time to prevent a pre-AIA 35 U.S.C. 102(d) bar from arising if it is filed on the 1 year anniversary date of the filing date of the foreign application.
- If this day is a Saturday, Sunday or Federal holiday, the year would be extended to the following business day.
Despite changes to 37 CFR 1.6(a)(2) and 37 CFR 1.10, which require the PTO to accord a filing date to an application as of the date of deposit as “Express Mail” with the U.S. Postal Service in accordance with 37 CFR 1.10 (e.g., a Saturday filing date), the rule changes do not affect applicant’s concurrent right to defer the filing of an application until the next business day when the last day for “taking any action” falls on a Saturday, Sunday, or a Federal holiday (e.g., the last day of the 1-year grace period falls on a Saturday).
B. A Continuation-in-Part Breaks the Chain of Priority as to Foreign as Well as U.S. Parents
In the case where applicant files a foreign application, later files a U.S. application claiming priority based on the foreign application, and then files a continuation-in-part (CIP) application whose claims are not entitled to the filing date of the U.S. parent, the effective filing date is the filing date of the CIP and applicant cannot obtain the benefit of either the U.S. parent or foreign application filing dates.
- If the foreign application issues into a patent before the filing date of the CIP, it may be used in a pre-AIA 35 U.S.C. 102(d)/103 rejection if the subject matter added to the CIP does not render the claims nonobvious over the foreign patent.
II. FOREIGN APPLICATION MUST HAVE BEEN FILED BY SAME APPLICANT, HIS OR HER LEGAL REPRESENTATIVE OR ASSIGNS
Note that where the U.S. application was made by two or more inventors, it is permissible for these inventors to claim priority from separate applications, each to one of the inventors or a subcombination of inventors.
- For instance, a U.S. application naming inventors A and B may be entitled to priority from one application to A and one to B filed in a foreign country.
III. THE FOREIGN PATENT OR INVENTOR’S CERTIFICATE WAS ACTUALLY GRANTED BEFORE THE U.S. FILING DATE
A. To Be “Patented” an Exclusionary Right Must Be Awarded to the Applicant
“Patented” means “a formal bestowal of patent rights from the sovereign to the applicant.”
B. A Published Application Is Not a “Patent”
An application must issue into a patent before it can be applied in a pre-AIA 35 U.S.C. 102(d) rejection.
C. An Allowed Application Can Be a “Patent” for Purposes of Pre-AIA 35 U.S.C. 102(d) as of the Date Published for Opposition Even Though It Has Not Yet Been Granted as a Patent
An examined application which has been allowed by the examiner and published to allow the public to oppose the grant of a patent has been held to be a “patent” for purposes of rejection under pre-AIA 35 U.S.C. 102(d) as of the date of publication for opposition if substantial provisional enforcement rights arise.
D. Grant Occurs When Patent Becomes Enforceable
The critical date of a foreign patent as a reference under pre-AIA 35 U.S.C. 102(d) is the date the patent becomes enforceable (issued, sealed or granted).
E. Pre-AIA 35 U.S.C. 102(d) Applies as of Grant Date Even If There Is a Period of Secrecy After Patent Grant
A period of secrecy after granting the patent, as in Belgium and Spain, has been held to have no effect in connection with pre-AIA 35 U.S.C. 102(d).
- These patents are usable in rejections under pre-AIA 35 U.S.C. 102(d) as of the date patent rights are granted.
IV. THE SAME INVENTION MUST BE INVOLVED
“Same Invention” Means That the Application Claims Could Have Been Presented in the Foreign Patent
Under pre-AIA 35 U.S.C. 102(d), the “invention... patented” in the foreign country must be the same as the invention sought to be patented in the U.S.
- When the foreign patent contains the same claims as the U.S. application, there is no question that “the invention was first patented... in a foreign country.”
However, the claims need not be identical or even within the same statutory class.
- If applicant is granted a foreign patent which fully discloses the invention and which gives applicant a number of different claiming options in the U.S., the reference in pre-AIA 35 U.S.C. 102(d) to “‘invention... patented’ necessarily includes all the disclosed aspects of the invention. Thus, the [pre-AIA] section 102(d) bar applies regardless whether the foreign patent contains claims to less than all aspects of the invention.”
In essence, a pre-AIA 35 U.S.C. 102(d) rejection applies if applicant’s foreign application supports the subject matter of the U.S. claims.
Applicant was granted a Spanish patent claiming a method of making a composition. The patent disclosed compounds, methods of use and processes of making the compounds. After the Spanish patent was granted, the applicant filed a U.S. application with claims directed to the compound but not the process of making it. The Federal Circuit held that it did not matter that the claims in the U.S. application were directed to the composition instead of the process because the foreign specification would have supported claims to the composition. It was immaterial that the formulations were unpatentable pharmaceutical compositions in Spain.
