2136    Pre-AIA 35 U.S.C. 102(e)

 This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

Pre-AIA 35 U.S.C. 102(e) allows the use of certain international application publications and U.S. patent application publications, and certain U.S. patents as prior art under pre-AIA 35 U.S.C. 102(e) as of their respective U.S. filing dates, including certain international filing dates.

• The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language.

References based on international applications that were filed prior to November 29, 2000 are subject to the pre-AIPA version of 35 U.S.C. 102(e) (i.e., the version in force on November 28, 2000).

I.   DETERMINE THE APPROPRIATE PRE-AIA 35 U.S.C. 102(e) DATE FOR EACH POTENTIAL REFERENCE BY FOLLOWING THE GUIDELINES, EXAMPLES, AND FLOW CHARTS SET FORTH BELOW:

• (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 pre-AIA 35 U.S.C. 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 35 U.S.C. 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 benefit claims to prior U.S. applications under 35 U.S.C. 119(e) or 120 if the prior application(s) properly supports the subject matter used to make the rejection in compliance with 35 U.S.C. 112, first paragraph.
  • For benefit claims under 35 U.S.C. 119(e), at least one claim of the reference patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of a relied upon provisional application's filing date.
• (C) If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined:
• (1) If the international application meets the following three conditions:
• (a) an international filing date on or after November 29, 2000;
• (b) designated the United States; and
• (c) published under PCT Article 21(2) in English.
• then the international filing date is a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
  • If such an international application properly claims benefit to an earlier-filed U.S. or international application, or to an earlier-filed U.S. provisional application, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the earlier filing date, assuming all the conditions of pre-AIA 35 U.S.C. 102(e), 119(e), 120, or 365(c) are met.
  • The subject matter used in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112, first paragraph, in order for that subject matter to be entitled to the earlier filing date under pre-AIA 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 pre-AIA 35 U.S.C. 102(e).
• (2) 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 prior art purposes. 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 pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b) as of its publication date, or pre-AIA 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).
• (3) If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of pre-AIA 35 U.S.C. 102 and 374, prior to the AIPA amendments:
• (a) For U.S. patents, apply the reference under pre-AIA 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;
• (b) For U.S. application publications and WIPO publications directly resulting from international applications under PCT Article 21(2), never apply these references under pre-AIA 35 U.S.C. 102(e). These references may be applied as of their publication dates under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b);
• (c) 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 pre-AIA 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.
• (4) Examiners should be aware that although a publication of, or a U.S. Patent issued from, an international application may not have a pre-AIA 35 U.S.C. 102(e) date at all, or may have a pre-AIA 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 pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b)) date.
• (D) Foreign applications’ filing dates that are claimed in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 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) or (b).

II.   EXAMPLES

Now that you’ve been exposed to the basics, try answering the following questions related to 35 U.S.C. 102(e) filing dates.

The objective is to figure out what the 35 U.S.C. 102(e) filing date is for each of the following scenarios:

• the 102(e)(1) date relates to the date used for any subsequent publications that may arise from the given example
• the 102(e)(2) date relates to the date used for any patents that may issue from the given example
  

» 2136.01 Status of U.S. Application as a Reference