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2139 Rejections Under Pre-AIA 35 U.S.C. 102

MPEP SECTION SUMMARY This section provides an overview of the types of applications subject to rejections under pre-AIA 35 U.S.C. 102(a).

  Section Frequency Chart

Any application filed before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103 (i.e., the application is a pre-AIA first to invent application). Note that neither the filing of a request for continued examination, nor entry into the national stage under 35 U.S.C. 371, constitutes the filing of a new application.

• Accordingly, such an application remains subject to pre-AIA 35 U.S.C. 102 and 103 even if a request for continued examination is filed on or after March 16, 2013, in an application that was filed before March 16, 2013.
• Similarly, a PCT application filed before March 16, 2013, is subject to pre-AIA 35 U.S.C. 102 and 103, regardless of whether the application enters the national stage before or after March 16, 2013.

Certain applications filed on or after March 16, 2013 that claim the benefit of a filing date earlier than March 16, 2013 under 35 U.S.C. 120, 121, or 365 are also governed by pre-AIA 35 U.S.C. 102.

MPEP SECTION SUMMARY This section covers the effective filing date of a claimed invention under pre-AIA 35 U.S.C. 102.

In examining applications subject to pre-AIA 35 U.S.C. 102, the effective filing date of the claimed invention is the actual filing date of the U.S. application, unless situation (A), (B), or (C) as set forth below applies. Note that the actual U.S. filing date of an application that entered the national stage is the international filing date.

• (A) If the application is a continuation or divisional of one or more earlier U.S. applications or international applications and if the requirements of 35 U.S.C. 120 or 365(c) have been satisfied, the effective filing date of the claimed invention is the same as the earliest filing date in the line of continuation or divisional applications.
• (B) If the application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the specification and claims of the parent application have an effective filing date equal to the actual filing date of the new application. Any claims which are fully supported under 35 U.S.C. 112 by the earlier parent application have the effective filing date of that earlier parent application.
• (C) If the application properly claims benefit under 35 U.S.C. 119(e) to a provisional application, the effective filing date of the claimed invention is the filing date of the provisional application for any claims which are fully supported under the first paragraph of 35 U.S.C. 112 by the provisional application.

The effective filing date for claims subject to pre-AIA 35 U.S.C. 102 is not the filing date of the foreign priority document, although the filing date of the foreign priority document may be used to overcome certain references.

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

MPEP SECTION SUMMARY This section covers whether to apply pre-AIA 35 U.S.C. 102(a), (b), or (e). The full text reads: A person shall be entitled to a patent unless - (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent. (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or ---- (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 --- This section expands on when to use each of these for prior art rejections in applications under pre-AIA.

I.   PRE-AIA 35 U.S.C. 102(b)

First, the examiner should consider whether the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(b) because this section results in a statutory bar to obtaining a patent.

• If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the application, the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(b).

Where the last day of the year dated from the date of publication falls on a Saturday, Sunday or Federal holiday, the publication is not a statutory bar under pre-AIA 35 U.S.C. 102(b) if the application was filed on the next succeeding business day.

II.   PRE-AIA 35 U.S.C. 102(e)

If the publication or issue date of the reference is too recent for pre-AIA 35 U.S.C. 102(b) to apply, then the examiner should consider pre-AIA 35 U.S.C. 102(e).

• 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 version of 35 U.S.C. 102(e) in force on November 28, 2000.

• In order to apply a reference under pre-AIA 35 U.S.C. 102(e) , the inventive entity of the application must be different than that of the reference.
• Note that, where there are joint inventors, only one inventor needs to be different for the inventive entities to be different and a rejection under pre-AIA 35 U.S.C. 102(e) is applicable even if there are some inventors in common between the application and the reference.

Pre-AIA 35 U.S.C. 102(e) has two separate clauses;

1. pre-AIA 35 U.S.C. 102(e)(1) for publications of patent applications and
   
2. pre-AIA 35 U.S.C. 102(e)(2) for U.S. patents.

Pre-AIA 35 U.S.C. 102(e)(1), in combination with 35 U.S.C. 374, created a new category of prior art by providing prior art effect for certain publications of patent applications, including certain international applications, as of their effective United States filing dates (which include certain international filing dates).

• Under pre-AIA 35 U.S.C. 102(e), an international filing date which is on or after November 29, 2000 is the United States filing date 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.
• Therefore, the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date (if all three conditions noted above are met) or an earlier U.S. filing date for which priority or benefit is properly claimed.

Publication under PCT Article 21(2) may result from a request for early publication by an applicant of an international application or after the expiration of 18-months after the earliest claimed filing date in an international application.

An applicant in an international application that has designated only the U.S. continues to be required to request publication from WIPO as the reservation under PCT Article 64(3) continues to be in effect for such applicants.

International applications may not be used to reach back (bridge) to an earlier filing date through a priority or benefit claim for prior art purposes under pre-AIA 35 U.S.C. 102(e) if the following conditions are met:

• they were filed prior to November 29, 2000, or
  
• they did not designate the U.S., or
  
• they were not published in English under PCT Article 21(2) by WIPO,

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.

• No international filing dates prior to November 29, 2000 may be relied upon as a prior art date under pre-AIA 35 U.S.C. 102(e).

III.   35 U.S.C. 102(e) AS IN FORCE ON NOVEMBER 28, 2000

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 pre-AIA 35 U.S.C. 102(e) as in force on November 28, 2000.

• Thus, the pre-AIA 35 U.S.C. 102(e) 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 (35 U.S.C. 371)) do not have a pre-AIA 35 U.S.C. 102(e) date at all (however, such publications are available as prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of the publication date).

IV.   PRE-AIA 35 U.S.C. 102(a)

Even if the reference is prior art under pre-AIA 35 U.S.C. 102(e), the examiner should still consider pre-AIA 35 U.S.C. 102(a) for two reasons.

• First, if the reference is a U.S. patent or patent application publication of, or claims benefit of, an international application, the publication of the international application under PCT Article 21(2) may be the earliest prior art date under pre-AIA 35 U.S.C. 102(a) for the disclosure.
• Second, references that are only prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g) and applied in a rejection under pre-AIA 35 U.S.C. 103(a) are subject to being disqualified under pre-AIA 35 U.S.C. 103(c) if the reference and the application were commonly owned, or subject to an obligation of common assignment, at the time the invention was made.

For pre-AIA 35 U.S.C. 102(a) to apply, the reference must have a publication date earlier in time than the effective filing date of the application, and must not be applicant’s own work.

» 2152 Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)