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2136.03   Critical Reference Date

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

MPEP SECTION SUMMARY This section discusses the critical reference date. For instance, a reference's foreign priority date under 35 U.S.C. 119(a)-(d) and (f) cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. This section also covers the critical reference date of international applications filed on or after November 29, 2000 as well as international applications filed before November 29, 2000. An addition to covering the foreign priority date and the date from international applications, this section also discusses priority from provisional applications under 35 U.S.C. 119(e) as well as the parent's filing date when the reference is a continuation-in-part of the parent. Finally, the pre-AIA 35 U.S.C. 102(e) reference date is the filing date, not the date of the inventor's conception or reduction to practice.

I.   FOREIGN PRIORITY DATE

Reference’s Foreign Priority Date Under 35 U.S.C. 119(a)-(d) and (f) Cannot Be Used as the Pre-AIA 35 U.S.C. 102(e) Reference Date

Pre-AIA 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 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).
• Therefore, the foreign priority date of the reference under 35 U.S.C. 119(a)-(d), (f), and 35 U.S.C. 365(a) cannot be used to antedate the application filing date.
• In contrast, applicant may be able to overcome the pre-AIA 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.

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.

II.   INTERNATIONAL (PCT) APPLICATIONS; INTERNATIONAL APPLICATION PUBLICATIONS

A.   International Application Filed On or After November 29, 2000

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,
• (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 pre-AIA 35 U.S.C. 102(a) or (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).

B.   International Application Filed Before November 29, 2000

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) as set forth below.

If an international application has an international filing date prior to November 29, 2000, the reference should be applied under the provisions of 35 U.S.C. 102 and 374 as in force on November 28, 2000 (prior to the AIPA amendments):

• (1) For U.S. patents, apply the reference under 35 U.S.C. 102(e) as in force on November 28, 2000 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) as in force on November 28, 2000. These references may be applied as of their publication dates under pre-AIA 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 in force on November 28, 2000 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 be available as prior art under former 35 U.S.C. 102(e) as in force on November 28, 2000 or under pre-AIA 35 U.S.C. 102(e), the corresponding WIPO publication of an international application may have an earlier  pre-AIA 35 U.S.C. 102(a) or (b) date.

III.   PRIORITY FROM PROVISIONAL APPLICATION UNDER 35 U.S.C. 119(e)

The pre-AIA 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(a)/ pre-AIA 35 U.S.C. 112, first paragraph.

Note that international applications which:

• were filed prior to November 29, 2000, or
• did not designate the U.S., or
• 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 pre-AIA 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 Pre-AIA 35 U.S.C. 102(e) Date If It Supports the Subject Matter Relied Upon in the Child

For prior art purposes, a U.S. patent or patent application publication that claims the benefit of an earlier filing date under 35 U.S.C. 120 of a prior nonprovisional application would be accorded the earlier filing date as its prior art date under pre-AIA  35 U.S.C. 102(e), provided the earlier-filed application properly supports the subject matter relied upon in any rejection in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.  112, first paragraph.

• In other words, the subject matter used in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112(a) or pre-AIA 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).

V.   DATE OF CONCEPTION OR REDUCTION TO PRACTICE

Pre-AIA 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 pre-AIA 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 pre-AIA 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.

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 pre-AIA 35 U.S.C. 102(e).

The date that the prior art subject matter was conceived or reduced to practice is of no importance when pre-AIA 35 U.S.C. 102(g) is not at issue.

 

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