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35 U.S.C. § 102(e): The Legislative Fix (S.320) and

Serial Abandonment of Provisional Applications

Stephen G. Kunin

Deputy Commissioner for Patent Examination Policy USPTO

January 27, 2002

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“A person shall be entitled to a patent unless —

(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 if and only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or”*

* Note: The exception clause applies to the use of: (1) application publications, and (2) patents, as prior art. See slides 6, and 10-12

35 U.S.C. § 102(e) as proposed by S. 320

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I. U.S. Publications of nonprovisional applications* per §102(e)(1); New documents that did not exist prior to 11/29/00

II. U.S. Publications of the National Stage (§ 371) of International Applications (IAs)* per § 102(e)(1);

New documents that did not exist prior to 11/29/00III. World Intellectual Property Organization (WIPO) Publications of IAs

per §§ 374 and 102(e)(1); Existing documents prior to 11/29/00, but not covered by

§ 102(e); and IV. All U.S. Patents per § 102(e)(2).

Existing documents covered by § 102(e) prior to 11/29/00, but under current § 102(e)(2) the prior art date accorded to the reference may be different, this includes patents matured from International Applications and reexamination certificates.

*includes voluntary publications

Categories of Prior Art under S. 320’s version of 35 U.S.C. § 102(e)

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EFFECTIVE DATE.

`… Except as otherwise provided in this section, the amendments made by section 4505 shall be effective as of November 29, 2000 and shall apply to all patents and all applications for patents pending on or filed after November 29, 2000.

Patents resulting from an international application filed before November 29, 2000 and applications published pursuant to section 122(b) or Article 21(2) of the treaty defined in section 351(a) resulting from an international application filed before November 29, 2000

shall not be effective as prior art as of the filing date of the international application;

however, such patents shall be effective as prior art in accordance with section 102(e) in effect on November 28, 2000.‘

Notes: First sentence provides for uniform application of section 102(e)(1) and (2) when examining applications or evaluating the validity of patents regardless of filing date. Second sentence provides that references may not be applied as of an International filing date prior to 11/29/00, nor may IAs with a filing date prior to 11/29/00 be used as a bridge to an earlier U.S. filing date for prior art purposes.

Changes to the Effective Date Provision (§ 4508 of the AIPA) of 35 USC 102(e) – (§ 4505 of the AIPA)

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Applying S. 320’s version of 35 USC § 102(e):

I. The first sentence of § 4508 provides that the following cases would be subject to the change: All patents whenever granted, and all patent applications whenever

filed, would be subject to rejections based on the revised prior art treatment under S. 320’s version § 102(e) – and not the version of § 102(e) prior to the AIPA.

II. The prior art date of the reference publications and patents can be: the actual filing date of the application (including certain international filing

dates); an earlier U.S. filing date claimed by the applicant*; certain international filing dates claimed by the applicant* or the 35 U.S.C. § 371(c)(1)(2) and (4) date for patents derived from an IA

filed before 11/29/00 (per second sentence of §§ 4508)• Note: WIPO publications of IAs filed before 11/29/00 would have no prior art

effect under § 102(e)

* the relied upon application must provide adequate support for the relied upon subject matter in order for the earlier date to be used

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Applying S. 320’s version of 35 USC § 102(e):

When may an international filing date be applied as a prior art dateI. The second sentence of § 4508 provides that an

international filing date is considered a US filing date for purposes of offensive prior art use under S. 320’s version § 102(e) if the IA:1) has an international filing date on or after 11/29/00,2) was published under PCT Article 21(2) in English, and3) designated the United States

Note: The same IAs may serve as a bridge to use an earlier relied upon U.S. filing date as a prior art date under §102(e).

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Applying S. 320’s version of 35 USC § 102(e):When may an international filing date be applied as a prior art date (cont’d)

II. An international filing date prior to 11/29/00 may not be applied as a prior art date, nor may it serve as an intermediate filing to provide for use of an earlier filed US application’s filing date as a prior art date.

For any IAs filed prior to 11/29/00, patents derived from national stage applications, or from applications that claim benefit to the IA, may be applied as prior art as of the 35 U.S.C. § 371(c)(1), (2), and (4) date, if any, or a US filing date after the international filing date.

For any IAs filed prior to 11/29/00, publications by WIPO and by the US (voluntary published) may not be applied as of either the international filing date or the 35 U.S.C. § 371(c)(1)(2) and (4) date. These publications may only be applied as of their publication dates.

Note: An IA with a filing date prior to 11/29/00 many not serve as a bridge to any earlier filed US application for purposes of § 102(e).

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§ 111 (a) application filed with no claims

for benefit/priority

Publication P of § 111(a) application under § 122(b)

1. § 102(e)(1) date of Publication P: 01 Jan 20012. § 102(e)(2) date of a Patent issuing from the § 111(a)

application: 01 Jan 2001

Explanations for this slide and following slides: § 111(a) application = nonprovisional application filed under 35 U.S.C. § 111(a) § 111(b) application = provisional application filed under 35 U.S.C. § 111(b) 11/29/00 = effective date of AIPA amendments to §§ 102(e) and 374 IA = International Application WIPO = World Intellectual Property Organization* = Support for relied upon subject matter is present in first filing

01 Jan 2001 01 July 200211/29/00

PUBLICATION of § 111(a) APPLICATIONwith NO PRIORITY/BENEFIT CLAIMS

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01 Jan 1999 01 Jul 2003 01 Aug 2003

1st § 111(a) application filed claiming the benefit of the prior application under § 119(e)*

§ 111(b) application filed before effective date*

Publication P of the 2nd § 111(a) application under § 122(b)

11/29/00

PUBLICATION and PATENTS of § 111(a) APPLICATION with § 119(e) and § 120 PRIORITY CLAIMS

1. § 102(e)(1) date of Publication P: 01 Jan 1999 2. § 102(e)(2) date of any Patent issuing from either the first

or second § 111(a) application: 01 Jan 1999

31 Dec 1999

2nd § 111(a) application filed under 37 CFR 1.53(b) or (d), claiming benefit to prior applications under §§ 120 and 119(e)

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§ 111(b) applicationfiled*

Patent granted on § 371 application

371(c)(1)(2) and (4) date of National Stage

IA filed, with priority claim to prior US appl., designated US

01 Nov 1999 01 Nov 2003 30 Oct 2000

11/29/00

PUBLICATIONS and PATENT derived from an IA WHICH CLAIMS BENEFIT TO A U.S. APPLICATION

01 May 2001

IA publication by the WIPO in English

01 March 2002

Publication of national stage application in US per§ 122(b)

Critical factors: The WIPO publication of the IA was in English but the filing date of the IA was prior to 11/29/00. Thus,

The § 102(e)(1) date of the WIPO Publication is: NONEThe § 102(e)(1) date of the US § 122(b) Publication of the national stage application is: NONE, The § 102(e)(2) date for the Patent is: 01 April 2002, which is the § 371(c)(1), (2), and (4) date.

01 Apr 2002

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§ 111(b) applicationfiled *

Patent granted on § 371 application

IA filed, with priority claim to prior US appl., designated US

01 Dec 1999 01 Nov 2003 30 Nov 2000

11/29/00

PUBLICATIONS and PATENT derived from the NATIONAL STAGE of an IA WHICH CLAIMS BENEFIT to a U.S.

APPLICATION 01 June 2001

IA Publication by the WIPO in English

01 Apr 2002

Publication of national stage application in US per§ 122(b)

Critical factors: The WIPO Publication of the IA was in English and the filing date of the IA was after 11/29/00. Thus,

The § 102(e)(1) date of the WIPO Publication is: 01 Dec. 1999 The § 102(e)(1) date of the US § 122(b) Publication of the national stage application is: 01 Dec. 1999, The § 102(e)(2) date of the Patent is: 01 Dec. 1999.

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§ 111(b) applicationfiled, all inventors are Japanese *

Patent granted on § 371 application

IA filed in RO/JP, with priority claim to prior US appl., designated US

01 Dec 1999 01 Nov 2003 30 Nov 2000

11/29/00

PUBLICATIONS and PATENT derived from the NATIONAL STAGE of an IA WHICH CLAIMS BENEFIT to a U.S.

APPLICATION 01 June 2001

IA Publication by the WIPO not in English

01 Apr 2002

Publication of national stage application in US per§ 122(b)

Critical factors: The WIPO Publication of the IA was NOT in English and the IA was filed on or after 11/29/00. Thus,There would be no § 102(e)(1) date for the WIPO Publication, There would be no § 102(e)(1) date for the US § 122(b) Publication of the national stage application, andThere would be no § 102(e)(2) date for the Patent.Note: As the IA was filed after 11/29/00, only § 102(e)(2) applies.

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Treatment of the Implementation Issues of AIPA’s Version of § 102(e) as Proposed by S. 320

– The same prior art date would be given to a disclosure regardless of whether publication is in the form of a U.S. patent, U.S. patent application publication or WIPO publication

exception: IA filing date prior to 11/29/00

– The same prior art date would be used for a reference regardless of when the application under examination, or patent whose validity was questioned, was filed

– References may not have a § 102(e) date based on any IA filing dates before 11/29/00

• In addition, IA filing dates prior to 11/29/00 may not serve as a bridge to an earlier U.S. filing date under § 102(e)

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Treatment of the Implementation Issues of AIPA’s Version of § 102(e) as Proposed by S. 320 (cont’d)

– WIPO publications may be used as prior art immediately because U.S. national stage entry is not required

• allows for earlier (less costly) application of the prior art, • increases the certainty of patentability,• may reduce pendency and• applicants can choose between national stage entry and

continuation filing in the US without regard to creating differential prior art treatment of the WIPO publication

– A request from applicant for early publication by WIPO (PCT Article 21(2)) would not negate § 102(e) prior art effect of the publication (if any)

Note: IA must have been filed on or after 11/29/00 and the WIPO publication must be in English.

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Serial Abandonment of Provisional Applications

35 USC 119 § (c) provides:– In like manner and subject to the same conditions and

requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.

Note: As claims made under 35 U.S.C. § 119(e) are to domestic applications, 35 U.S.C. § 119(c) does not apply

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Serial Abandonment of Provisional Applications

35 U.S.C. § 119 (e)(1) provides in part:– An application for patent filed under section 111(a) or section

363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. . .

– Thus, a U.S. nonprovisional application’s benefit claim under 35 U.S.C. § 119(e) to a prior provisional is unaffected by 35 U.S.C. § 119(c)

• In other countries, Paris Convention Article 4(C)(4) may affect a claim to a subsequent U.S. provisional application

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Serial Abandonment of Provisional Applications

The Paris Convention provides in Article 4(C)(4):A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union, shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority. (emphasis added)

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The Drafting Committee provided a report to the Commission in support of the Lisbon revision of the Paris Convention (which adopted the current language in Article 4(C)(4)) which provided, in part, the following:

The change (Article 4(C)(4)) appears acceptable only if subject to two conditions:

Its application must be limited to only those cases where an inventor, being mistaken initially in regard to the scope or definition of his invention, later revises and replaces his or her original application with another.

Measures must be provided to eliminate any possibility of multiple priority rights.

To implement these conditions, … At the time the second application is filed, the first application:

Shall have been withdrawn, abandoned, or denied, Shall not have been published Shall allow no subsisting rights, …

See, Minutes of the Plenary Meeting (Second Meeting) for the 1958 Lisbon Revision of the Paris Convention.

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Serial Abandonment of Provisional Applications

– Example• Provisional 1 filed on 1/1/01• Provisional 2 filed on 7/1/01• U.S. nonprovisional and foreign filings on 7/1/02

– 35 U.S.C. § 119 (e) allows a U.S. nonprovisional application to be accorded priority rights from a subsequent U.S. provisional application even though a first U.S. provisional application was filed more than 12 months prior to the U.S. nonprovisional application,

– Consider how a foreign office may apply Paris Convention Art. 4(C)(4) if you file abroad more than 12 months after the first U.S. provisional application. Particularly be mindful of the “without leaving any rights outstanding” clause, and how it may be interpreted by a foreign office.

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U.S. Patent Term and Serial Filing of Provisional Applications

– Example #1:– A first U.S. provisional application is filed 6/1/00 supporting

embodiment A– A second U.S. provisional application is filed 5/1/01 supporting

embodiments A and B» A foreign counterpart application claiming embodiments A and B

is filed 6/1/01» The foreign counterpart application is published 12/1/01

– A third U.S. provisional application is filed 12/3/01 supporting embodiments A, B, and C.

– Client instructs practitioner to file a single U.S. nonprovisional including a genus claim covering A, B, and C and to maximize U.S. patent term

– When should the nonprovisional be filed? » By 12/2/02 (a Monday) or 12/3/02» By 12/2/03 (claiming benefit to a fourth provisional application

which will be filed on 12/2/02)

– Hint: Read §102(b), §119(e) and Ex parte Olah: Assume: No intervening prior art of another

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1st § 111(b) applicationfiled, disclosing A

When should Non-provisional application claiming A, B and C be filed?

2nd § 111(b) applicationfiled disclosing A and B

01 June 00

03 Dec 01

01 May 01

Timeline for Example 1

01 June 01

Foreign application filed claiming A and B

01 Dec.01

Publication of foreign application

3rd § 111(b) applicationfiled disclosing A, B and C

02 Dec. 02, 03 Dec. 02, or 02 Dec. 03 ?

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U.S. Patent Term and Serial Filing of Provisional Applications

– Example #2:– A first U.S. provisional application is filed 6/1/00 supporting embodiment

A– A second U.S. provisional application is filed 5/1/01 supporting

embodiments A and B» A foreign counterpart application claiming embodiments A and B is

filed 6/1/01– Client provides practitioner with a disclosure supporting embodiments

A, B, and C with instructions to file a single U.S. nonprovisional application including a genus claim covering A, B, and C as well as separate claims covering each embodiment. Client also provides instruction to maximize patent term. Client further instructs practitioner that there is a 100% assurance that the only patent defeating prior art is the upcoming foreign publication of the counterpart application on 12/1/01 and that efforts to maximize U.S. patent term should be based on this assuran.

– When should the U.S. provisional and nonprovisional applications disclosing A, B, and C be filed? » The nonprovisional by 12/2/02 (a Monday) or 12/1/03 (claiming

benefit of the third provisional application filed on 12/2/02)– Hint: Read §102(b) and §119(e)

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1st § 111(b) applicationfiled, disclosing A

When should the non-provisional application claiming A, B and C be filed?

2nd § 111(b) applicationfiled disclosing A and B

01 June 00

01 May 01

Timeline for Example 2

01 June 01

Foreign application filed claiming A and B

01 Dec.01

Publication of foreign application

02 Dec. 02, or 01 Dec. 03 ?

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Thank You