Textual Equivalent of Training Slides entitled "35 USC §§ 102(e) and 374as amended by HR 2215 (Technical Correction Act)"

Date enacted: 11/02/02
Date effective: 11/29/00

Prepared by:
Office of Patent Legal Administration (OPLA)
Robert J. Spar, Director
(703) 308-5107
Bob.Spar@USPTO.gov

Overview: Major changes to35 USC §§ 102(e) and 374, by enactment of HR 2215

35 USC § 102(e), after enactment of HR 2215, completely replaces § 102(e) as set forth in the AIPA and is retroactively effective to the date of the AIPA (11/29/00).
35 USC § 102(e), after enactment of HR 2215, is however similar to the pre-AIPA § 102(e), with 2 significant differences, which may be summarized as:
1) In addition to U.S. patents, now certain publications of US and international (PCT) applications (IAs) may qualify as prior art references under 35 USC § 102(e) and
2) Certain international filing dates are now considered to be US filing dates under 35 USC § 102(e) and may now be used as the prior art date of a reference to make rejections, under 35 USC §§ 102(e) and 103(a).

Prior art references now available under § 102(e)
1. US Patents (formerly: could not use any International Application (IA) filing date)
Now: If a US patent issues from, or claims benefit of, an International Application (IA), the US patent’s prior art date may now be the filing date of the IA if the following three conditions are met:

the IA was filed on or after 11/29/00;
the IA designated the US; and
the IA publication (by WIPO) was in English.

Note: when the three conditions are met, the IA filing date is a US filing date for § 102(e) purposes.

2. US Application Publications (did not exist before 11/29/00):
Now: A US application publication is prior art as of the application’s US effective filing date, which can include an IA filing date, if the same three conditions are met.

3. WIPO Publications of International Applications (formerly: A WIPO publication was not prior art under § 102(e))
Now: A WIPO publication of an IA is § 102(e)(1) prior art as of the IA’s filing date, if the same three conditions are met; namely:
1) the IA was filed on or after 11/29/00,
2) the IA designated the US, &
3) the IA publication (by WIPO) was in English.

[Image of WIPO publication][Alternative text: Image of WIPO publication with International filing date, publication language, and designated states highlighted]

NEW: The new 35 U.S.C. § 102(e) provisions must be used in examining any application, or patent under reexamination, effective immediately, with one exception, when the old (pre-AIPA) §102(e) provisions must be used. See below.

OLD: The old (pre-AIPA) 35 U.S.C. § 102(e) provisions are only used when a prior art reference is a patent issued (directly or indirectly) from an IA which was filed before 11/29/00.
In this situation, the prior art date of such patent under the pre-AIPA 35 USC § 102(e) should be used. This would usually be the 35 USC § 371 (c)(1),(2) and (4) date of fulfillment.

35 USC §§ 102(e) & 374 after HR 2215 Previously Published § 102(e) Guidelines and Materials are Obsolete

ALL previous guidance and implementation materials on the AIPA’s § 102(e) are outdated. Thus, the following are out of date and should no longer be relied upon:
1. Examination Guidelines for 35 USC 102(e)(2), as amended by the AIPA of 1999, 1243 OG 1037 (Feb. 27, 2001)
2. Guidelines for applying references under § 102(e) set forth in the 8th edition of the MPEP (August 2001)
3. Previous training materials on 35 USC §§ 102(e) and 374 after the AIPA (dated prior to 10/01/02)
4. Q’s and A’s on the USPTO’s website addressing 35 USC §§ 102(e) and 374 after the AIPA posted prior to 10/01/02
5. Form paragraphs and examination notes for using those form paragraphs, prior to 10/01/02

Contents

Overview - slides 2-5
35 USC §§ 102(e) & 374 after HR 2215

Previous § 102(e) Guidelines Obsolete - slide 6
Statutory language - 35 USC §§ 102(e) & 374 and §§ 4508 & 4505 of the AIPA - slides 8-11

Applying 35 USC §§ 102(e)

Guideline 1 of 5 - US Publications & Patents (no IA filings involved) - slide 12
Example A1A - slides 13-14
Determining § 102(e) Prior Art Date for Publications and Patents involving IAs –
first step determine if IA was filed on or after 11/29/00 - slide 15
Guideline 2 of 5 - IA filing date is on or after 11/29/00: conditions to use that date - slide 16
Examples P2A & P2B - slides 17, 18
Guideline 3 of 5 - IA filing date is on or after 11/29/00: when that date can’t be used - slide 19
Examples P3A & P3B - slides 20,21
Guideline 4 of 5 - IA filing date is before 11/29/00: publications can’t use the IA date - slide 22
Examples A4A, A4B & A4C - slides 23-25
Guideline 5 of 5 - IA filing date is before 11/29/00: patents use Pre-AIPA § 102(e) - slides 26, 27
Examples P5A, P5B & P5C - slides 28-32
Summary - slides 33, 34
Implementation of §102(e) - slides 35, 36
Conclusion - slide 37
Information Contacts - slide 38
Glossary of Terms - slide 39
Appendix: Background; Applying References; Comparison Chart (44); Finding WIPO
Publications to Determine Prior Art Dates (45-51); Five Guidelines; Additional Examples - slides 41-64

35 USC §102(e) AFTER H.R. 2215 [See Caveat below]

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

Caveat: The relevant effective date provision of HR 2215 requires that the old (Pre-AIPA) §102(e) applies when the prior art reference is a patent issued (directly or indirectly) from an IA which was filed before 11/29/00.

35 USC § 374 after H.R. 2215
"The publication under the treaty defined in section 351(a) of this title, of an international application designating the United States shall be deemed a publication under section 122(b), except as provided in sections 102(e) and 154(d) of this title."

This provision allows certain WIPO publications of IAs to be used as prior art under 35 USC § 102(e) as of the IA’s filing date, if the previously set forth three conditions are met, namely:
1. the IA was filed on or after 11/29/00;
2. the IA designated the US; and
3. the IA publication (by WIPO) was in English.

H.R. 2215 Statutory Changes to the effective date provisions

"EFFECTIVE DATE PROVISIONS (section 4508 of AIPA as revised by HR 2215).
* * * * *
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." (emphasis added)

This provides for uniform application of §102(e) to reject claims in any applications under examination, or any patents under reexamination or being contested, regardless of filing date.

* Section 4505 of the AIPA set forth the revision to § 102(e)

H.R. 2215 Statutory Changes to the effective date provisions (continued)

EFFECTIVE DATE PROVISIONS (section 4508 of AIPA as revised by HR 2215).
* * * * *
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.(Emphasis added).

This provides that:
1) patents and application publication references may not rely on an IA filing date for § 102(e) purposes if that date is before 11/29/00, nor may such international application be used as a bridge to an earlier US filing date for prior art purposes, and
2) 35 USC § 371 date is used for patents of IAs filed prior to 11/29/00.

Applying 35 USC § 102(e): US Publications & Patents from § 111(a) applications (Guideline 1 of 5)

Guideline 1: If US patent or US application publication issued from an application under 35 USC § 111(a), and the patent or application does not claim a benefit of an IA, the patent or application publication has a § 102(e) prior art date as of the earliest US effective filing date. See examples A1A (supra) and A1B, P1 (appendix).

• Effective filing date is the filing date for which priority/benefit is claimed under 35 USC §§ 119(e) & 120 so long as subject matter used to make the rejection is appropriately supported in the earlier filed application’s disclosure (and any intermediate application(s)).
• Types of Priority & Benefit Claims
  1) Priority to prior US provisional application(s) (35 USC § 119(e))
  2) Benefit of prior US nonprovisional application(s) (35 USC § 120)
  
  Note: The prior art date for more than 80% of the references that can be applied under 35 USC § 102(e) can be determined under this guideline.

Ex. A1A. PUBLICATION OF § 111(a) APPLICATION WITH § 119(e) PRIORITY CLAIM TO A PROVISIONAL APPLICATION.

[Alternative Text for Image: Image of of Example A1A depicting a sample Patent application publication depicting: a § 111(a) filing date of July 12, 2001 and a priority claim to § 111(b) application filed on July 17, 2000.]

Guideline 1. If US patent or application publication issued from an application under 35 USC § 111(a), and the application does not claim a benefit of an IA, the patent or application publication has a § 102(e) prior art date as of the earliest US effective filing date.

US application publication § 102(e)(1) date: July 17, 2000

Ex. A1A. PUBLICATION OF § 111(a) APPLICATION WITH § 119(e) PRIORITY CLAIM TO A PROVISIONAL APPLICATION

[Alternative Text for Image: Image of graphic representation of sample Guideline of Example 1 depicting: a § 111(b) application filing date filed on July 17, 2000 and a § 111(a) application filed on July 12, 2001, claiming priority to a § 111(b) application, and publication of the § 111(a) under § 122(b) on March 14, 2002.]

US application publication § 102(e)(1) date: July 17, 2000

§ 102(e) Prior Art Date for Publication and Patent based (directly or indirectly) on an IA

The international filing date of an IA is a critical threshold condition in determining the effective prior art date of an application publication and patent.

The critical inquiry is:
Does the IA have an international filing date on or after 11/29/00 (Guidelines 2 and 3),
or
Does the IA have an international filing date prior to 11/29/00 (Guidelines 4 and 5).

Note: For information on obtaining WIPO documents to determine the IA filing date, whether the US was designated and publication language see slides 45-51 in the Appendix.

Determining § 102(e) Prior Art Dates: Publications and Patents involving IAs (Guideline 2 of 5)

Guideline 2: If the US patent, US application publication, or WIPO publication issued from, or claims benefit to, an IA which has an international filing date on or after 11/29/00, designated the United States, and was published in English by WIPO (under PCT Article 21(2)) the § 102(e) date is the international filing date, or any earlier effective US filing date. See examples P2A and P2B (supra) and A2A – A2C and P2C (appendix).
NOTES:
1) If the conditions above are met, the IA filing date is a US filing date for prior art purposes.
2) The effective US filing date is affected by priority/benefit claims under 35 USC §§ 119(e), 120 & 365(c). Note: Any IA having a filing date relied upon under 365(c) (continuity benefit claim) must satisfy the three conditions above if the relied upon IA filing date(s) is to be considered a US filing date for prior art purposes.
3) A claim under §365(a) is a foreign priority claim to an IA and will not result in an earlier US filing date (and IA filing date cannot be used as a prior art date).

Ex. P2A: PATENT DERIVED FROM § 111(a) CONTINUATION OF AN IA FILED ON/AFTER 11/29/00

[Alternative Text for Image: Graphic representation of Timeline of Example P2A depicting: an international application (IA) was filed, US designated, on March 1, 2001; the international application publication by WIPO in English was on September 1, 2002; a § 111(a) application claiming the benefit of the IA under § 365(c) was filed on November 1, 2002; a publication of the § 111(a) application by the USPTO under § 122(b) on July 1, 2003; and a patent granted on § 111(a) application on November 1, 2003.]

Guideline 2. If the US patent, US application publication, or WIPO publication issued from, or claims benefit to, an IA which has an international filing date on or after 11/29/00, designated the United States, and was published in English by WIPO (under PCT Article 21(2)) the § 102(e) date is the international filing date, or any earlier effective US filing date.

§ 102(e)(2) date of the patent: March 1, 2001

Notes:
1) The § 102(e)(1) date of US application publication P is March 1, 2001.
2) The § 102(e)(1) date of the WIPO publication is March 1, 2001.
3) Prior to the AIPA, the § 102(e) date would have been November 1, 2002 (patent only).

Ex. P2B: PATENT DERIVED FROM THE NATIONAL STAGE OF IA(§ 371 APPLICATION) WHICH CLAIMS PRIORITY/BENEFIT OF A US APPLICATION – (IA FILED ON/AFTER 11/29/00)

[Alternative Text for Image: Graphic representation of Timeline of Example P2B depicting: a § 111(a) application filed on January 1, 2000; an international application (IA) was filed on January 1, 2001 in Swedish, US designated, and claims priority/benefit of the prior US application; the international application publication by WIPO in English was on July 1, 2001; the § 371(c)(1)(2) and (4) fulfillment date was October 1, 2002; a publication by the USPTO under § 122(b) on December 1, 2002; and a patent granted on § 111(a) application on November 1, 2003.]

Guideline 2. If the US patent, US application publication, or WIPO publication issued from, or claims benefit to, an IA which has an international filing date on or after 11/29/00, designated the United States, and was published in English by WIPO (under PCT Article 21(2)) the § 102(e) date is the international filing date, or any earlier effective US filing date.

§ 102(e)(2) date of the patent: January 1, 2000

Notes:
(1) § 102(e)(1) date of the WIPO publication is January 1, 2000
(2) § 102(e)(1) date of US application publication is January 1, 2000
(3) Prior to the AIPA, the § 102(e) date of the patent would have been October 1, 2002
(4) Creates new prior art date before effective date of the change based on post 11/29/00 international filing date.

Applying 35 USC § 102(e): US Patents of IAs (Guideline 3 of 5)

Guideline 3. If the US patent issued from, or claims benefit to, an IA which was filed on or after 11/29/00, but the WIPO publication was not in English, the US patent:
   if issued from the 35 USC § 371 application, has no § 102(e)(2) date, or
   if issued from a US continuing application claiming benefit of the IA, has for its § 102(e)(2) date the filing date of a later-filed continuing US application.
See examples P3A and P3B (supra) and P3C (appendix).

Ex. P3A: PATENT DERIVED FROM § 111(a) CONTINUATION OF AN IA FILED ON/AFTER 11/29/00, WIPO PUBLICATION NOT IN ENGLISH

[Alternative Text for Image: Graphic representation of Timeline of Example P3A depicting: an international application (IA) was filed, US designated, on March 1, 2001; the international application publication by WIPO, not in English, was on September 1, 2002; a § 111(a) application claiming the benefit of the IA under § 365(c) is filed on November 1, 2002; a publication of the § 111(a) application by the USPTO under § 122(b) was on July 1, 2003 and a patent was granted on § 111(a) application on November 1, 2003.]

Guideline 3. If the US patent issued from, or claims benefit to, an IA which was filed on or after 11/29/00, but the WIPO publication was not in English, the US patent: if issued from the 35 USC § 371 application, has no § 102(e)(2) date, or if issued from a US continuing application claiming benefit of the IA, has for its § 102(e)(2) date the filing date of a later-filed continuing US application.

§ 102(e)(2) date of the patent: November 1, 2002

Notes: 1) The WIPO publication does NOT have a § 102(e)(1) date because the IA was not published in English.2) § 102(e)(1) date of the US appl. publication: November 1, 2002.3) The best prior art date for the disclosure is the § 102(a) or (b) date (September 1, 2002)of the IA publication by WIPO. 4) Prior to the AIPA, the § 102(e) date would have been the same November 1, 2002.

Ex. P3B: PATENT DERIVED FROM THE NATIONAL STAGE OF AN IA (§ 371 APPLICATION) WHICH CLAIMS PRIORITY/BENEFIT OF A US APPLICATION (IA FILED ON/AFTER 11/29/00, WIPO PUBLICATION NOT IN ENGLISH)

[Alternative Text for Image: Graphic representation of Timeline of Example P3B depicting: a § 111(a) or (b) application being filed on January 1, 2000, an international application (IA) was filed on January 1, 2001 in German, US designated, and claiming priority/benefit to the prior US application; the international application publication by WIPO, not in English, was on July 1, 2001; the § 371 (c)(1),(2) and (4) fulfillment (i.e. national stage entry) on October 1, 2002; a publication of the § 371 application by the USPTO under § 122(b) was on December 1, 2002 and a patent was granted on § 371 application on November 1, 2003.]

Guideline 3. If the US patent issued from, or claims benefit to, an IA which was filed on or after 11/29/00, but the WIPO publication was not in English, the US patent: if issued from the 35 USC § 371 application, has no § 102(e)(2) date, or if issued from a US continuing application claiming benefit of the IA, has for its § 102(e)(2) date the filing date of a later-filed continuing US application.

§ 102(e)(2) date of the patent: NONE

Notes:
1) US appl. Publication and WIPO publication do NOT have a § 102(e)(1) date because the IA was not published in English.
2) The best prior art date for the disclosure is the § 102(a) or (b) date which is July 1, 2001 of the IA publication by WIPO.
3) Prior to the AIPA, the § 102(e) date of the patent would have been October 1, 2002.

Applying 35 USC § 102(e): US and WIPO Publications of IAs (Guideline 4 of 5)

Guideline 4. The publication of the IA (either a WIPO publication or a US publication of a National Stage application) is not considered prior art under § 102(e)(1) as of the IA filing date if any of the following conditions are true:
1) The international filing date was prior to 11/29/00,
2) The IA did not designate the US, or
3) The WIPO publication of the IA was not in English.
Since the IA filing date is not considered a US filing date for prior art purposes, any earlier US filing dates for which benefit is claimed by the IA are not § 102(e) prior art dates. See Examples A4A through A4C (supra).
Note: The publication of such an IA is prior art under § 102(a) or § 102(b) as of its publication date.

Ex. A4A: PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA FILED BEFORE 11/29/00 AFTER PUBLICATION OF IA BY WIPO IN ENGLISH WHICH CLAIMS PRIORITY OF A PRIOR US PROVISIONAL APPLICATION

[Alternative Text for Image: Graphic representation of Timeline of Example A4A depicting: a § 111(b) application filed on January 1, 1999 (before effective date), an international application (IA) was filed on January 1, 2000 in Sweden, US designated, and claiming priority to the prior US§ 111(b) application; the international application publication by WIPO in English was on July 1, 2000; a § 111(a) application was filed on July 1, 2001 and claiming benefit of the International application and the § 111(b) application under 35 USC §§365(c) and 119(e); a publication of § 111(a) application by the USPTO under § 122(b) was on December 1, 2001.]

§ 102(e)(1) date of US application publication : July 1, 2001
§ 102(e)(1) date of WIPO publication of IA (PCT): NONE
because the IA was filed prior to the effective date: November 29, 2000.

Note: The WIPO publication is available as prior art under § 102(a) or (b).
The best prior art date is the WIPO publication date: July 1, 2000.

Ex. A4B: PUBLICATION OF NATIONAL STAGE APPLICATION AFTER PUBLICATION OF IA FILED ON/AFTER 11/29/00 BY WIPO IN A LANGUAGE OTHER THAN ENGLISH

[Alternative Text for Image: Graphic representation of Timeline of A4B depicting: an international application (IA) was filed in Germany, US designated on January 1, 2001; the international application publication by WIPO in German under PCT Art. 21(2) was on July 1, 2002; the § 371(c)(1)(2) and (4) fulfillment date (i.e. National Stage entry) was June 1, 2003; a publication of the National Stage by the USPTO under § 122(b) was on November 1, 2003.]

§ 102(e)(1) date of US application publication: NONE
§ 102(e)(1) date of WIPO publication of IA (PCT) : NONE
Because the WIPO publication of the IA (PCT) was not in English.

Note: Both publications are available as prior art under § 102(a) or (b) as of their publication dates.

Ex. A4C: PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA FILED ON/AFTER 11/29/00 AFTER PUBLICATION OF IA BY WIPO IN A LANGUAGE OTHER THAN ENGLISH

[Image of Example A4C][Alternative Text for Image: Graphic representation of Timeline of A4C depicting: an international application (IA) was filed in Germany, US designated, on January 1, 2001; the international application publication by WIPO in German under PCT Art. 21(2) was on July 1, 2002; a § 111(a) application filed on June 1, 2003, claiming the benefit of the IA application under 35 USC § 365(c); a publication of the § 111(a) application by the USPTO under § 122(b) was on November 1, 2003.]

§ 102(e)(1) date of US application publication: July 1, 2003
§ 102(e)(1) date of WIPO publication of IA (PCT): None
Reason: because the WIPO publication of IA was not in English.

Note: The WIPO publication is available as prior art under § 102(a) or (b).
The best prior art date is the WIPO publication date: July 1, 2002.

Determining § 102(e) Prior Art Dates Patents involving IAs (Guideline 5 of 5)

Guideline 5: If the US patent issued from, or claims benefit to, an IA filed prior to November 29, 2000, the date of such a prior art patent is the earlier of the date of compliance with § 371(c)(1), (2) and (4) (e.g. National Stage entry) or the filing date of a later-filed US application that claimed the benefit of the international application. See § 102(e) prior to AIPA (next slide) & § 4508 of AIPA (slide 11). See examples P5A through P5C (supra) and P5D (appendix).

35 USC § 102(e), prior to the AIPA (Statutory language in effect prior to 11/29/00)
“A person shall be entitled to a patent unless —
. . .
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by applicant for patent, or”

Ex. P5A: PATENT DERIVED FROM THE NATIONAL STAGE OF AN IA WHICH CLAIMS PRIORITY OF A US PROVISIONAL APPLICATION

[Image of a Sample Patent depicting on the front face of the patent the dates used in the subsequent Timeline for example P5A.] [Alternative Text for Image: International filing date is July 8, 1998 (i.e., PCT filed); fulfillment of § 371(c)(1)(2)&(4) is January 14, 2000 (i.e., § 102(e) date); International Publication by WIPO on January 28,1999 (i.e., PCT Pub. Date); § 111(b) application filed on July 14, 1997 (i.e., related US application Data - provisional application No. 60/052,464).]

§ 102(e) date of the patent: January 14, 2000

Guideline 5: If the US patent issued from, or claims benefit to, an IA filed prior to November. 29, 2000, the date of such a prior art patent is the earlier of the date of compliance with § 371(c)(1), (2) and (4) (e.g. National Stage entry) or the filing date of the later-filed US application that claimed the benefit of the international application.

Ex. P5A: PATENT DERIVED FROM THE NATIONAL STAGE OF AN IA WHICH CLAIMS PRIORITY OF A US PROVISIONAL APPLICATION

[Image of Example P5A][Alternative Text for Image: Graphic representation of Timeline of P5A depicting: a § 111(b) application filed on July 14, 1997, an international application (IA) was filed on July 8, 1998, US designated claiming priority/benefit to the prior US application; the international application publication by WIPO on January 28, 1999; the § 371 (c)(1),(2) and (4) fulfillment (i.e. national stage entry) on January 14, 2000; a patent was granted on § 371 application on March 12, 2002.]

§ 102(e) date of the patent: January 14, 2000
Reason: based on former provisions of § 102(e)
Notes:
1) Patent cannot be applied as of the earlier filing date of the provisional application for prior art purposes.
2) Best prior art date - IA publication date under § 102(a) or (b): January 28, 1999.

Ex. P5B: PATENT DERIVED FROM THE CONTINUATION OF AN IA WHICH CLAIMS PRIORITY/BENEFIT OF A US APPLICATION

[Image of a Sample Patent depicting on the front face of the patent the dates used in the subsequent Timeline for example P5B.] [Alternative Text for Image: § 111(a) application filing date on April 4, 2000; International filing date is October 12, 1998 with priority/benefit claim of prior US§ 111(b) application (i.e., related US application Data - PCT/IB98/01585); § 111(b) application filed on October 14, 1997 (i.e., related US application Data - provisional application No. 60/052,464).]

§ 102(e)(2) date of the patent : April 4, 2000

Guideline 5: If the US patent issued from, or claims benefit to, an IA filed prior to November. 29, 2000, the date of such a prior art patent is the earlier of the date of compliance with § 371(c)(1), (2) and (4) (e.g. National Stage entry) or the filing date of the later-filed US application that claimed the benefit of the international application.

Ex. P5B: PATENT DERIVED FROM THE CONTINUATION OF AN IA WHICH CLAIMS PRIORITY/BENEFIT OF A US APPLICATION

[Alternative Text for Image: Graphic representation of Timeline of P5B depicting: a § 111(a) or (b) application filed on October 14, 1997; an international application (IA) was filed on October 12, 1998, US designated, and claiming priority/benefit to the prior US application; the international application publication by WIPO on April 22, 1999; a § 111(a) application filed on April 4, 2000, claiming the benefit of the International application and the prior US application; a patent was granted on the § 111(a) application on January 1, 2002.]

§ 102(e)(2) date of the patent: April 4, 2000

Notes:
Patent cannot be applied as of the earlier filing date of the IA or the earlier filing date of the § 111(a)/(b) application.
The best prior art date for the disclosure is the § 102(a) or (b) date (22 April 1999) of the WIPO publication of IA. The publication date can be determined by doing a family data search on the prior applications.

Ex. P5C: PATENT DERIVED FROM § 111(a) CONTINUATION OF THE NATIONAL STAGE OF AN IA FILED BEFORE 11/29/00

[Alternative Text for Image: Graphic representation of Timeline of P5C depicting: an international application (IA) was filed on October 31, 1999, US designated, and claiming priority/benefit to a prior Swiss application; the international application publication by WIPO in any language on May 1, 2000; international application entry into the National Stage fulfillment of § 371(c)(1),(2) & (4) on April 1, 2001, a § 111(a) application which is a continuation of the § 371 application, filed on November 1, 2002, US application publication of the § 111(a) application on December 20, 2002; a patent was granted on the § 111(a) application on May 31, 2003.]

§ 102(e) date of the patent: April 1, 2001 (relies on the pre-AIPA §102(e) in order to be applied as prior art on the § 371 date)

§ 102(e)(1) date of the US application publication: November 1, 2002(publication cannot be applied as a reference under § 102(e) using the IA filing date since the IA filing date is prior to 11/29/00. 35 USC § 371 date can never be used under § 102(e) for application publications.)

Notes:
1) The WIPO publication does NOT have a § 102(e)(1) date because the IA was filed prior to November. 29, 2000.
2) The best prior art date for the disclosure is the § 102(a) or (b) date (01 May 2000) of the WIPO publication of IA.

Summary: Determining § 102(e) Prior Art Dates for Publications and Patents involving IAs

IF IA has an international filing date on or after 11/29/00, the additional criteria that must exist in order to use the IA filing date as a prior art date under
§ 102(e) are:
1) The IA must have designated the US
2) IA must have been published in English by WIPO

If both conditions are present, the international filing date can be used as a prior art date and it is a US filing date for purposes of § 102(e).

If either condition is missing, the international filing date cannot be used as a prior art date. Further, since the IA filing date is not considered a US filing date for prior art purposes, earlier US filing dates for which benefit is claimed by the IA are not prior art dates.

Summary: Determining § 102(e) Prior Art Dates for Publications and Patents involving IAs - (continued)

IF IA has an international filing date prior to 11/29/00:

For WIPO or US application publications, NEVER applya reference under § 102(e)(1) using the IA filing date or a US filing date prior to the IA filing date. See Example A4A (Guideline 4).

For patents, the § 102(e) date of such a prior art patent is the earlier of the date of compliance with § 371(c)(1), (2) and (4) (e.g., National Stage entry) or the filing date of the later-filed US application that claimed the benefit of the international application. See Examples P5A through P5D (Guideline 5).

Implementation of § 102(e) in view of HR 2215

1. Previous prior art rejection(s) made using AIPA’s § 102(e) where a reply by applicant(s) has been filed:

- Examiners should determine if reference(s) is still good prior art under § 102(e) in view of new law.

In particular, examiners should pay special attention to US application publications (applied against the claims) using international filing dates prior to 11/29/00 (or using such a date to complete a continuity claim). These references are no longer “prior” art under § 102(e) as amended by H.R. 2215.

Final rejection practice: In the rare circumstance that a second or subsequent action contains a new ground of rejection necessitated by the change to § 102(e) that was not also necessitated by an amendment to the claims or as a result of certain information disclosure statements (See MPEP 706.02(a)), that action cannot be made final. See MPEP 706.07(a).

- New prior art rejections using § 102(e) in view of new law.

Examiners should immediately use revised (Oct. 2002 or later) § 102(e) form paragraphs (available from USPTO Home Page (Intranet) under IT Announcements)

2. Searching applications in view of § 102(e)

- The search conducted when examining all applications or patents under reexamination should include searching relevant patent application publications.

- Updated searches for applications filed before 11/29/00 should include an appropriate search of patent application publications.

- WIPO publications of IAs may also be relevant to consider in view of § 102(e) but only if the IA filing date is on or after 11/29/00, the United States was designated and the IA was published in English under PCT Article 21(2) by WIPO.

Conclusion - DOs and DON'Ts of 35 USC § 102(e)

DOS ...
Do apply § 102(e), as amended, to all applications under examination and patents under reexamination, whenever filed.

To determine the prior art date of a reference, do use the flowcharts and follow the 5 guidelines for applying § 102(e).

Do consider proper domestic priority claims to provisional applications under § 119(e), benefit claims to nonprovisional applications under § 120 or benefit claims to international applications under § 365(c) in determining the effective US filing date under 102(e), but remember the relied upon application and any intermediate application must support the subject matter used in the rejection.

Don'ts . . .

Don't EVER use an international filing date prior to 11/29/00 as a prior art date,
a patent issuing from the National Stage of an IA filed before 11/29/00 will continue to be applied as of the § 371(c)(1), (2) and (4) date.

Don't EVER apply a reference based on a foreign priority filing date claimed under 35 USC §§ 119(a)-(d) or 365(a), in US or WIPO application publications or US patents as the prior art date under § 102(e).

Don't EVER apply a reference based on the filing date of an IA when the IA did not designate the US or was published in a language other than English. Use published IA as the reference, but under § 102(a) or (b) as of the publication date of the IA.

Information Contacts

For additional information visit the “35 USC §102(e) after HR 2215” website at: http://www.uspto.gov/web/offices/dcom/olia/aipa/whatsnew.htm
Direct questions by e-mail or telephone to:
Legal Advisors in OPLA:

Joni Chang at Joni.Chang@USPTO.gov or (703) 308-3858
Jeanne Clark at Jeanne.Clark@USPTO.gov or (703) 306-5603
Robert Clarke at Robert.Clarke@USPTO.gov or (703) 305-9177
Michael Lewis at Michael.Lewis@USPTO.gov or (703)306-5585
Darnell Jayne at Darnell.Jayne@USPTO.gov or (703) 305-3310
Mark Polutta at Mark.Polutta@USPTO.gov or (703) 308-8122
Director of OPLA:
Robert J. Spar, at Bob.Spar@USPTO.gov or (703) 308-5107

Glossary of Terms
HR 2215 - Intellectual Property and High Technology Technical Amendments Act of 2002 (Pub. L. 107-273 (2002)).
AIPA = American Inventors Protection Act of 1999 (Pub. L. 106-113, 113 Stat. 1501 (enacted 11/29/1999)
§ 111(a) application = non provisional application filed under 35 USC § 111(a)
§ 111(b) application = provisional application filed under 35 USC § 111(b)
§ 119(e) = domestic priority claim relying on a provisional application
§ 120 benefit claim = a benefit claim made to an earlier non-provisional application.
Domestic priority/benefit claims under 35 USC §§ 119(e) and 120 = all references to claims for priority/benefit under §§ 119(e) & 120, respectfully. It will be assumed for the examples that the subject matter relied upon in making a rejection is supported in all of the parent applications relied upon by the application published or patented in the examples.
11/29/00 = effective date of AIPA amendments and HR 2215 amendments to §§ 102(e) and 374
IA = international application
IA filed on/after 11/29/00 = international filing date is on or after 11/29/00
WIPO = World Intellectual Property Organization
PCT = Patent Cooperation Treaty
WIPO Publications = publications of IAs under PCT Article 21(2)
NS = National Stage of an international application (35 USC § 371 application)

Thank You

APPENDIX

APPENDIX: Background - AIPA & H.R. 2215 (Technical Correction to AIPA)

On 11/29/00, the American Inventors Protection Act of 1999 (AIPA) provided 35 USC §102(e) prior art effect of:
1. US patent application publications;
2. WIPO publications of international applications; and
3. Patents (based on an IA filed on or after 11/29/00)

On 11/02/02, the Technical Correction Act (H.R. 2215) modified 35 USC § 102(e) under AIPA to make §102(e) applicable to all applications being examined, or patents under reexamination or being contested, whenever filed.

§102(e) under H.R. 2215 is retroactive to 11/29/00.

APPENDIX: Caveats to consider when relying on priority dates of references

1. Disclosure support: Examiners should apply a reference as of an earlier effective filing date based on priority/benefit claims under 35 USC §§ 119(e), 120 & 365(c), if the subject matter relied upon in making a rejection is adequately supported (i.e. §112, 1st ¶) in all of the parent applications relied upon.
2. Priority/benefit claims: The priority/benefit data in US application publications may not be accurate or complete since applications are generally published, as filed, without Office review or verification of priority/benefit claims.
   

   - Examiners should be aware that the priority/benefit claim on the front cover of the publication may be more inclusive than the claim made in the first sentence of the specification of the publication since the priority/benefit claim on the front cover is created from PALM data which is separately captured and updated.
   
   - Priority/benefit data in patents is more reliable than in publications.

3. New Matter: Application publications, if published as a result of a request for amended publication, may include new matter. Any new subject matter in a publication may not be used in making a prior art rejection based on § 102(e) since such subject matter cannot receive the benefit of the application filing date.
4. Resolving Items 1, 2, & 3: Uncertainties about 1) sufficiency of the disclosure, 2) priority/benefit claims, and 3) new matter in application publications can be resolved by ordering and reviewing the file of the prior application(s) or patent(s).
5. Same application – publication and patent disclosures differ: A redacted application publication and the patent derived from the same application may be different. For example, the patent may contain additional disclosure (e.g. best mode) which is not contained in the application publication.

APPENDIX: Comparison Chart of Prior Art References: Pre-AIPA § 102(e) vs. Current (Post-AIPA § 102(e))

[Chart depicting Type of Reference; Pre- AIPA § 102(e) Prior Art Dates & Current § 102(e) Prior Art Dates]
[Alternative Text for Chart: Type of Reference:US publication of § 111(a) application; Pre- AIPA § 102(e) Prior Art Date: None - Did not exist; Current § 102(e) Prior Art Date: effective filing date (including any International filing date claimed under 365(c) if on/after 11/29/00, and published in English under PCT Article 21(2)).

Type of Reference: US publication of § 371 application; Pre- AIPA § 102(e) Prior Art Date: None - Did not exist; Current § 102(e) Prior Art Date: (1) International filing date (or any earlier effective filing date) if IA filed on/after 11/29/00, or (2) none if IA filed before 11/29/00, designated the US and was published in English under PCT Article 21(2).

Type of Reference: WIPO publication of IA; Pre- AIPA § 102(e) Prior Art Date: None - publication existed but no provision in Pre-AIPA §102(e) to use as prior art; Current § 102(e) Prior Art Date: (1) International filing date (or any earlier effective filing date) if IA filed on or after 11/29/00, designated the US and was published in English under PCT Article 21(2), or (2) none if filed before 11/29/00.

Type of Reference: US patent from § 111(a) application; Pre- AIPA § 102(e) Prior Art Date: effective US filing date; Current § 102(e) Prior Art Date: effective filing date (including any International filing date claimed under 365(c) if International Application was filed on or after 11/29/00), designated the US and was published in English under PCT Article 21(2).

Type of Reference: US patent from § 371; Pre- AIPA § 102(e) Prior Art Date: § 371(c)(1),(2)&(4) fulfillment date; Current § 102(e) Prior Art Date: (1) International filing date (or any earlier effective filing date) if International Application filed on or after 11/29/00, designated the US and was published in English under PCT Article 21(2), or (2) § 371(c)(1), (2) and (4) date if International Application filed before 11/29/00.]

APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language [For Internal Use Only]

When a US patent or US application publication is based on an international application (PCT) filed on or after 11/29/00 but is not prior art under § 102(a)/(b), the examiner may apply the reference under § 102(e) after verifying that the IA designated the US and was published in English.

SIRA is currently developing a WIPO Application Look Up Tool which would allow examiners to search the PCT document by international application number or by WIPO publication number.

Until the WIPO Application Look Up Tool is available, an interim way to verify whether the international application was published in English and designated the US is to locate the WIPO publications (PCT) using the family data tool available in the Derwent Database of EAST.

APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language (continued) [For Internal and External Use ]

Additionally, the WIPO and EPO websites have tools available to locate the WIPO publications (PCT) to verify whether the international application was published in English and designated the US

WIPO's PCT Database contains first page data (e.g., designations and language of publication).
The database currently contains data published since January 1, 1997. From the WIPO site: http://ipdl.wipo.int/
select “search IPDL” from Guest Access
select “PCT Electronic Gazette” [Guest Access]

From the EPO's website: http://ep.espacenet.com
select "Worldwide - 30 million documents”
If you select "The World Intellectual Property Org. (PCT)“, access to only the latest 24 months data is provided.

APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language (continued) [For Internal Use Only]

Guidelines for using Family Data to find WIPO publications in the Derwent Database of EAST:
A text search of the US patent (6442983.pn.) or US application publication No. (20020029970) in the Derwent database will usually locate the document*. * If the publication date of the patent or application publication is very recent in time the information may not be loaded into the Derwent database. If the WIPO document number is unavailable, an inventor search in the Derwent database (e.g., wachtfogel.in.) should be performed.

Once the document is located (in a text browser), Select Family Data from the main menu of the EAST Browser (Tools -> text viewer -> Family Data) or use the Family Data button on the Text Toolbar. [Image of Family Date Toolbar button]

EAST will automatically retrieve any available family data in a new browser (similar to forward and backward citation searches).

The detail view will list the WO document if it is retrieved by EAST (see following examples).

APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language (continued) [For Internal Use Only]

[Image of US Patent Application Publication showing a §102(e) date (i.e., filed December 27, 2001 and Related US Application Data claiming priority/benefit to PCT/SE00/01287 filed on June 19, 2000 (prior to the effective date 11/29/00).]

Ex. 1: Finding PCT/SE00/01287 using BRS/EAST.

1. Using the Derwent database, text search and browse application publication No. (e.g., 20020052584). Select Family Data from the the main menu of the EAST Browser (Tools -> text viewer -> Family Data).
2. EAST will automatically retrieve any available family data in a new browser (similar to forward and backward citation searches).
3. The detail view will list the WO document if it is retrieved by EAST (see next slide).

APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language (continued) [For Internal Use Only]

Ex. 1 (continued) [Alternative Text for Image: Image showing Detail View in EAST depicting WO200100129 A1 published on January 4, 2001 and Swiss application SE 9902448A published on December 30, 2000 as part of the family data of US patent application publication number 2002/0052584 A1.][Alternative Text for Image: Image showing international publication WO 01/00129 A1 cited in the US application publication and depicting publication date of January 4, 2001, international filing date of June 19, 2000, publication language: English and Designated State: US]

The International filing date is prior to 11/29/00. The best prior art date for this disclosure is the Swedish application’s publication date: 30 Dec 2000 under § 102(a) or (b) date.

APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language (continued) [For Internal Use Only]

Ex. 2: If the PCT was published by WIPO in English (see next slide) the § 102(e)(1) date of the US application publication and the WIPO publication is 14 January 2000, assuming there is proper support for the claimed subject matter in the § 111(b) provisional application.

[Alternative text: Image of Sample Application Publication No. US 2002/0138831 A1 published on September 26, 2002 depicting a PCT filed in Israel on January 14, 2001 (i.e., PCT/IL01/00035) with related US application Data claiming priority/benefit to provisional application No. 60/176,215, filed on January 14, 2000.][Alternative Text for Image: Image of Sample Timeline depicting a § 111(b) application filed in the US on January 14, 2000; an international application filed in Israel, US designated, on January 14, 2001; Publication by WIPO on July 19, 2001; and US publication of the international application under § 122(b) on September 26, 2002.]

APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language (continued) [For Internal Use Only]

Ex. 2 (cont.): Because the US application publication is based on an international application (PCT) filed on or after 11/29/00, published in English and the IA designated the US, the examiner may apply the reference under § 102(e)(1) as of : 14 January 2000*
* assumes proper support for the claimed subject matter in the § 111(b) provisional application.

[Alternative Text for Image: Image showing international publication WO 01/52541 A1 cited in the US application publication, depicting publication date of July 19, 2001, international application number PCT/IL01/00035; international filing date of January 14, 2001; publication language: English; and Priority Date to US provisional applications filed January 14, 2000.]

APPENDIX: Applying § 102(e) Prior Art Date for Publications & Patents Five Guidelines (Positive 1, 2 & 3 and Negative 4 & 5)

1. If US patent or US application publication issued from an application under 35 USC § 111(a), and the patent or application does not claim a benefit of an IA, the patent or application publication has a § 102(e) prior art date as of the earliest US effective filing date. See Examples A1A, A1B, P1.
2. If the US patent, US application publication, or WIPO publication issued from, or claims benefit to, an IA which has an international filing date on or after 11/29/00, designated the United States, and was published in English by WIPO (under PCT Article 21(2)) the § 102(e) date is the international filing date, or any earlier effective US filing date. See examples A2A–A2C and P2A-P2C.
3. If the US patent issued from, or claims benefit to, an IA which was filed on or after 11/29/00, but the WIPO publication was not in English, the US patent: if issued from the 35 USC § 371 application, has no § 102(e)(2) date, or if issued from a US continuing application claiming benefit of the IA, has the § 102(e)(2) date of the filing date of a later-filed continuing US application. See Examples P3A-P3C.
4. The publication of the IA (either a WIPO publication or a US publication of a National Stage application) is not considered prior art under § 102(e)(1) as of the IA filing date if any of the following conditions are true:

1) The international filing date was prior to 11/29/00,
2) The IA did not designate the US, or
3) The WIPO publication of the IA was not in English.

Since the IA filing date is not considered a US filing date for prior art purposes, any earlier US filing dates for which benefit is claimed by the IA are not prior art dates. See Examples A4A-A4C.
5. If the US patent issued from, or claims benefit to, an IA filed prior to November. 29, 2000, the date of such a prior art patent is the earlier of the date of compliance with § 371(c)(1), (2) and (4) (e.g. National Stage entry) or the filing date of a later-filed US application that claimed the benefit of the international application. See § 102(e) prior to AIPA (slide 27) & effective date provision (§ 4508) of AIPA (slide 11). See Examples P5A-P5C.

Appendix Listing of All Examples

* designates that the example is provided in the Appendix

A1A, A1B* ………………. US or WIPO Publications applying § 102(e) using guideline 1.
P1*……………………….. US Patent applying § 102(e) using guideline 1
A2A*-A2C*, P2A-P2C*… US or WIPO Publications and Patents applying § 102(e) using guideline 2.
P3A, P3B, P3C* ………… US Patents applying § 102(e) using guideline 3.
A4A, A4B, A4C ……………US or WIPO Publication applying § 102(e) using guideline 4.
P5A, P5B, P5C* ………… US Patents following applying § 102(e) using guideline 5.

Representative CODE Definitions
A1A = application publication, guideline 1, example 1
A3D = application publication, guideline 3, example 4
P5B = patent, guideline 5, example 2

EX. A1B. PUBLICATION OF § 111(a) APPLICATION WITH § 120 BENEFIT CLAIM and § 119(a)-(d) PRIORITY CLAIM TO A FOREIGN APPLICATION
[Alternative Text for Image: Image of sample application publication showing a first foreign application filing date of April 23, 1999 under Foreign application priority data; a first § 111(a) filing date on May 28, 1999 a second § 111(a) filing date on June 20, 2000, a third § 111(a) filing date on January 22, 2002.]

Guideline 1: If US patent or application publication issued from an application under 35 USC § 111(a), and the patent or application does not claim a benefit of an IA, the patent or application publication has a § 102(e) prior art date as of the earliest US effective filing date.

US application publication § 102(e)(1) date: May 28, 1999
No benefit of the foreign application is given for § 102(e).
(In re Hilmer, 149 USPQ 480 (CCPA 1966)).

EX. A1B. PUBLICATION OF § 111(a) APPLICATION WITH § 120 BENEFIT CLAIM and § 119(a)-(d) PRIORITY CLAIM TO A FOREIGN APPLICATION

[Alternative Text for Image: Image of Graphic representation of Timeline of A1B depicting: a foreign application filed in Japan on May 29, 1998; a first § 111(a) application filed on May 28, 1999, claiming § 119(a)-(d) priority to the Japanese application; a second § 111(a) application filed on June 20, 2000 under 37 CFR 1.53(b) or (d) with § 120 priority claim to the earlier § 111(a) application; a third § 111(a) application filed on January 22, 2002 under 37 CFR 1.53(b) or (d) with § 120 priority claim to the earlier § 111(a) applications; and publication of the third § 111(a) application under § 122(b).]

US application publication § 102(e)(1) date: 28 May 28, 1999
No benefit of the foreign application is given under § 102(e)(1).
(In re Hilmer, 149 USPQ 480 (CCPA 1966)).

Ex. P1: PATENT DERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH § 119(e) or § 120 PRIORITY/BENEFIT CLAIMS

[Alternative Text for Image: Sample patent depicting a patent granted on September 24, 2002; an application filing date of December 27, 2000 (second § 111(a) application) claiming benefit to an earlier application (under Related US Application Data) filed on May 19, 1999 (first § 111(a) application). Information found on the sample patent is used in the timeline in the next slide]

Guideline 1: If US patent or application publication issued from an application under 35 USC § 111(a), and the patent or application does not claim a benefit of an IA, the patent or application publication has a § 102(e) prior art date as of the earliest US effective filing date.

§ 102(e)(2) date of patent: May 19, 1999


Ex. P1: PATENT DERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH § 120 OR § 119(e) PRIORITY/BENEFIT CLAIMS

[Alternative Text for Image: Image of Graphic representation of Timeline of P1 depicting: a first § 111(a)/(b) application on May 19, 1999; a second § 111(a) application filed on December 27, 2000 under § 111(a) claiming the benefit or priority of the prior application under §§ 120/119(e) and a patent granted on the second § 111(a) application on September 24, 2002.]

§ 102(e)(2) date of patent: May 19, 1999

Ex. A2A: PUBLICATION OF NATIONAL STAGE APPLICATION AFTER PUBLICATION OF IA BY WIPO IN ENGLISH

[Alternative Text for Image: Image of Graphic representation of Timeline of A2A depicting: an international application filed in Sweden, designating the US, on January 1, 2001; WIPO publication of the international application in English under PCT Art. 21(2) on July 1, 2002; National Stage fulfillment of § 371(c)(1),(2), and (4) on July 1, 2003 and US application publication of National Stage under § 122(b) on November 1, 2003.]

§ 102(e)(1) date of US application publication: January 1, 2001
§ 102(e)(1) date of WIPO publication of IA (PCT): January 1, 2001
Note: subsequent National Stage entry is not required before the WIPO publication may be applied as prior art.

Ex. A2B: PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA FILED ON/AFTER 11/29/00 AFTER PUBLICATION OF IA BY WIPO IN ENGLISH

[Alternative Text for Image: Image of Graphic representation of Timeline of A2B depicting: an international application filed in Sweden, designating the US, on January 1, 2001; WIPO publication of the international application in English under PCT Art. 21(2) on July 1, 2002; § 111(a) application filed on July 1, 2003, claiming benefit of the international application under 35 USC § 365(c) and US application publication of § 111(a) application on November 1, 2003.]

§ 102(e)(1) date of US application publication: January 1, 2001
§ 102(e)(1) date of WIPO publication of IA (PCT): January 1, 2001
note: subsequent National Stage entry is not required before the WIPO publication may be applied as prior art.

Ex. A2C: PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA FILED ON/AFTER 11/29/00 AFTER PUBLICATION OF IA BY WIPO IN ENGLISH WHICH CLAIMS PRIORITY TO A PRIOR US§ 111(b) APPLICATION

[Alternative Text for Image: Image of graphic representation of Timeline of A2C depicting: a § 111(b) application filed in Swedish on July 1, 2000 (37 CFR 1.78); an international application filed on July 1, 2001 in Sweden, designating the US and claiming priority of the § 111(b) application; WIPO publication of the international application in English under PCT Art. 21(2) on January 1, 2002; § 111(a) application filed on July 1, 2003, claiming benefit of the international application and priority of the § 111(b) application under 35 USC § § 365(c) and 119(e); and US application publication of the § 111(a) application under § 122(b) on November 1, 2003.]

§ 102(e)(1) date of US application publication: July 1, 2000
§ 102(e)(1) date of WIPO publication of IA (PCT): July 1, 2000
Note:
Subsequent National Stage entry is not required before the WIPO publication may be applied as prior art. A translation of the § 111(b) application is required upon notice of the Office. See 37 CFR 1.78(a)(5)(iv).

Ex. P2C: PATENT DERIVED FROM THE NATIONAL STAGE OF AN IA (§ 371 APPLICATION) FILED ON/AFTER 11/29/00

[Alternative Text for Image: Image of graphic representation of Timeline of P2C depicting: an international application filed in Sweden in Swedish, designating the US, on January 1, 2001; WIPO publication of the international application in English under PCT Art. 21(2) on July 1, 2002; § 371(c)(1),(2), & (4) fulfillment on June 1, 2003; US application publication of § 371 application under § 122(b) on July 1, 2003 and US patent granted on § 371 application on November 1, 2003.]

Guideline 2: If the US patent, US application publication, or WIPO publication issued from, or claims benefit to, an IA which has an international filing date on or after 11/29/00, designated the United States, and was published in English under PCT Article 21(2), the § 102(e) date is the international filing date, or any earlier effective US filing date.

§ 102(e)(2) date of the patent: January 1, 2001

Notes:
(1) § 102(e)(1) date of the WIPO publication is January 1, 2001
(2) § 102(e)(1) date of US application publication is January 1, 2001.
(3) Prior to the AIPA, the § 102(e) date of the patent would have been June 1, 2003.

Ex. P3C: PATENT DERIVED FROM THE NATIONAL STAGE OF AN IA (§ 371 APPL.) FILED ON/AFTER 11/29/00, WIPO PUBLICATION NOT IN ENGLISH

[Alternative Text for Image: Image of Graphic representation of Timeline of P3C depicting: an international application filed, designating the US, on January 1, 2001; WIPO publication of the international application NOT in English under PCT Art. 21(2) on July 1, 2002; § 371(c)(1),(2), & (4) fulfillment on June 1, 2003; US application publication of § 371 application under § 122(b) on July 1, 2003; and US patent granted on § 371 application on November 1, 2003.]

Guideline 3. If the US patent or US application publication issued from, or claims benefit to, an IA which was filed on or after 11/29/00, but the WIPO publication was not in English the US patent or application publication: if issued from the 35 USC § 371 application has no § 102(e) date, or if issued from a US continuing application claiming benefit of the prior IA has the § 102(e) date of the filing date of a later-filed continuing US application.

§ 102(e)(2) date of the patent: NONE
This patent is not available as prior art under § 102(e)

Notes:
(1) Publication P and the IA publication do NOT have a § 102(e)(1) date because the IA was not published in English
(2) Best prior art date for the disclosure is the § 102(a) or (b) date of the WIPO publication: July 1, 2002
(3) Prior to the AIPA, the § 102(e) date of the patent would have been June 1, 2003.

For contact and web site information, see slide 38.

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