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2135 Pre-AIA 35 U.S.C. 102(d) [R-10.2019]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]

Pre-AIA 35 U.S.C. 102   Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless -


  • (d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.



Pre-AIA 35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a statutory bar against the granting of a patent in this country:

  • (A) The foreign application must be filed more than 12 months before the effective filing date of the claimed invention in the United States (see MPEP § 2139.01 regarding determination of the effective U.S. filing date when an application is subject to pre-AIA 35 U.S.C. 102);
  • (B) The foreign and United States applications must have been filed by the same applicant or by the same applicant's legal representatives or assigns.
  • (C) The foreign application must have actually issued as a patent or inventor’s certificate (e.g., granted by sealing of the papers in Great Britain) before the filing in the United States. It need not be published but the patent rights granted must be enforceable.
  • (D) The same invention must be involved.

If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory bar. See MPEP § 2135.01 for further clarification of each of the four requirements of pre-AIA 35 U.S.C. 102(d).


The examiner should undertake a search for an issued foreign patent for use as pre-AIA 35 U.S.C. 102(d) prior art only if there is a reasonable possibility that a foreign patent covering the same subject matter as the U.S. application has been granted to the same inventive entity before the U.S. effective filing date, i.e., the time period between foreign and U.S. filings is greater than the usual time it takes for a patent to issue in the foreign country. The document must be a patent or inventor’s certificate and not merely a published or laid open application. Normally, the probability of the inventor’s foreign patent issuing before the U.S. filing date is so slight as to make such a search unproductive. However, it should be kept in mind that the average pendency varies greatly between foreign countries.

The search for a granted patent can be accomplished on an electronic database either by the examiner or by the staff of the Scientific and Technical Information Center. See MPEP § 901.06(a), subsection IV.B., for more information on online searching. Alternatively, if the examiner has a reasonable basis for concluding that pre-AIA 35 U.S.C. 102(d) prior art might exist, the examiner may make a requirement for information under 37 CFR 1.105. See MPEP § 704.10et seq.

2135.01 The Four Requirements of Pre-AIA 35 U.S.C. 102(d) [R-10.2019]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]

A. An Anniversary Date Ending on a Weekend or Holiday Results in an Extension to the Next Business Day

The U.S. application is filed in time to prevent a pre-AIA 35 U.S.C. 102(d) bar from arising if it is filed on the 1 year anniversary date of the filing date of the foreign application. If this day is a Saturday, Sunday or federal holiday, the year would be extended to the following business day. See Ex parte Olah, 131 USPQ 41 (Bd. App. 1960). Despite changes to 37 CFR 1.6(a)(2) and 37 CFR 1.10, which require the USPTO to accord a filing date to an application as of the date of deposit as Priority Mail Express® with the U.S. Postal Service in accordance with 37 CFR 1.10 (e.g., a Saturday filing date), the rule changes do not affect applicant’s concurrent right to defer the filing of an application until the next business day when the last day for “taking any action” falls on a Saturday, Sunday, or a federal holiday (e.g., the last day of the 1-year grace period falls on a Saturday).

B. A Continuation-in-Part Breaks the Chain of Priority as to Foreign as Well as U.S. Parents

In the case where applicant files a foreign application, later files a U.S. application claiming priority based on the foreign application, and then files a continuation-in-part (CIP) application whose claims are not entitled to the filing date of the U.S. parent, the effective filing date is the filing date of the CIP and applicant cannot obtain the benefit of either the U.S. parent or foreign application filing dates. In re Van Langenhoven, 458 F.2d 132, 137, 173 USPQ 426, 429 (CCPA 1972). If the foreign application issues into a patent before the filing date of the CIP, it may be used in a pre-AIA 35 U.S.C. 102(d)/103 rejection if the subject matter added to the CIP does not render the claims nonobvious over the foreign patent. Ex parte Appeal No. 242-47, 196 USPQ 828 (Bd. App. 1976) (Foreign patent can be combined with other prior art to bar a U.S. patent in an obviousness rejection based on pre-AIA 35 U.S.C. 102(d)/103).


Note that where the U.S. application was made by two or more inventors, it is permissible for these inventors to claim priority from separate applications, each to one of the inventors or a subcombination of inventors. For instance, a U.S. application naming inventors A and B may be entitled to priority from one application to A and one to B filed in a foreign country.

A. To Be “Patented” an Exclusionary Right Must Be Awarded to the Applicant

“Patented” means “a formal bestowal of patent rights from the sovereign to the applicant.” In re Monks, 588 F.2d 308, 310, 200 USPQ 129, 131 (CCPA 1978); American Infra-Red Radiant Co. v. Lambert Indus., 360 F.2d 977, 149 USPQ 722 (8th Cir.), cert. denied, 385 U.S. 920 (1966) (German Gebrauchsmuster petty patent was held to be a patent usable in a pre-AIA 35 U.S.C. 102(d) rejection. A Gebrauchsmuster petty patent is not examined and, at the time of the decision, had only a 6-year patent term. However, except as to duration, the exclusionary patent right granted is as extensive as in the U.S.).

B. A Published Application Is Not a “Patent”

An application must issue into a patent before it can be applied in a pre-AIA 35 U.S.C. 102(d) rejection. Ex parte Fujishiro, 199 USPQ 36 (Bd. App. 1977) (“Patenting,” within the meaning of pre-AIA 35 U.S.C. 102(d), does not occur upon laying open of a Japanese utility model application (kokai or kohyo)); Ex parte Links, 184 USPQ 429 (Bd. App. 1974) (German applications, which have not yet been published for opposition, are published in the form of printed documents called Offenlegungsschriften 18 months after filing. These applications are unexamined or in the process of being examined at the time of publication. The Board held that an Offenlegungsschrift is not a patent under pre-AIA 35 U.S.C. 102(d) even though some provisional rights are granted. The Board explained that the provisional rights are minimal and do not come into force if the application is withdrawn or refused.).

C. An Allowed Application Can Be a “Patent” for Purposes of Pre-AIA 35 U.S.C. 102(d) as of the Date Published for Opposition Even Though It Has Not Yet Been Granted as a Patent

An examined application which has been allowed by the examiner and published to allow the public to oppose the grant of a patent has been held to be a “patent” for purposes of rejection under pre-AIA 35 U.S.C. 102(d) as of the date of publication for opposition if substantial provisional enforcement rights arise. Ex parte Beik, 161 USPQ 795 (Bd. App. 1968) (This case dealt with examined German applications. After a determination that an application is allowable, the application is published in the form of a printed document called an Auslegeschrift. The publication begins a period of opposition were the public can present evidence showing unpatentability. Provisional patent rights are granted which are substantially the same as those available once the opposition period is over and the patent is granted. The Board found that an Auslegeschrift provides the legal effect of a patent for purposes of rejection under pre-AIA 35 U.S.C. 102(d).).

D. Grant Occurs When Patent Becomes Enforceable

The critical date of a foreign patent as a reference under pre-AIA 35 U.S.C. 102(d) is the date the patent becomes enforceable (issued, sealed or granted). In re Monks, 588 F.2d 308, 310, 200 USPQ 129, 131 (CCPA 1978) (British reference became available as prior art on date the patent was “sealed” because as of this date applicant had the right to exclude others from making, using or selling the claimed invention.).

E. Pre-AIA 35 U.S.C. 102(d) Applies as of Grant Date Even If There Is a Period of Secrecy After Patent Grant

A period of secrecy after granting the patent, as in Belgium and Spain, has been held to have no effect in connection with pre-AIA 35 U.S.C. 102(d). These patents are usable in rejections under pre-AIA 35 U.S.C. 102(d) as of the date patent rights are granted. In re Kathawala, 9 F.3d 942, 28 USPQ2d 1789 (Fed. Cir. 1993) (An invention is “patented” for purposes of pre-AIA 35 U.S.C. 102(d) when the patentee’s rights under the patent become fixed. The fact that applicant’s Spanish application was not published until after the U.S. filing date is immaterial since the Spanish patent was granted before U.S. filing.); Gramme Elec. Co. v. Arnoux and Hochhausen Elec. Co., 17 F. 838, 1883 C.D. 418 (S.D.N.Y. 1883) (Rejection made under a predecessor of pre-AIA 35 U.S.C. 102(d) based on an Austrian patent granted an exclusionary right for 1 year but was kept secret, at the option of the patentee, for that period. The court held that the Austrian patent grant date was the relevant date under the statute for purposes of pre-AIA 35 U.S.C. 102(d) but that the patent could not have been used to in a rejection under pre-AIA 35 U.S.C. 102(a) or (b)); In re Talbott, 443 F.2d 1397, 170 USPQ 281 (CCPA 1971) (Applicant cannot avoid a pre-AIA 35 U.S.C. 102(d) rejection by exercising an option to keep the subject matter of a German Gebrauchsmuster (petty patent) in secrecy until time of U.S. filing.).

“Same Invention” Means That the Application Claims Could Have Been Presented in the Foreign Patent

Under pre-AIA 35 U.S.C. 102(d), the “invention... patented” in the foreign country must be the same as the invention sought to be patented in the U.S. When the foreign patent contains the same claims as the U.S. application, there is no question that “the invention was first patented... in a foreign country.” In re Kathawala, 9 F.3d 942, 945, 28 USPQ2d 1785, 1787 (Fed. Cir. 1993). However, the claims need not be identical or even within the same statutory class. If applicant is granted a foreign patent which fully discloses the invention and which gives applicant a number of different claiming options in the U.S., the reference in pre-AIA 35 U.S.C. 102(d) to “‘invention... patented’ necessarily includes all the disclosed aspects of the invention. Thus, the [pre-AIA] section 102(d) bar applies regardless whether the foreign patent contains claims to less than all aspects of the invention.” 9 F.3d at 946, 28 USPQ2d at 1788. In essence, a pre-AIA 35 U.S.C. 102(d) rejection applies if applicant’s foreign application supports the subject matter of the U.S. claims. Id. at 944, 947, 28 USPQ2d at 1786, 1789 (Applicant was granted a Spanish patent claiming a method of making a composition. The patent disclosed compounds, methods of use and processes of making the compounds. After the Spanish patent was granted, the applicant filed a U.S. application with claims directed to the compound but not the process of making it. The Federal Circuit held that it did not matter that the claims in the U.S. application were directed to the composition instead of the process because the foreign specification would have supported claims to the composition. It was immaterial that the formulations were unpatentable pharmaceutical compositions in Spain.).



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Last Modified: 02/16/2023 12:58:20