Does a Reference's Priority Claim to a Provisional Application Alter its 102(e) Prior Art Date?

In re Giacomini (Fed. Cir. 2009) (discussion of the briefs)

Giacomini is appealing the BPAI's 102(e) rejection -- arguing that the patent asserted as prior art does not actually qualify as prior art. Giacomini's application claims priority back to November 2000. The asserted prior art patent issued in 2006, but was filed in December 2000. The prior art patent also claims priority to a provisional application filed in September 2000. The PTO claims that the 102(e) date of the patent is the filing date of the provisional -- thus making it prior art over Giacomini.

When a patent is asserted under 102(e)(2), the patent's filing date is considered the priority date. In the language of the statute, the PTO must consider whether the putative prior art patent was "granted on an application for patent ... filed in the United States before the invention by the applicant for patent." The provision makes clear that a patent claiming priority to an international application will be given the international application filing date if that application "designated the United states and was published . .. in the English Language." Under US case law, when being considered as prior art, divisional and continuation patents are also given the filing dates of their parents as their 102(e) date. See In re Klesper (CCPA 1968)("provided the disclosure was contained in substance in the earliest application"). However, patents claiming priority to a foreign filing under Section 119 are not given the foreign priority date.

The novel question here on appeal is how to interpreted the statute's silence regarding provisional applications.

• Appeal Brief: cafc_appeal_brief_2009-1400_500-002us-2.pdf
• cafc_appeal_brief_2009-1400_500-002us-2.pdfPTO Opposition: Giacomini - Director's Brief (Red Brief).pdf
• BPAI Decision: BPAI Decision in Giacomini
• Related Discussion: Patently-O Discussion of Ex Parte Yamaguchi (BPAI 2008)

Comments

[6]

That is not a "novel" question. People assert this nonsense occasionally. I then point them to :

"(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent..."

And that is pretty clear. Find the filing date and you have your priority date. The filing date gets moved back by the provisional statute.

"(4) FILING DATE.-The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office."

Then we have to look what was the filing date of the actual application claiming priority.

"(1) 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 section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than 12 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. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this subsection during the pendency of the application"

So long as all the conditions are met then there you have it.

Arguably you might even could use:

"An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section."

I usually use (1) in my rejections though so I don't usually run into this nonsense.

These guys are going to get nowhere.

[Dennis Crouch]

6 - I identified this issue legal question as "novel" because no court has decided the issue.

[MaxDrei]

Questions to you, 6. US provisional filing dates count (you say that's crystal clear). Non-US Paris priority dates don't (says Dennis, as if that too is crystal clear). So, decisive to the outcome, all other things being equal, is whether the priority date declared on the face of an issued US patent corresponds to a filing at the USPTO or another Patent Office which is not the American one. Questions:

1) Why is that not a breach of the Paris Convention?

2) Should every other country (China included) copy the USA and ignore priority dates, but only when they are US ones?

[Patent_Medicine]

A provisional application can never become a patent, as it expires in one year. It is therefore not an "application for patent." It is this phrase that keeps provisionals out. And yes, I suspect it'll be a problem if they start using provisional filing dates but not foreign priority dates.

[still lurking]

Max,

Regarding your question 1, I think you're getting confused between (1) the priority date given to the foreign application when it is being examined and (2) the priority date given to the foreign application when it is being applied as prior art against another application. My reading of the Paris Convention is that it covers situation 1, but not situation 2. For 102(e) purposes, situation 2 is what matters. There does not appear to be a breach here.

I will not attempt to answer question 2.

[SteveW]

6:
So I file a provisional (app A), then file a later application (app B). If app B claims priority to app A, then app B counts as 102(e) art (say against later filed app C) as of the provisional date. However, if I do not claim priority in app B to app A, then my application counts as 102(e) art only as of the actual filing date.

Totally different outcomes under your proposed system, even though, from the perspective of the applicants for app C, the state of knowledge of the rest of the world is exactly the same - the only difference is whether a procedural step was taken. That may be the right answer, but I'm wondering why you think it's so straightforward.

[ME]

Steve:

The same situation would arise if app A were a non-provisional that was not published before the filing of app C.

[Just Visiting]

"A provisional application can never become a patent"

A provisional application can be converted into a non-provisional during the year after filing. If so, it doesn't expire and can become a patent.

[MaxDrei]

Indeed, Lurking. Thanks for the cue. Swords and shields again. Paris Art 4 speaks of the enjoyment of "a right of priority" which is "for the purpose of filing in other countries". Thus, the inventor doesn't have to file all over the world on Day One but has a year to get its foreign filing programme executed.

Now, what might be the "purpose" of filing in the USA?

Some would say their purpose is to hold manufacturing industry to ransom, when their US patent issues.

But others (like, me) muse on why, say, Nokia, might file. One "purpose" might be to try to restrict the reach of the Motorola patent portfolio. How might Nokia do that? Early 102(e) dates might be quite effective. Thus, when it comes to filing at the USPTO, a major purpose for serious filers is to get an early 102(e) date.

You hold to Hilmer logic, that Paris covers troll purpose (1) but NOT manufacturer's purpose (2). i concede I haven't read Hilmer or any of its progeny, so maybe you, or Dennis, or readers can give that logic to me succinctly.

[Merry Hallowen]

Even assuming the provisional application is the priority date, the examiner has the burden of establishing that the prior art subject matter cited against the patent applicant was in the provisional application.

Normally, provisional applications contain a mish mash data dump. I would be dollar to donuts that the Examiner failed to sufficiently establish that the prior art subject matter cited against the patent applicant was in the provisional application.

[Night Writer Patent Attorney]

>>the Examiner failed to sufficiently establish >>that the prior art subject matter cited >>against the patent applicant was in the >>provisional application

That's the problem. The practice of using a utility disclosure based on a provisional as prior art has to stop. If the examiner has to use the provisional date, then the examiner should be citing portions of the provisional application and not the utility patent.

[Night Writer Patent Attorney]

But, as long as the examiner is basing the rejection on the provisional application, then it would be structurally inconsistent not to allow the examiner to use the provisional as prior art.

[Night Writer Patent Attorney]

Actually, you know, I have been a bit suprized that those who question of the prsumption of validity haven't picked up on this point. That often a patent issues with a priority date based on a provisional application and yet whether or not the provisional application supports the claims of the utility patent is often never examined.

[Paul F. Morgan]

The situation as to an application or patent claiming priority from a provisonal is essentially the same as for claiming priority from a CIP. Namely, if the specfications are not identical, there can be an issue as to whether the provisional is 35 USC 112 sufficient to support the all the claims of the later application for a valid priority claim. E.g., New Railroad Mfg. L.L.C. v. Vermeer Mfg. Co., 63 USPQ2d 1843 (Fed. Cir. 2002).
BUT for the parent CIP date to merely be available as a 103 reference date, the question is different - namely merely if the parent CIP has enough of a teaching or suggestion for one skilled in the art for 103, not 112, purposes.
So I do not see any really novel issue here unless there is some new twist in the facts of this case. For example, is the appellant here trying to argue that the PTO had the burden of showing the provisional spec was substantially identical, rather than the applicant having the burden to show the provisonal spec failed to contain a sufficient 103 teaching or suggestion?

[Night Writer Patent Attorney]

When I have challenged examiners on this issue, I have never had a problem with the examiner saying, ok, well then I will show you that it is in the provisional. Fair enough.

[broje]

I don't know for sure, but I recall that it has previously been settled that if one converts a provisional application to regular, the term of the issued patent expires 20 years from the filing date of the provisional application. But if one simply claims priority from the provisional, the term of the patent expires 20 years from the filing date of the patent application, not the provisional. That's why no one converts to reg.

If true, that would seem to suggest that the US effective filing date is the filing date of the regular application, so long as the filer did not convert to the provisional to regular, but merely claimed priority from the provisional.

As it was early in my career, I don't recall what it was that determined that you get an extra year of term by not converting to reg. I think it was a case, but I'm not sure. Does anyone remember?

[EG]

I predict that the Federal Circuit will reverse the Board of Appeals on the issue of a provisional filing date having a 35 USC 102(e) "prior art" effect. 35 USC 102(e)(1) says that the application for patent must be "published under section 122(b)"; a provisional application cannot be "published under section 122(b)." That the application must be "published" to have the 35 USC 102(e) "prior art" effect is also made clear by the priviso relating to PCT applications.

35 USC 119 (as the title clearly says) only defines the effective filing date as it relates to the "right of priority," not the "prior art" date; that's why an original foreign filing date is not accorded a 35 USC 102(e) "prior art" effect by virtue of 35 USC 119(a). Similarly, 35 USC 119(e) only defines the effective filing date of a provisional for the purposes of "priority" and not for the purpose of "prior art" date. Unless the Federal Circuit wants to distort the meaning and purpose of 35 USC 119, there's no way that a provisional filing date can be accorded a 35 USC 102(e) "prior art" effect.

[Night Writer Patent Attorney]

>>published under section 122(b)";

But, EG, the provisional application is published with the utility application, because it is made available on the PTO's website when the utility application is published.

[sucemabite]

"That's the problem. The practice of using a utility disclosure based on a provisional as prior art has to stop. If the examiner has to use the provisional date, then the examiner should be citing portions of the provisional application and not the utility patent."

So what's stopping you from challenging the Exr that the provisional does not contain sufficient disclosure relative to the non-provisional? Are provisional apps not available on PAIR? It's true that some provisionals are a "data dump" as someone mentioned, but most I've seen are near verbatim to the non-provisional that is eventually filed.

[Paul F. Morgan]

The reason "..patents claiming priority to a foreign filing under Section 119 are not given the foreign priority date [in the U.S.]" [other than the exception at the end of amended 102(e) for international applications published in English] are the two [Judge Rich?] In re Hilmer decisions of the CCPA, which strictly apply the "filed in the United States" requirement of 102(e) for all but that one exception. [The pending patent reform bills would eliminate "in the United States" in 102(e)and elsewhere.]
BTW, there are more than a few 102(e) rejection situations which, even if overcome in the PTO, could become 102(g) prior art situations if the patent was ever litigated.

[Just Visiting]

"As it was early in my career, I don't recall what it was that determined that you get an extra year of term by not converting to reg."

By statute under 35 USC 154, claiming priority under 35 USC 119 does not affect patent term.

[EG]

I've thought about this some more, and while a provisional should not have a 35 USC 102(e) "prior art" effect, that does not mean it can't have a 35 USC 102(g) "prior art" effect, especially if no interference can be declared.

[SteveW]

@ME:
The app A as a non-provisional is similar but not identical. app A non-provisional will publish at the 18 month mark all on its own (absent a specific non-publish request, etc.)

[EG]

"the provisional application is published with the utility application, because it is made available on the PTO's website when the utility application is published."

Night Writer,

That's not technically correct. The "disclosure" in the proviisional may be published in the non-provisional application, but not the provisional "application" itself. It's also not unusual for the disclosure in the non-provisional to differ from the disclosure in the provisional from which the benefit of priority is being claimed.

Anyway, this is an argument in semantics. As I noted in an earlier post, a provisional could still have a "prior effect" at least as early as its filing date based on 35 USC 102(g).

[Paul F. Morgan]

BTW, from Appelant's brief:
"Claim 1 is representative of all of the appealed claims, and recites:
1. A method comprising:
populating a cache with a resource only when at least i requests
for said resource have been received;
wherein i is an integer and is at least occasionally greater than
one."
[And this application was only filed in 2000.] [Is this just another example of wasted time and money from failure to find and apply better 102 art?]
[Does anyone else find this claim "limitation" of "at least occasionally greater than
one" interesting? [Would not that also read on "one", which I gather even from the brief is the prior art?]

[6]

"1) Why is that not a breach of the Paris Convention?

2) Should every other country (China included) copy the USA and ignore priority dates, but only when they are US ones? "

I don't have any clue. Also I ha te "Paris" and I think we should break it every chance we get until it is annulled. Even if we have to fight a war or 2.

"Totally different outcomes under your proposed system, even though, from the perspective of the applicants for app C, the state of knowledge of the rest of the world is exactly the same - the only difference is whether a procedural step was taken. That may be the right answer, but I'm wondering why you think it's so straightforward."

Because I put a lot of thought and effort into it already. You should try it, it works wonders.

"

Even assuming the provisional application is the priority date, the examiner has the burden of establishing that the prior art subject matter cited against the patent applicant was in the provisional application.

Normally, provisional applications contain a mish mash data dump. I would be dollar to donuts that the Examiner failed to sufficiently establish that the prior art subject matter cited against the patent applicant was in the provisional application."

Mine are usually nearly identical with informal drawings.

"I predict that the Federal Circuit will reverse the Board of Appeals on the issue of a provisional filing date having a 35 USC 102(e) "prior art" effect. 35 USC 102(e)(1) says that the application for patent must be "published under section 122(b)"; a provisional application cannot be "published under section 122(b)." "

We're not rejecting you over the prov. We're rejecting you over the PGPUB. A PGPUB that happens to get a nice FD.

[Anon E. Moose]

The purpose of the provisional application's creation was to give US national filers partiy with foreign national filers under the 20-year term. A foreign application's term is measured from their US filing date, but they have priority to their Sec. 119 date one year earlier. On the other hand, a US filer's term begins ticking from the date of the non-provisional filing. The a provisional application accords priority benefit equivalent to Paris Convention filers, but does not impact the 20 year term, and gives US filers the option to obtain the same patent term available to foreigners under the Paris Conv. Logically, the provisional application statute was therefore located under sec. 119.

Prov. filings should therefore be treated no different than the priority application of a Paris Conv. filing for purpose of prior art applicability under 102(e).

Additionally, one purpose of 102(e) is to not prejudice the earlier filer because of administrative delay at the USPTO. A subsequent patent should not issue over an earlier application disclosing the same invention, where the later application would have been barred (e.g. under 102a) had the PTO acted more quickly. This rationale does not apply to provisional applications, which will never be published by the USPTO and are not awaiting any action by the Office.

[yapex]

Night Writer: "When I have challenged examiners on this issue, I have never had a problem with the examiner saying, ok, well then I will show you that it is in the provisional. Fair enough."

Indeed that's exactly what I did, when the application's claimed priority date is between the filing dates of the provisional and non-provisional, and I initially quoted the non-provision in the rejection. In the follow-up responses Applicants never raised the the issue again since I then referenced the provisional for rejection.

Very rare--only one time did I ever have to use the provisional in the office action.

[broje]

I haven't checked the specific provisions, but it seems to me that 35 USC 154 might draw the lines very clearly. If the court decided that provisionals toll 102(e), would that be the only section of 119 that would toll 102(e)? Would it be the only category of priority claim under 154 that would toll 102(e) without tolling term?

35 USC 154 says:

(2) TERM.-Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, or 365(c) of this title, from the date on which the earliest such application was filed.

(3) PRIORITY.-Priority under section 119, 365(a), or 365(b) of this title shall not be taken into account in determining the term of a patent.

[JohnDarling]

"Even assuming the provisional application is the priority date, the examiner has the burden of establishing that the prior art subject matter cited against the patent applicant was in the provisional application."

Not according to BPAI. The burden is on the applicant.

[6]

"Not according to BPAI. The burden is on the applicant."

I don't know if I'd go so far as to say that.

However, if someone brings up that they believe I didn't "establish" it then in the next action I state specifically that I establish it. And then I rofl some lols.

[6]

Broje, the original, and the biggest major purpose to the prov. (imo) was to allow people to establish a FD without "any" adverse consequences.

[6]

"Very rare--only one time did I ever have to use the provisional in the office action."

You should not be replacing your references to the pub with references to the prov. Of this I'm pretty sure. You can't use the prov. to reject, you use the pub.

[6]

"[Does anyone else find this claim "limitation" of "at least occasionally greater than
one" interesting? [Would not that also read on "one", which I gather even from the brief is the prior art?]"

111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111
11111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111
222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222

[HierarchyOfPontificationBuckets]

JohnDarling: I think that the Yamaguchi panel skirted the issue of burden of proof (or at least what it requires) by holding that any failure by examiner to meet such duty in Yamaguchi was harmless error because, after doing its own fact finding, the panel found that the provisional did in fact support the reference patent publication. See Table 1 of Yamaguchi and accompanying text. Note also "we hold that Appellants have not shown _harmful_ error in the rejections on appeal".

The Examiner held that the provisional was the same as the publication. Burden shifted to applicant to show error, but they didn't show error, there was no error, and if there was error, it was harmless.

The burden-of-proof in this provisional-date scenario is grounded in the basic rule that PTO must establish prima facie case. Yamaguchi didn't touch on that. See non-precendential Appeal 2007-2225 for insight, notably

"The allocation of burdens requires that the USPTO produce the factual basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA 1967)). The one who bears the initial burden of presenting a prima facie case of unpatentability is the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).

The Examiner has not provided copies in this appeal of the two provisional applications in controversy, much less shown where any kind of § 112 support may be found in the provisional applications for the subject matter of the published application upon which the rejection relies. In accordance with the Examiner’s theory that some or all of the [reference] published application may be applied against the instant claims, the rejection should show, to establish a prima facie case for unpatentability, where § 112 support resides in the earlier provisional applications for each instance of specific subject matter relied upon in the published application, including an explanation why the provisionals would still be recognized by the artisan as providing support if not “word for word” the same as the later text or drawings. Mere reference to the text or drawings of [the reference publication]is not sufficient."

At first glance, it could seem that Yamaguchi alleviated PTO of having to show provisional supports the reference publication, but what it really held was that (i) when the provisional does clearly support the publication (ii) the PTO doesn't have to detail such support so long as(iii) the PTO makes some finding of fact with regard to the provisional (e.g., "provisional is nearly identical to publication").

Aside from all that, Kudo's to Giacomini's counsel for writing a lively and logically sound brief. I also like Giocomini's argument that if the provisional is being relied on, why not just require PTO to cite to the provisional and ignore the publication?

[Malcolm Mooney]

NWPA: "Actually, you know, I have been a bit suprized that those who question of the prsumption of validity haven't picked up on this point. That often a patent issues with a priority date based on a provisional application and yet whether or not the provisional application supports the claims of the utility patent is often never examined."

Depends on the art unit. In the grown-up art units, we're accustomed to Examiners reviewing the priority applications and making arguments based on what is or is not disclosed therein. It doesn't happen all the time, but it happens often enough that one does not expect the shortcomings of a spineless provisional to go unnoticed during prosecution.

[Malcolm Mooney]

DC: "The novel question here on appeal is how to interpreted the statute's silence regarding provisional applications."

Well, for the sake of reason, I hope that Giacomini loses big time.

[Malcolm Mooney]

Regarding the claims, Mr. Morgan makes several good points at 11:03.

What a total waste of everyone's time.

[HierarchyOfPontificationBuckets]

Paul F. Morgan said: "Does anyone else find this claim "limitation" of "at least occasionally greater than one" interesting? [Would not that also read on "one", which I gather even from the brief is the prior art?]"

Yes. In software arts it's a common claiming issue to deal with; how to claim something that can be handled in two ways, sometimes in an old way, and sometimes in a new way. My approach is usually to just claim the new way and ignore the old way. All the infringer has to do is practice the new part one time, even if most of the time they do it the old way.

That said, what I don't like about "ocassionally" is that I think it could be indefinite, or at the least, limiting in an unecessary way. Why not just say "sometimes"? It leaves out any connotation of infrequency (though "sometimes" does suggest more than once). Better yet, just leave out that clause altogether. The claim is _open ended_. If the method is implemented on a device that sometimes caches after one request and sometimes caches based on two or more requests, such server would still infringe. It might be basic patent law, but software can be tricky to claim _sometimes_.

[HierarchyOfPontificationBuckets]

MM: "In the grown-up art units". Could this guy drop his pretentiousness if he even cared to? What an ***.

[MaxDrei]

Does the prior art have zero capability to rise to a value >1? If so, then a claim that recites such a capability (even if that capability manifests itself only occasionally) endows the claimed subject matter with novelty, no?

[Jules]

That claim is pitiful...

What would be the purpose of a firm appealing this rejection? Do they just have a penchant for clarifying the area of 102(e)/provisional law, or do they truly believe that if they overcome that reference, they will be entitled to a patent?

[appealho]

6: "'Not according to BPAI. The burden is on the applicant.'
I don't know if I'd go so far as to say that.
However, if someone brings up that they believe I didn't "establish" it then in the next action I state specifically that I establish it. And then I rofl some lols."

Once, years ago I argued no support in a provisional for a claimed feature. The provisional did not include support for that claimed feature, which was added in the non-provisional of the patent being applied against our claim. While I heard no lols, I called the examiner after he repeatedly ignored our argument. Next, I called the SPE and he actually yelled at me on the phone.

The client was a foreign entity and decided to drop the application. I believe they abandoned because they generally avoid appeal and figured we were incorrect in this approach.

lols indeed

[Night Writer Patent Attorney]

>>MM: "In the grown-up art units". Could this >>guy drop his pretentiousness if he even cared >>to? What an ***.

He is an examiner in the biotech arts. He believes that the other arts have ruined the PTO.

[appealho]

I forgot to mention in my 12:21 post that the actual filing date of the patent being applied was after our foreign priority date, which was after the provisional filing date.

[Mark]

"The provision makes clear that a patent claiming priority to an international application will be given the international application filing date if that application "designated the United states and was published . .. in the English Language.""

The treatment of international (PCT) applications is not a true parallel with provisional applications. Note that PCT applications themselves can (and often do) claim foreign priority from an earlier application. (Indeed, PCT applications are allowed to claim priority from US provisional applications.) It is that priority claim, if any, in the PCT application that is treated as the 119 equivalent of a provisional application, while the PCT application designating the US itself is treated (assuming the US national stage is pursued) as a US application from the international filing date - the PCT filing date, not the claimed priority date, is the 102(e) date.

I suspect, the courts will need to consult the legislative history of the provisional application statutes to help resolve this issue. I think they will find that provisional application priority claims are to treated the same as all other foreign priority claims under 35 USC 119 - which are not given 102(e) treatment.

[Malcolm Mooney]

"Yes. In software arts it's a common claiming issue to deal with; how to claim something that can be handled in two ways,"

It's called an "algorithm."

[broje]

I claim:

1. A method for dealing with MM, the method comprising:

predominately ignoring MM; and

occasionally responding to MM in a tit for tat fashion.

[broje]

2. The method of claim 1, wherein occasionally responding includes employing a computer processor interfaced with a communications system.

[Malcolm Mooney]

"What would be the purpose of a firm appealing this rejection? Do they just have a penchant for clarifying the area of 102(e)/provisional law, or do they truly believe that if they overcome that reference, they will be entitled to a patent?"

Those aren't the only explanations.

Maybe the applicant had been made aware of this reference at the time the application was being prepared and told the client, "Oh, that won't be an issue." And now it's being fixed just to make a point that the prosecutor stands behind his word.

Or perhaps it's just to put on a good show for the investors. You know, sort of like how certain commenters here are always convinced that the PTO is this evil force trying to deny their clients their God-given rights to a patent. Sometimes investors and their representatives become addicted to the idea of owning a broad patent. The amount of money spent on the appeal, even if issuance of the claims is an absurd longshot, is peanuts compared to the rich creamy pie in the sky whose crust can almost be smelt by the CEO and his fellow confidence men. Don't forget: a pending claim on appeal is worth more than a dead claim, as long as you have some patent-ignorant suckers with loose wallets riding the same train.

[Ah Pook]

I would hope that you guys all are aware of this already but from some of the comments I'm not so sure:

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2136_03.htm
"III. PRIORITY FROM PROVISIONAL APPLICATION UNDER 35 U.S.C. 119(e)
The 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, first paragraph. See MPEP § 706.02(f)(1), examples 5 to 9. Note that international applications which (1) were filed prior to November 29, 2000, or (2) did not designate the U.S., or (3) 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 35 U.S.C. 102(e)."

[A plurality of thresholding units]

Mmmm.... rich creamy pie.... auuguhghghh

[LeMieux]

I guess looking up 119(e)(1) is now considered "novel" in academic circles...

It seems to me that 119 determines the effective filing date of a reference whether it is claiming the benefit of priority or whether it is being used as a reference against an application under 102(e)(1).

The key language from 119(e)(1) is: "An application for an invention . . . shall have the same effect, as to such invention, as though filed on the date of the provisional application"

[6]

"why not just require PTO to cite to the provisional and ignore the publication?"

Because 102e does not speak to prov's so far as I'm aware.

"Next, I called the SPE and he actually yelled at me on the phone."

That's lol worthy in and of itself. You got a spe that worked up? Most spes I know are pretty hard to get that worked up.

[Actual Inventor]

It is my understanding that whatever you include in the regular patent application must also be included in the provisional application in order to get the benefit of the provisional filing date. But I had always wondered how practical it is to expect the examiner to take the time to read both applications in detail. From what I read here examiners barely have enough time to read the regular app and claims.

[MaxDrei]

Actual, good question. In the EPO, Examiners routinely have to assess whether:

1. Applicant is entitled to a priority date and

2. Whether the priority date in the reference is good against the claim

but, you know what, that demanding exercise is never done (not at all, simply not in the tiniest fraction) unless it's needed. That's when the respective dates are "interlaced". It happens in maybe less than 5% of cases. When it does though (usually in inter partes post-issue opposition proceedings) the job is done thoroughly. As it has to be, in any First to File country.

[Malcolm Mooney]

AI: "It is my understanding that whatever you include in the regular patent application must also be included in the provisional application in order to get the benefit of the provisional filing date. But I had always wondered how practical it is to expect the examiner to take the time to read both applications in detail. From what I read here examiners barely have enough time to read the regular app and claims."

Have you heard about this amazing software that lets you compare documents? It's like putting two documents side by side and making notes on one of them where there has been a change, except it's all done by a powerful computer brain.

[LeMieux]

a powerful computer brain, like the one Mooney doesn't have...

[broje]

Not quite, AI. The regular patent application claiming priority from the provisional is like a CIP claiming opriority from a regular.

Claims in the patent get the priority date of the provisional if they are enabled by the provisional. The regular application can have additional disclosure. But claims enabled only by that additional disclosure do not get the benefit of the provisional.

As always, IANYL, TINLA, and SPORK.

[Jason Paul DeMont]

Mr. Morgan:

"The situation as to an application or patent claiming priority from a provisonal is essentially the same as for claiming priority from a CIP."

But the word "essentially" is the rub. You might have a good policy argument for changing the statute, but the law is pretty clear that a 119(e) priority claim shifts ONLY the priority date of the applications claims back to the provisional -- it doesn't also shift the effective reference date back to the provisional. If it did, you'd be giving an effective reference date to a document that is before the document ever came into existence!

A provisional is authorized until 111(b) and can never mature into a patent or publication. A CIP is authorized under 111(a) and can mature into a patent and publication.

A priority claim to a provisional under 119(e) is analogous to a priority claim is authorized under 119(a)-(d). A priority claim in a CIP to an earlier 111(a) application is authorized under 120.

[don't bother]

"I would hope that you guys all are aware of this already but from some of the comments I'm not so sure:

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2136_03.htm
"III. PRIORITY FROM PROVISIONAL APPLICATION UNDER 35 U.S.C. 119(e)
The 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, first paragraph. See MPEP § 706.02(f)(1), examples 5 to 9. Note that international applications which (1) were filed prior to November 29, 2000, or (2) did not designate the U.S., or (3) 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 35 U.S.C. 102(e)."

The MPEP is not the law. I would hope that you are aware of that already. But I'm not so sure.

[don't bother]

"But, EG, the provisional application is published with the utility application, because it is made available on the PTO's website when the utility application is published."

Probably not. 102(e)(1) requires an application for patent, published under section 122(b).

122(b)(2)(A)(iii) clearly states that provisional applications are not published.

I hope Mr. DeMont's appeal is successful.

[patenthunter]

provisionals are published in PAIR

[Night Writer Patent Attorney]

122(b)(2)(A)(iii) clearly states that provisionals are not published under 122.

[Jason Paul DeMont]

I want to thank everyone for their comments -- at least the intellectually constructive ones.

Please feel free to file an amicus brief in this case.

Jason Paul DeMont
Attorney for Giacomini

[Night Writer Patent Attorney]

Oh darn, you were left out again, MM.

[Noise above Law]

don't bother,

Provisionals of and for themselves are not published. Left alone, they indeed die a quiet death.

However, if priority is claimed, then the provisional can be "published" as patenthunter and others suggest.

If a provisional is converted, then it can be published.

Jason Paul Demont, not only are you late, but you are incorrect. The "never mature" has already been posted as well as the correction to that statement.

[Night Writer Patent Attorney]

To be even clearer,

Provisionals aren't published by 122, but that does not mean that when a utility application is published that provisional that it claims priority too cannot be published with the utillity application.

[37 CFR]

"However, if priority is claimed, then the provisional can be "published" as patenthunter and others suggest."

Sure, but this is beginning to look like a claim construction argument over the word "published". A provisional application is not "published under section 122(b)", as specified by 35 usc 102(e)(1). The file of a provisional application that is relied on for a priority claim is "made available to the public" pursuant to 37 CFR 1.14 (a)(1)(iv). I assume the statutory authority for the latter is the "unless necessary" exception in 35 USC 122(a).

Providing access on PAIR is "making available to the public". You can call it "publication" if you like, but it is not publication under 35 USC 122(b).

[Paul F. Morgan]

Some above observations seem to be getting ignored.
First, someone has correctly observed that once a cited formal application claiming priority to a provisional is published, the provisional itself is laid open to the public. That IS a publication of the provisional application.
Secondly, irrespective of 102(e), no one has disputed the comments that a published application claiming priority to a provisional application is a presumptive 102(g)(2)/103 reference as of the provisonal filing date. [That is, unless it can be proven that what is in the provisional does NOT constitute a 103 reference.]
This seems to leaves the only Substantive issue to be: why is not an examiners statement that the provisional is substantially identical sufficient for a prima facie case to switch the burden of showing the contrary to the applicant?

[Malcolm Mooney]

"Please feel free to file an amicus brief in this case."

Why? What difference will it make?

[darkknight]

I'm surprised the examiner did not cite 102(b) art. I couldn't find one in 20 minutes of searching, but I did find a reference with a 1999 non-prov 102(e) date.

U.S. Patent 6341304
DATE FILED: September 23, 1999
Column 4 line 66
"When the count of the number of times a particular data file has been requested exceeds a predetermined value "A" 409, the file is marked as a "Frequently Requested Item" 411 which will be downloaded to local non-volatile storage." The fact that there is a "no" branch on 409 means i>=2 is disclosed.

Mr. DeMont, make sure to submit this reference on an IDS.

[37 CFR]

"no one has disputed the comments that a published application claiming priority to a provisional application is a presumptive 102(g)(2)/103 reference as of the provisonal filing date."

I'm probably not the only one here who has never seen a 102(g)/103 rejection, but that looks right to me. 102(g) has the additional limitation that the invention of the reference be "made in this country." Serious question: if an Italian inventor makes an invention in Switzerland, and files a provisional 6 months later, then a utility 8 months after that, and then abandons the case after the application is published, as of what date does that qualify as "made in this country"? Or is the answer never, in which case we're back to 102(e)?

[LeMieux]

"Why? What difference will it make?"

Coming from you LaMonkey, - Nothing, absolutely nothing.

[don't bother]

102(g)(2) - (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

Examiners, once Mr. DeMont wins his appeal, feel free to make all the 102(g)(2) rejections you want. I'll shoot 'em all down in no time.

[Malcolm Mooney]

"1. A method comprising:
populating a cache with a resource only when at least i requests
for said resource have been received;
wherein i is an integer and is at least occasionally greater than
one."

Mr. DeMont, is claim 1 infringed by populating a cache with a resource after 1 request for said resource, or are two requests for said resource required before infringement occurs? If the latter, can you tell us what the term "at least occasionally" means in this context, and where support for your construction of "at least occasionally" can be found in the specification?

Thanks in advance. Obviously, this is extremely important for everyone who populates their caches with resources.

[Ned Heller]

I agree with the appellant's brief and with the many observations here that a section 119 (e) benefit claim, structured in terms of full section 112 support for the "invention," refers only to priority. There is no clear intention here to make provisional applications prior art under section 102(e). The analysis of section 102 (e) must stand on its own to determine whether that statute embraces provisional applications. I believe the analysis presented by the appellant in this regard is persuasive, but particularly since 102 (e) is a codification of a Supreme Court case that deemed a patent prior art is of its filing date because the applicant had done all that he could have done to have the patent issue.

Re: section 102 (g), the patent office position on this is that a reference patent or application is 102 (g) prior art as of its filing date, or the date of an earlier application, only if it is "claiming" the disclosed subject matter. In essence, this converts a section 102 (g) reference into a 102 (e) reference with the sole exception of provisional applications, assuming for a moment that section 102 (g) may apply to a provisional application while section 102(e) may not. In other words, a patent (or a patent application) maybe section 102 (g) as of the filing date of an earlier provisional application only to the extent that the patent is claiming that invention.

I think this analysis of section 102(g) prior art flies in face of the case law, which only requires that the prior invention be 1) reduced to practice in the United States, 2) publicly disclosed, i.e. not abandoned, suppressed or concealed. A provisional application filed in United States is a constructive reduction to practice. If this application is not abandoned, and is disclosed, it constitutes prior art under section 102(g).

I had all this out with the patent office several years ago. They publicly disagree with my position, but privately they did agree that I was right. I'll explain in due course.

[Malcolm Mooney]

"Re: section 102 (g), the patent office position on this is that a reference patent or application is 102 (g) prior art as of its filing date, or the date of an earlier application, only if it is "claiming" the disclosed subject matter."

Maybe under 102(g)(1), but that's nonsense as far as 102(g)(2) is concerned.

[Malcolm Mooney]

db: "Examiners, once Mr. DeMont wins his appeal, feel free to make all the 102(g)(2) rejections you want. I'll shoot 'em all down in no time."

Be careful what you wish for, young one. The 102(g)(2)/103 combo has vast, unrealized potential. Childish braggarts should not play near dry powder.

[yapex]

6: "You should not be replacing your references to the pub with references to the prov. Of this I'm pretty sure. You can't use the prov. to reject, you use the pub."

The non-provisional claims priority to several provisionals, at least 3 of which beat the application's filing date. I used one of those 3 earlier provisionals in the next office action.

Btw I mentioned the provisional application number; apparently the Applicant accessed it directly in PAIR.

[Michael F. Martin]

"In view of the gain to the public that the patent laws mean to secure, we assume for purposes of decision that it would have been no bar to Whitford's patent if Clifford had written out his prior description and kept it in his portfolio uncommunicated to anyone. More than that, since the decision in the case of the Cornplanter Patent, 23 Wall. 181, it is said at all events for many years, the Patent Office has made no search among abandoned patent applications, and by the words of the statute, a previous foreign invention does not invalidate a patent granted here if it has not been patented or described in a printed publication. [citations omitted] These analogies prevailed in the minds of the courts below....

As to the analogies relied upon below, the disregard of abandoned patent applications however explained cannot be taken to establish a principle beyond the rule as actually applied. As an empirical rule, it no doubt is convenient, if not necessary, to the Patent Office, and we are not disposed to disturb it, although we infer that originally the practice of the Office was different. The policy of the statute as to foreign inventions obviously stands on its own footing, and cannot be applied to domestic affairs. The fundamental, rule we repeat, is that the patentee must be the first inventor. The qualifications in aid of a wish to encourage improvements or to avoid laborious investigations do not prevent the rule from applying here."

http://supreme.justia.com/us/270/390/case.html

[Actual Inventor]

broje wrote: "The regular patent application claiming priority from the provisional is like a CIP claiming opriority from a regular. Claims in the patent get the priority date of the provisional if they are enabled by the provisional. The regular application can have additional disclosure. But claims enabled only by that additional disclosure do not get the benefit of the provisional."

Thanks, Thats a valuable point to remember.

[Ned Heller]

6 and yapex said:

"6: 'You should not be replacing your references to the pub with references to the prov. Of this I'm pretty sure. You can't use the prov. to reject, you use the pub.'

The non-provisional claims priority to several provisionals, at least 3 of which beat the application's filing date. I used one of those 3 earlier provisionals in the next office action.

Btw I mentioned the provisional application number; apparently the Applicant accessed it directly in PAIR."

This is EXACTLY why the Office is wrong! The contents of the non provisional and the provisional not only do NOT have to be identical, they more often than not are widely divergent. Like Paul Morgan said, this is like a CIP, where it is encombant upon the Office to cite the first of the parent applications that claims to be a pure continuation or a division of the application whose filing date is being used to reject, otherwise there is no guarantee of that the subject matter being used to reject was not introduced at a later date.

If one cannot cite the provisional application directly for any reason, there is no basis in the statutory framework for the provisional application to be prior art at all. However, for the reasons previously stated, it is my opinion that a provisional application constitutes section 102 (g) prior art provided that it is accessible to the public. It clearly does not constitute section 102 (e) prior art because it cannot adnd is not published either as a patent application or as a issued patent. It only becomes prior art on a 102 (g) when it is identified in a published application or patent and thereby is "implicitly" published in the that one may access the provisional application through public PAIR. But public PAIR is recent. Prior to being accessible through public PAIR, provisional applications were not publicly accessible. Rather they were archived. Therefore whether they were actually published when they were identified by a published patent application or by a published patent is more than highly questionable. I would argue that the lack of public accessibility to provisional applications until they were accessible through public PAIR made them per se ineligible to be prior art even under section 102(g).

[Ned Heller]

Actual inventor wrote:

"broje wrote: 'The regular patent application claiming priority from the provisional is like a CIP claiming opriority from a regular. Claims in the patent get the priority date of the provisional if they are enabled by the provisional. The regular application can have additional disclosure. But claims enabled only by that additional disclosure do not get the benefit of the provisional.'

Thanks, Thats a valuable point to remember."

AI, broje's note is misleading and adopts a non accepted theory of Section 112, p.1. The law as it stands today is that a parent has to have

1) a written description of the invention; and
2) a description of how to make and use the invention.

Often, provisional applications lack 1), a written description. A set of drawings and plans from which one of ordinary skill could build the invention is not enough.

[don't bother]

"Be careful what you wish for, young one. The 102(g)(2)/103 combo has vast, unrealized potential. Childish braggarts should not play near dry powder."

Ooohhhh!!!!! I'm so ascared!!!!!!

BWWWWWAAAAAAAAAHHHHHHHHHAAAAAAAAAAAHHHHHHHHHHAAAAAAAAAA

[yapex]

Dark Night: "I'm surprised the examiner did not cite 102(b) art. I couldn't find one in 20 minutes of searching, but I did find a reference with a 1999 non-prov 102(e) date.
...
Mr. DeMont, make sure to submit this reference on an IDS."

The Examiner did have multiple rejections 102(e) rejections. For example, Teoman (e.g., column 15) was affirmed by the Board (4/17/2009).

http://www.google.com/patents?id=z7QLAAAAEBAJ&printsec=abstract&zoom=4#v=onepage&q=&f=false

Here's another potential 102(e) reference. Edwards, filed May 1998, Fig. 3, box 60: "Has page been requested 5 times before?"; box 62, "Yes, Store page in cache".

http://www.google.com/patents?id=2QAPAAAAEBAJ&printsec=abstract&zoom=4#v=onepage&q=&f=false

I wonder if the Applicant has been fully advised of the application's patentability, or lack thereof.

[Malcolm Mooney]

Ned: "Prior to being accessible through public PAIR, provisional applications were not publicly accessible. Rather they were archived."

They were archived and publicly accessible.

[Malcolm Mooney]

Ned: "Often, provisional applications lack 1), a written description. A set of drawings and plans from which one of ordinary skill could build the invention is not enough."

You must be an Examiner!!!!!!!

/tinfoil troll off

[xmr-not6]

Ned,

Regarding accessibility of provisional applications, any that are references in a later published document are accessible under the rules.

37 CFR 1.14 Patent applications preserved in confidence

(1) Records associated with patent applications (see paragraph (g) for international applications) may be available in the following situations:

(v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2). A copy of the application-as-filed, or a specific document in the file of the pending application may also be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (h) of this section.

(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (h) of this section.

[Actual Inventor]

Ned wrote:

" The law as it stands today is that a parent has to have

1) a written description of the invention; and
2) a description of how to make and use the invention."

Ned,

How is a written description different from a description of how to make and use the invention?

I have scoured The USPTO website to see if a distinction is made but could not find one. The Office web site does include the following.....

"(5) Background of the Invention.

(6) Brief Summary of the Invention.

(7) Brief description of the several views of the drawing (if any).

(8) Detailed Description of the Invention.

(9) A claim or claims.

(10) Abstract of the disclosure.

(11) Sequence listing (if any).

______

So would the "written description of the invention" be considered 5-7 above, and the "description of how to make and use" be in the 8 category?

[Ned Heller]

xmr-not6, the rule you quote, CFR 114 was changed in 2003 to permit access to unpublished abandoned applicatons and provisional applications. I believe the rules allowing access were different prior to that date. It would be helpful if you quote the rules circa 2000, the dates relevant here.

[Ned Heller]

Malcolm, if they were accessible, the rules should have provided for it. But the rule change in 2003 seems to (for the first time?) allow access to provisional application. Are you sure provisional applications were accessible in 2000?

[Ken Brooks]

This is making mountain out of a mole-hill. If you convert from a provisional to a utility then 102(e) is as of the date of the provisional. If you claim priority to a provisional then it does not. Look at the comments on the reason why provisionals exist. Q.E.D.

[Ned Heller]

Actual Inventor, You might want look at the thread involving en banc Fed. Cir. case that is going to review the written description requirement -- particularly the amicus briefs. I reference there the most important Supreme Court case on this point: Muncie Gear. You might read the case http://supreme.justia.com/us/315/759/case.html and the patent and claims under discussion. http://www.google.com/patents/about?id=M0hiAAAAEBAJ&dq=1,716,962

What you will find is this. The patent application as filed had a specification and claims directed to a feature of an outboard motor: a deflection plate that compensated for motor torque. An anti-cavitation plate was described, but no indication was given anywhere that such was new.

After final rejections, Muncie Gear added description to the specification directed to the housing and how the walls of the housing were smooth and unbroken and how this helped with anti-cavitation.

New claims 11 -14 were added, all directed to the anti-cavitation plate in combination. Claims 12 and 14 included, in similar terms, that the housing had smooth and unbroken walls. That they did, the Supremes said, was not clear from the drawings as filed as no cross section was provided. Claims 11 and 13 did not have the new matter, but were arguably fully supported in the application as filed.

The Supremes held all claims invalid, not just claims 12 and 14.

The case was decided in 1942. In 1952, section 112 was re-written to break out the written description requirement from the description of make and use. Additionally, Section 132 was added forbidding the addition of new matter by amendment.

The circuit courts have split on what Muncie Gear meant. The CCPA and the Fed. Cir. believe it to be a case that holds that if you add new matter and then claim it, your claims are invalid. However, the Supreme Court did not say this about claims 11 and 13. They were held invalid for a different reason: there was no description in the specification as filed that the anti-cavitation plate was an invention --- even though it was fully described and enabled.

Now, with the above in mind, do you understand what a written description requirement is that is different from an enablement requirement?

[Ned Heller]

Ken, you are wrong.

[Ned Heller]

More on Muncie Gear, the patent was owned by Johnson Motor Co., not Muncie Gear as I suggested before I reread the case just now. The amendment adding new matter was treated as a new application, a CIP in today's world. When a claim is presented in a CIP, its effective date depends upon whether it is fully supported in the parent in term of written description, not just whether one can make and use what eventually was claimed. That is the way the Fed. Cir. now addresses the written description issue, but the Feds go further and apply the requirement to any claim presented by amendment, or in a continuation.

I think the result in Muncie Gear would have been different had the "parent" application given any hint that the anti-cavitation plate was part of the invention and not old. The Fed. Cir. has not fully developed its jurisprudence on written description, except to say that enablement is not enough. But describing something in terms of what it is not, and not what it is, will take a long time. However, if presented with the facts akin to Muncie Gear, I suggest the Feds. will decide such a case in the same way. If they do not, they may have trouble with the Supreme Court. Check the Quanta case as an example.

[Ned Heller]

Ken, just a note: when you convert a provisional into a non provisional there is no provisional. The application then qualifies as a patent application that will be published under the law.

[Ned Heller]

Historical note: Prior to the 1999 amendments, effective November 29, 2000, § 102(e) was limited to patents issuing applications filed in United States and excluded patents issuing on "international applications," but further provided that international applications would have an effective § 102(e) as of the date they entered the international stage. However the Office treated at the effective § 102(e) date of any section 111(a) patent claiming "section 120" benefit of an international application as the filing date of the international application. Thus, a national stage patent issuing on an international application had an effective §102(e) date as of its date of entry into the national stage, while a continuation of this very same "application" may have the international filing date as its effective § 102(e) date.

I wrote a JPTOS highly critical of this "nonsense." In response, the Office twice amended § 102(e) in order to clarify the situation and limit the § 102(e) benefit to international patent applications both filed and published in English.

While all this was going on publicly, I had filed a petition with the commissioner asking him to recognize that a patent issuing on an international application that claimed priority to a provisional application filed in the United States or the benefit of the filing date of non-provisional application filed in United States had an effective § 102(e) date as of the filing date of the provisional or the non-provisional as the case may be. The commissioner decided that regardless of the claim of priority or benefit, that the issue was decided by 35 USC section 375. In essence, the commissioner held, a patent issuing on an international application has NO, repeat that, NO § 102(e) except its national stage date.

It is interesting to note that in our argument we made the point that regardless of § 102(e), a patent issuing on an international application that claimed priority to an earlier-filed provisional application or the section 120 benefit of an earlier filed non-provisional application was prior art under § 102(g). The commissioner essentially "ignored" our argument by citation to a mysterious, and wrongly decided, opinion by Judge Newman, which essentially said that patents had no Section 102(g) dates.

[Ah Pook]

"The MPEP is not the law. I would hope that you are aware of that already. But I'm not so sure."

Sure, I'm aware of that, but it's surely relvant to the debate and some of the comments here suggest a lack of any awareness of the MPEP position.

[hindsight from the future]

what is the MPEP position? the Office doesn't even enforce it on the examiners. the MPEP is worse than a waste. it is relevant to nothing.