A Dangerous Prosecution Trap

ForkBy Paul F. Morgan

I recently retired from a position in which I was also providing legal advice to patent application prosecution attorneys and others.  I had noted the following relatively frequent source of legal confusion in current law for some patent examiners, with the result that some patent prosecutors were being dangerously misled by incomplete examiner rejections. Hence, this warning note.   

A prior U.S. PTO published patent application can qualify as prior art under multiple portions of 35 U.S.C. §102 – resulting in varying effective dates, and requiring different attorney or agent responses. Often, the multiple effective dates are not reflected in examiner rejections.  However, getting a patent application allowed incorrectly can be fatal to the patent’s validity or even lead to inequitable conduct accusations.  Legal misunderstandings of the patent examiner during ex parte prosecution do not create a valid legal excuse for prosecuting attorney legal errors.

A published US patent application has a §102(e) prior art date as of that application’s filing date, and also a §102(a) or §102(b) prior art date as of its publication date. The office action rejection should discuss both dates if the publication date was prior to the rejected application.  But, even if the examiner’s rejection was legally incomplete, the applicant’s attorney must still overcome both, correctly.

If the published application was commonly owned at the time of its invention, a §102(e)/103 rejection can be overcome by asserting common ownership under §103(c).    The protections of §103(c) do not apply to 102(a) or 102(b) prior publications.  Rather, that section only applies to 102(e),(f) and/or (g)!  Furthermore, §103(c) only applies to obviousness issues, not anticipation. Nor does §103(c) eliminate what should have been an alternative rejection for double patenting.  

Obviously, a §102(b)/103 reference from an application publication date more than a year before the subject application date cannot be eliminated, only argued over.   While a §102(a)/103 rejection might be overcome by presenting evidence of an earlier invention date, that avenue is considerably more difficult and dangerous.  In particular, patents obtained via 37 CFR 1.131 declarations of alleged prior invention have a poor litigation record. Where appropriate, 102(a) prior art may be overcome by perfecting a valid priority claim to an earlier application. 

One final related danger that arises from the fact that most U.S. applications are now  published within 18 months of their first filing date.  Even self-publications qualify as 102(b) prior art.  That means that patent applications on improvement inventions from the same client, especially with different or partially different inventors, need to be filed ASAP to avoid prior-filed basic applications from becoming prior art under §102(a) or (b) against the improvement applications [which cannot be avoided by §103(c).]

The above, of course, is oversimplified, and other commentators may wish to “chip-in.” with practical advice.

Notes:

  • Paul Morgan recently retired, as the Assistant General Patent Counsel
    for a major U.S. Corporation, after 44 total years of patent practice.

40 thoughts on “A Dangerous Prosecution Trap

  1. 40

    Yes, if the priority claim is proper and there is continuity of subject matter between the applications with respect to the rejected claim. 35 USC 120 says the filing of the later application shall have “the same effect” as though filed on the date of the priority document.

  2. 39

    “If you have a reference that has a published date after your filing date, and a filing date before your filing date, AND it was owned by the owner of the instant application then a 103 involving the reference can be overcome by asserting ownership and citing 103 exclusion.”

    What if my “filing date” was after the published date of the reference, but my application claims priority to a reference that has a filing date which is before the reference’s published date, can the reference still be overcome?

  3. 38

    So 35 USC 102 now makes complete logical sense to you, eh Newby? It remains quite baffling to me, of course.

  4. 36

    “Wasn’t the U.S. published application “known by others” on the date it was filed?”

    “others” here means the public, so no, the patent office knowing about it doesn’t count. 102(a) is the publicly known date aka published date.

    “Can someone explain to me why a published US patent application would not have a §102(a) prior art date of the application’s filing date.”

    Because the application’s filing date is not when “others” (i.e. the public) knew about the invention.

    If you have a reference that has a published date after your filing date, and a filing date before your filing date, AND it was owned by the owner of the instant application then a 103 involving the reference can be overcome by asserting ownership and citing 103 exclusion.

  5. 35

    “Wasn’t the U.S. published application “known by others” on the date it was filed?”

    No. It was known by other.

  6. 34

    “A published US patent application has a §102(e) prior art date as of that application’s filing date, and also a §102(a) or §102(b) prior art date as of its publication date.”

    I am trying to knock out a reference used in a 103 rejection.

    Can someone explain to me why a published US patent application would not have a §102(a) prior art date of the application’s filing date. I ask this becuase 102(a) recites “the invention was known or used by others in this country”. Wasn’t the U.S. published application “known by others” on the date it was filed?

  7. 33

    I would like to know the answer to Test’s last question. If an international application claims priority to a US provisional does the national stage get the provisional date? Do you need to comply with 35 USC 120 to get the priority? Note this previous post : link to patentlyo.com

  8. 32

    The past tense of “mislead” is “misled.” [FIXED – DDC]

    Not intending criticism here, but more to save you from future embarrassment.

  9. 31

    Not sure I follow the 102(b) reasoning regarding non-foreign priority. Can’t a “regularly filed” US application use a provisional’s priority date? Doesn’t this mean a 363 application should inherit its provisional’s priority date too, as cited in the Foreign section on its US application? And even if the answer to both questions is “no”, doesn’t a “national treatment” international treaty obligation trump the wording of a US statute?

  10. 30

    Quite frankly, I wouldn’t scapegoat the examiner here. I think the sane thing to do with regard to the examiner’s citing of a provision of 102 is ignore the provision cited by the examiner and make your own determination. Correct the examiner in your response if you are bent that way.

    The issue with foreign equivalents of US references is a common error, and with foreign clients sometimes the reference is the client’s own foreign publication. If the examiner doesn’t catch the error, I think you might be looking at an inequitable conduct issue during litigation if you remove a US reference using 103(c) or by perfect foreign priority when your own foreign equivlaent is a 102(b) reference.

  11. 29

    Jay Millman –

    I believe that PTA cannot extend the term of a patent beyond the date that the patent would expire due to a terminal disclaimer. See 37 CFR 1.703(g) – “No patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under § 1.702 and this section beyond the expiration date specified in the disclaimer.”

    I think PTE is a different matter.

    Maybe the PTA was included on the first page of your patent in case one of the “exculpatory” clauses of the Terminal Disclaimer is ever triggered (e.g., expiry of the “reference” or “prior” patent for failure to pay a maintenance fee.)

  12. 28

    Thanks. That case discusses PTE not PTA, but it does support the idea that the expiry date resulting from a terminal disclaimer is not the last word. Just wanted to be sure the PTO didn’t make a mistake.

  13. 27

    Gideon asked — what do we do when the examiner boobs it? And if I understand Paul Morgan, his position is that we are required to write our own (good) rejections and then respond to them if the examiner cites the wrong law. If Paul is right, this is the only corner of law I know of where the attorney is required to shoot his own client.

    I dunno’ about that. But in one case the examiner boobed it and I called her on it. I think she entered a 102(e)that didn’t fit. She cited the statute about 3 times and quoted it word for word. When I objected to the rejection on prima facie grounds, pointing out that the dates did not fit the statute, she refused to file another non-final with a valid rejection. She said her first rejection was a “typo.” It was sort of “well, you know what I really meant. . .”

    A typo. Ha! Yeah, and Paris thought her license was good.

    So — what is the proper way to handle a screwed up rejection like this, bearing in mind your duty to represent your client zealously?

    Babel Boy

  14. 26

    Anon – absolutely. I used the term anticipate a little loosely. I meant statutorily bar as the OP was referring to public use.

  15. 25

    To Jay Millman — You should take a look at Merck v. Hi-Tech, decided by the Federal Circuit on March 29, 2007.

  16. 23

    Another source of confusion apparent from some of the questions above is that 103(e) was amended in November 2002 to fix a mistake made in its 1999 amendment. It now reads:
    —————-

    “(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;”
    ———————-
    [To confuse matters further, this amendment applies to all patents and patent applications pending on or filed after 11/29/00 but not as to PCT applications filed before then.]

  17. 22

    As some commentators have noted, this should not be rocket science, but unfortunately there ARE some patent attorneys who may only respond in an amendment just to those grounds of rejection made by that examiner in the Office Action, such as only 102(e)/103 or only alleged double patenting. That is, failing to notice and respond to what should have been another and different grounds for rejection based on that same prior published application reference, such as 102(a)/103. I have also seen cases where an attorney failed to check for what should have been a 102(b)/103 rejection by not checking for prior publication of a foreign equivalent of a cited U.S. patent reference even though that reference had a filing date more than 18 months prior to the applicants.

    The author

  18. 21

    Test,

    I’m not completely sure of what situation you’re describing now. I assume you’re describing a U.S. national phase application of an international application claiming paris convention priority to a foreign patent application. If you have a U.S. public use that is more than 1 year before your international filing date, then the public use is a 102(b) bar, even if the U.S. public use was less than 12 months before the filing of the foreign priority application. 102(b) is only concerned with the date of application for patent in the United States, which can be the filing date of an international application designating the U.S., but cannot be the filing date of an application that was not filed in the U.S.

    35 USC 119(a) also explicitly says that even if you properly claim priority to a foreign application “no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in THIS country, or which had been in public use or on sale in this country more than one year prior to such filing.”

    If I’m correct in assuming you’re describing a situation where there has been U.S. public use of an invention more than 1 year before the filing date of your international application, then it seems clear based on the text of both 102(b) and 119(a) that the public us is a 102(b) bar, regardless of the filing date of your foreign priority application.

  19. 20

    Test,

    1. You should be referring to the foreign priority date for foreign patent applications or provisional applications, I have never heard of another country having a provisional filing program, but whether foreign countries have provisionals or not is moot.

    2. First, it is incorrect to state that foreign provisionals have priority over public use art. I believe you mean to say that public use in the US will not invalidate a US patent or anticipate a US application based upon a priority filing in a foreign country. For cases, where a foreign filing was the basis for a PCT which was then subsequently filed in the US , I believe you are corrrect. In the case of a Paris Convention filing, the issue would be moot because it would be filed within 12 months anyway.

  20. 19

    Here’s the answer I was given:

    The USPTO has advised that US applications flowing from a PCT flowing from a foreign provisional for 102(b) purposes have priority over US “public use” art from the foreign Provisionals priority date. Amen to that, because otherwise, “National Treatment” would not be national treatment.

  21. 18

    Test, The International filing date assuming the PCT was filed in English. Otherwise, it is still the publication date, I believe.

  22. 17

    “A US published app is 102(e) prior art as of it’s US filing date, period.”

    True, but it can get alot more interesting for foreigns.

  23. 16

    This topic is very important to us young patent prosecutors. I have been in this position prosecuting chemical patents for exactly one year now, and last week was the first time I came across a case where, looking through the prosecution history, the previous two office actions were answered based on the cited references do not qualify as prior art. It was an interesting read, but I was quite confused. Your post helped me put things in perspective. Thanks a lot.

  24. 15

    Coming from a more humble background before becoming a patent agent, I already knew that the USPTO will give you access to the file wrapper of an abandonned application if you produce a copy of the front page of any patent or published application issued in any country, not just the US, that claims priority from it, and they don’t care what the status is of that patent or published app.

    OTOH, this is really a different question, i.e. when the file wrapper itself becomes prior art. I’d say it becomes prior art under 102(a) and (b) as of the date that an application referring to it is published anywhere in the world. OTOH, the reference referring to it would be available as of the same date. This is only relevant if there is something disclosed in the US app that isn’t the foreign one.

    As for 102(e), I agree that the language is clear, and it isn’t conditionned on status. A US published app is 102(e) prior art as of it’s US filing date, period.

  25. 14

    ” Is there any impact on a 102(e) date when the published U.S. application is later abandoned? MPEP 2127 is ambiguous in its statement “An abandoned patent application becomes available as prior art only as of the date the public gains access to it”.”

    Go look at the 102(e) flowchart in the MPEP. It can get complex.

    Even if an application is not published, if it is cited in an application that is published it is accessible. Also, the 102(b) prior art effect of a patent occurs when it becomes published – irrelevant of whether it is abandoned or not, at that time or later. It essentially becomes like a non-patent reference.

  26. 13

    BioPatAtty said:
    “An abandoned patent application becomes available as prior art only as of the date the public gains access to it”

    The MPEP seems clear that the abandoned prior art has a reference date of its publication date. 102(e), however, doesn’t distinguish between applications still pending and abandoned, which implies that it covers both. Favoring the statute over the MPEP, I would thus say that the abandoned application gets a reference date back to its filing, the same as an application still pending. A quick search of the caselaw turned up nothing for me.

    Of course, you can still swear back, but it looks like that might be up to 18 months more difficult if my interpretation is correct.

  27. 12

    “Test” – in the situation you described, I believe your U.S. application date is the international filing date. 102(b) is concerned with the date of the application for patent in the United States. This rules out your foreign priority date. An international application designating the U.S., on the other hand, is considered to be filed in the U.S (except as provided in 102(e)). See 35 USC 363.

  28. 11

    I haven’t looked into it in much detail, but my understanding is that several other countries have provisional applications. Australia I’m pretty sure. Can’t remember the others.

  29. 10

    Don’t mean to use this as a forum but I have a quick question:

    Recently received a granted patent and there is some patent term adjustment listed for it. The patent, however is a CIP and moreover we filed a terminal disclaimer for it. Does the PTA override the terminal disclaimer? In other words, even though it is supposed to expire on the day it’s parent expires, does the PTA mean they don’t necessarily expire on the same day?

  30. 9

    A quick question. Is there any impact on a 102(e) date when the published U.S. application is later abandoned? MPEP 2127 is ambiguous in its statement “An abandoned patent application becomes available as prior art only as of the date the public gains access to it”. Does this mean that an abandoned application loses its prior art reference date going back to its filing date, or even its priority date if it claimed priority to a prior filed application? Thanks for the comments.

  31. 8

    “a foreign Provisional Patent application”

    Hmmm. Don’t know of any countries other than the U.S. that have provisional applications.

  32. 7

    When it comes to the 102(b) “public use” rule, what is the “application date” of a US application flowing from a PCT Application flowing from a foreign Provisional Patent application?

    Is it:
    a) The priority date established by the provisional application?
    b) The International filing date?
    c) The International publication date?
    d) The US filing date?
    e) The US publication date?

  33. 6

    I should have added, in my comment to Examiner A, that my point is that there is no need to mention 102(e) if a reference qualifies under 102(b).

  34. 5

    A common source of Examiner error in stating that a U.S. patent qualifies under 102(e) is that the Examiner fails to recognize that the 18 month publication corresponding to the patent is often a 102(b) reference. As a result, the Examiner suggests establishing prior invention or common inventorship using a declaration where none would actually be appropriate.

    As a note to “Examiner A” – under the paris convention, foreign priority only works if the U.S. application is filed within twelve months of the filing of the foreign application, while 102(b) kicks in for publications published MORE than one year before the U.S. application filing date. The language of 102(b) is concerned only with the filing date of the U.S. application, not the invention date. As a result, a 102(b) rejection can never be avoided using foreign priority (or a rule 131 declaration) to establish prior invention. If a prior publication in fact qualifies under 102(b), it cannot be removed (and is a “statutory bar” – assuming that the publication actually anticipates the invention).

  35. 4

    Thank you for the advice and notes.

    The topic stuck me as interesting.

    I’d suggest, respectfully, that the thoughts could be tightened up a bit.

    I’m not sure I took away what each “examiner error” was, how to spot it, and what to do about it.

  36. 3

    In my office actions, I’ve written “Claim X is rejected under 35 U.S.C 102(b) (if foreign priority is accorded) or 35 U.S.C. 102(e) (if foreign priority is not accorded)” and sometimes I’ll also throw in a 102a if the reference was published before one of their dates.

    If I notice that the reference is commonly assigned, I’ll usually mention it too. This is not rocket science.

    Mr. Morgan’s “final danger” is very real. I use previously-published and commonly-owned applications as 102 prior art all the time.

  37. 2

    Yes, I would hope any prosecutor with 1+ years experience would know this.

    But to add something – when trying to remove art references under 103(c), be aware that prior art can fall into multiple 102 categories. In order to be removable under 103(c) it must fall ONLY into 102(e),(f), and (g). If it is also a 102(a) or (b), then no 103(c) dice.

  38. 1

    I would hope most prosecutors know all this. The take home is to always use any and all possible routes before you fall back to a declaration of any kind.

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