Comments on: Q) Foreign Patents (4.02.50a)

By: MnGirl

MnGirl — Wed, 21 Mar 2012 04:28:15 +0000

Had a very similar question on 3/19/12. Basically it was asking about the requirements of 102(d) but the easy “right” answer that the publication of the patent is not necessary was not there. Just required careful look up.

By: little yellow duck

little yellow duck — Fri, 18 Feb 2011 15:18:34 +0000

Publication of application is 102(e) about.

By: Stephen

Stephen — Thu, 12 Aug 2010 05:16:30 +0000

For exam purposes I am just going to assume that if the foreign patent isn’t issued it’s not “enforceable” as a patent. What you posted makes things very confusing because according to 2135.01 once it’s published it’s somehow considered a “patent” for the purposes of a rejection under 102(d). However, to be a rejection under 102(d) it specifically says the patent being used as a basis for the 102(d) rejection has to be “enforceable.” If it’s not issued it’s not technically enforceable…unless it’s counting interferences/protests as being a form of “enforcement,” therefore somehow equating it to a patent. Maybe I’m missing something.

By: Drew

Drew — Tue, 27 Apr 2010 01:47:55 +0000

Here is the specific text

2135.01 III C.

An Allowed Application Can Be a “Patent” for Purposes of 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 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 35 U.S.C. 102(d).).

By: Dog

Dog — Mon, 19 Oct 2009 20:42:28 +0000

So I may not ask this question correctly, but I’m going to try anyway. If a foreign application has been published, and the filing date of that application was a year prior to the US app date, then does this create a 102d rejection? I actually had a question like this twice in my last exam, but I can’t remember how I answered. I didn’t get it wrong though, so I wasn’t able to check. I understand that it doesn’t have to be “published and patented”, that patented is enough, but what if its only published? I see the phrase used above… “rights granted must be enforceable”, does this mean that some publications aren’t enforceable and some are?

By: triedandtested

triedandtested — Thu, 11 Jun 2009 00:00:26 +0000

However, if the publication of a foreign patent occurs, and some provisional rights ensue, the foreign patent can have a 102(d) date as a reference. See below from MPEP 2135.01

III. THE FOREIGN PATENT OR INVENTOR’S CERTIFICATE WAS ACTUALLY GRANTED BEFORE THE U.S. FILING DATE

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 35 U.S.C. 102(d) rejection. Gebrauchmustern are not examined and only grant a 6-year patent term. However, except as to duration, the exclusionary patent right granted is as extensive as in the U.S.).