Comments on: Q) Prior Art under 35 USC 102(d) (4.03.3p) http://mypatentbar.com/2010/04/07/q-prior-art-under-102d/ Patent Bar Review and Study Guide Sat, 18 May 2013 08:57:15 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: Nicola http://mypatentbar.com/2010/04/07/q-prior-art-under-102d/#comment-124608 Nicola Fri, 26 Apr 2013 19:06:24 +0000 http://mypatentbar.com/?p=1139#comment-124608 Focus on Sol's post below but I also had the same glitch with this as SEC. See, Q15) Spanish Phone (MPEP 1500, Design Patent) The new material in the CIP kills off anticipation by the now not so 102(d) prior art; the formerly prior art does not anticipate the new material! But I am going with the best answer analysis out of the available answers. Focus on Sol’s post below but I also had the same glitch with this as SEC. See, Q15) Spanish Phone (MPEP 1500, Design Patent)

The new material in the CIP kills off anticipation by the now not so 102(d) prior art; the formerly prior art does not anticipate the new material!

But I am going with the best answer analysis out of the available answers.

]]> By: jkpatentlaw http://mypatentbar.com/2010/04/07/q-prior-art-under-102d/#comment-47667 jkpatentlaw Sat, 16 Jun 2012 21:53:23 +0000 http://mypatentbar.com/?p=1139#comment-47667 It says the opposite,....Also, a defense publication isn't an application. So the only date it gets is as of its publication date. Not its filing date. It says the opposite,….Also, a defense publication isn’t an application. So the only date it gets is as of its publication date. Not its filing date.

]]> By: jkpatentlaw http://mypatentbar.com/2010/04/07/q-prior-art-under-102d/#comment-47666 jkpatentlaw Sat, 16 Jun 2012 21:51:41 +0000 http://mypatentbar.com/?p=1139#comment-47666 A defense publication is not even an application, so pertaining to the question, it doesn't qualify as prior art under 102(d) because it's not an application. It says this in MPEP. A defense publication is not even an application, so pertaining to the question, it doesn’t qualify as prior art under 102(d) because it’s not an application. It says this in MPEP.

]]> By: Sol http://mypatentbar.com/2010/04/07/q-prior-art-under-102d/#comment-38218 Sol Fri, 13 Apr 2012 02:13:07 +0000 http://mypatentbar.com/?p=1139#comment-38218 what does 102(d) say? (d)the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, <> by the applicant or his legal representatives or assigns in a foreign country <>> prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States <> So to answer your questions b) if after 1 year, he gets a 102(d) rejection due to prior art? If the foreign patent app has got enforceable rights before US filing, YES bar If the foreign patent app has got enforceable rights after US filing, NO bar If the foreign patentapp has NO enforceable rights before US filing, NO bar. I recommend read EVERY word in 102, every word, literally. what does 102(d) say?

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

So to answer your questions
b) if after 1 year, he gets a 102(d) rejection due to prior art?

If the foreign patent app has got enforceable rights before US filing, YES bar
If the foreign patent app has got enforceable rights after US filing, NO bar
If the foreign patentapp has NO enforceable rights before US filing, NO bar.

I recommend read EVERY word in 102, every word, literally.

]]> By: RT http://mypatentbar.com/2010/04/07/q-prior-art-under-102d/#comment-38195 RT Thu, 12 Apr 2012 20:52:14 +0000 http://mypatentbar.com/?p=1139#comment-38195 If one files a foreign patent, and then files the same patent in the US: a) before 1 year, he has a foreign priority date, but b) if after 1 year, he gets a 102(d) rejection due to prior art? Is this right? If one files a foreign patent, and then files the same patent in the US:

a) before 1 year, he has a foreign priority date, but

b) if after 1 year, he gets a 102(d) rejection due to prior art?

Is this right?

]]> By: Sol http://mypatentbar.com/2010/04/07/q-prior-art-under-102d/#comment-37094 Sol Sun, 01 Apr 2012 22:21:26 +0000 http://mypatentbar.com/?p=1139#comment-37094 Yes, the answer missed that point. The CIP has to be filed more than 12 months after the foreign filing date. Yes, the answer missed that point. The CIP has to be filed more than 12 months after the foreign filing date.

]]> By: Sol http://mypatentbar.com/2010/04/07/q-prior-art-under-102d/#comment-37093 Sol Sun, 01 Apr 2012 22:20:19 +0000 http://mypatentbar.com/?p=1139#comment-37093 it has nothing to do with 102(c) a defensive publication, as its name says, is not a patent and thus never a prior under 102(d) "enforcable right" is the essence of 102(d) it has nothing to do with 102(c)

a defensive publication, as its name says, is not a patent and thus never a prior under 102(d)

“enforcable right” is the essence of 102(d)

]]> By: Mambo5 http://mypatentbar.com/2010/04/07/q-prior-art-under-102d/#comment-29752 Mambo5 Mon, 23 Jan 2012 21:03:53 +0000 http://mypatentbar.com/?p=1139#comment-29752 I agree with you. It's a poor question. The main distinction between answers (A), (B), and (C) seems to be the effective filing date of the later US application. (A) and (C) get to claim priority to the prior foreign application, but (B) as a CIP with new claims cannot get priority back to the foreign application. (B) is therefore the closest to being correct, but like you say, (B) is not for sure going to be a 102(d) bar either without that >12 month prior filing. I agree with you. It’s a poor question.

The main distinction between answers (A), (B), and (C) seems to be the effective filing date of the later US application. (A) and (C) get to claim priority to the prior foreign application, but (B) as a CIP with new claims cannot get priority back to the foreign application.

(B) is therefore the closest to being correct, but like you say, (B) is not for sure going to be a 102(d) bar either without that >12 month prior filing.

]]> By: Kerstin http://mypatentbar.com/2010/04/07/q-prior-art-under-102d/#comment-29745 Kerstin Mon, 23 Jan 2012 20:06:59 +0000 http://mypatentbar.com/?p=1139#comment-29745 I really don't see how answer B connects to 35 USC 102(d) as prior art. Can anyone shed some light on this for me? For B to be correct the foreign application needs to be prior art under 102(d). 102(d) requires (among other things) that the invention was patented in a foreign country prior to the date of the application for patent in the U.S (this is the case in answer choice B) and the application for patent in the US must have been filed more then 12 months before the filing of the application in the U.S. I guess it's the last part that doesn't seem to fit. What in answer B tells us that the foreign patent app was filed more then 12 months before the US patent application? I see ELS and db's corresopondence above-just wondering if anyone has any other insight. Or if I am missing something else. I really don’t see how answer B connects to 35 USC 102(d) as prior art. Can anyone shed some light on this for me? For B to be correct the foreign application needs to be prior art under 102(d). 102(d) requires (among other things) that the invention was patented in a foreign country prior to the date of the application for patent in the U.S (this is the case in answer choice B) and the application for patent in the US must have been filed more then 12 months before the filing of the application in the U.S. I guess it’s the last part that doesn’t seem to fit. What in answer B tells us that the foreign patent app was filed more then 12 months before the US patent application? I see ELS and db’s corresopondence above-just wondering if anyone has any other insight. Or if I am missing something else.

]]> By: SEC http://mypatentbar.com/2010/04/07/q-prior-art-under-102d/#comment-23106 SEC Thu, 24 Nov 2011 10:43:55 +0000 http://mypatentbar.com/?p=1139#comment-23106 I cannot understand why (B) can be a appropriate answer. According to my knowledge, the claims in the CIP which are not entitled to the filing date of the U.S. patent application is not in the foreign application too. As a result, the foreign patent cannot be a prior art for the newly added claims in the CIP application because the foreign patent did not disclose and claim the newly added claims. I appreciate your opinion. I cannot understand why (B) can be a appropriate answer. According to my knowledge, the claims in the CIP which are not entitled to the filing date of the U.S. patent application is not in the foreign application too. As a result, the foreign patent cannot be a prior art for the newly added claims in the CIP application because the foreign patent did not disclose and claim the newly added claims.
I appreciate your opinion.

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