50. Which of the following is not required in order for a foreign application that has
matured into a foreign patent to qualify as a reference under 35 U.S.C. § 102(d)?
(A) The foreign application must have actually been published before the
filing of an application in the United States, but the patent rights granted
need not be enforceable.
(B) The foreign application must be filed more than 12 months before the
effective filing date of the United States application.
(C) The foreign and United States applications must be filed by the same
applicant, his or her legal representatives or assigns.
(D) The foreign application must have actually issued as a patent or inventor’s
certificate before the filing of an application in the United States. It need
not be published but the patent rights granted must be enforceable.
(E) The same invention must be involved.
50. ANSWER: (A) is the most correct answer. 35 U.S.C. § 102(d). The foreign application
need not be published, but the patent rights granted must be enforceable. MPEP § 706.02(e).
(B), (C), (D) and (E) are required by 35 U.S.C. § 102(d).
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.).
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?
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).).
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.
Publication of application is 102(e) about.
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.
I always refer to 706.02(e) and 706.02 a-h for these types of questions (just to be safe).
706.02(e) Rejections Under 35 U.S.C. 102(d) [R-2]
35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a statutory bar against the grantingof a patent in this country:
(A) The foreign application must be filed more than 12 months before the effective filing date of the UnitedStates application. See MPEP § 706.02 regarding determination of the effective filing date of theapplication.
(B) The foreign and United States applications mustbe filed by the same applicant, his or her legalrepresentatives or assigns.
(C) The foreign application must have actually issuedas a patent or inventor’s certificate (e.g., granted by sealing of the papers in Great Britain) before the filing inthe United States. It need not be published but the patent rights granted must be enforceable.
(D) The same invention must be involved.
If such a foreign patent or inventor’s certificate isdiscovered by the examiner, the rejection is made under 35 U.S.C. 102(d) on the ground of statutory bar.
See MPEP § 2135.01 for case law which further clarifies each of the four requirements of 35 U.S.C. 102(d).