35 USC 102(e) – “A person shall be entitled to a patent unless (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;”
New AIPA: Disclosure in Earlier Filed Applications (effective November 29, 2000) – A person shall be entitled to an invention unless (e) the invention was described in (not necessarily claimed)
1) An application for a patent, published under §122(b), by another filed in the US before the invention by the applicant, except that the international application filed under the treaty … shall have the effect under this subsection of a national application published … only if the international application designating the US was published … of such treaty in English; or
2) A patent granted on an application for patent by another filed in the US before the invention thereof by the applicant for patent, except that a patent shall not be deemed filed in the US for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a)
US Patents can claim the benefit of an IA prior art date and have the IA filing date if:
- IA was filed on or after 11/29/00; the IA designated the US; and published in English
- US Application Publications – is prior art of the application’s US effective filing date, which can include an IA filing date, if it meets above 3 conditions
Key to remember:
1. Publication of application / Grant of Patent in the US
2. Of ANOTHER
3. BEFORE your own invetion
It is more with effective filing date
Any pending applicaiton of ANOTHER becomes a Patent or Publicaiton of it
AFTER filing of YOUR application
Filing date of earlier applicaiton of ANOTHER becomes a bar for your application under 102(e) = can be any date – must be priot to your filing date application
Mary conceived an invention on 2.27.1993 and RTP on 8.20.1993. She filed a provisional application on the invention on 3.14.95 and a utility application on 3.13.96 which claimed the priority right of the provisional application. The invention was disclosed, but not claimed in a U. S. patent to Wilson which was filed on 5.13.95, issued 6.14.97, which is a proper continuation of an application filed in the US on 7.5.1992. Which paragraph, if any, of 35 USC 102 applies?
The answer is 102 e. My question is “does 102 a or b also apply?”
I thought it is prior to your date of invention and not the filing date of application. Is that correct?
I thought so too, it is the date of the invention and the law didn’t mention filing date at all, anybody can offer some explanation?
For example, say you are the inventor in this scenario… 35 USC 102(e) identifies prior art where the invention is described by another in a patent application that was filed prior to the date that you invented.
So lets say inventor X describes your invention in their application and files at the USPTO prior to your date of invention, inventor X’s application is pending at the USPTO thus does not set off the 102(a) clock (ie not a published application or granted patent), inventor X’s filing isn’t an act by you so no 102(b), however the patent office isn’t going to grant two patents describing the same invention, thus the need for 102(e). X files before you invent, thus no patent for you.
help me understand this PLI hypo:
X RTP invention A in Belgium on June 25, 1992 and later filed a US application on January 14, 1994. Claims of Invention A were rejected as being anticipated by the disclosure in a US patent to Y. Y’ patent issued on August 16, 1994 and is based on a patent application filed on June 26, 1992. Under which of the following 102 sections would X NOT be entitled to a US patent?
I don’t understand why the answer is 102e. is it because the Date of Invention cannot be relied due to the activities being in Belgium? If so, why wouldn’t 102a work as well?
The reason why you can’t rely on the belgium filing for priority is because of the date that it was filed. In 1992 Belgium was not available as a WTO member. A date of completion of the invention may not be established under 37 CFR 1.131 before December 8, 1993 in a NAFTA country or before January 1, 1996 in a WTO country other than a NAFTA country. Therefore, since you can’t rely on the belgium filing for priority the filing date of Patent Y is 102e prior art.
Remember that 102(a) relates to date of publication (also public knowledge in US, etc.) and not date of filing.
Hope this helps!
thank you! mixed up date of application with date of publication!
Isn’t it also true applications of 1992 were not published unless requested. Since it was not noted in the question, wouldn’t we assume that the application was not published until it issued in 1994. Therefore, to use a date before 1994, we would need to use 102e?
I’m new to this, but from the way this Q was shown here, can anyone shed some light on why an examiner can’t just use 102(b) to reject, since the US filing day of REF Y (6/26/92) is more than one year prior to the US filing date of APP X (1/14/94)?
Before 2000 applications did not publish at 18 months from From filing & fact pattern does not say original filing was granted. All that is provided is the 94 issue date of continuation which would be the 102b prior art date.