Implementation of the American Inventors Protection Act of 1999

1
Info on Publications of Patent Applications
andImpact of Revisions made by AIPA of 1999 to
35 U.S.C. 102(e) and 135(b)
Bob Spar Director Office of Patent Legal
Administration [phone] Bob.Spar_at_uspto.gov
Prepared 4/24/02
2
Topics

• What applications are, or are not, published?
• When are the applications published?
• What is the content of the publication?
• Publication Volumes ?
• What other application information is available
  after publication?
• Access to the file history
• Where can I search for free?
• What are the prior art affects of US and WIPO
  publication of patent applications?

3
What applications are published

• Publication of plant and utility applications are
  required by 35 U.S.C. 122(b) eighteen months
  from the earliest filing date claimed under title
  35
• eighteen-month date measured from the earliest
  filing date claimed under 35 U.S.C.
  119(a)-(d), (e), 120, 121, or 365
• The change to 35 U.S.C. 122(b) only applies to
  applications filed on or after November 29, 2000
• Plant and utility applications filed before
  November 29, 2000 may be published pursuant to a
  proper request for voluntary publication

4
What applications are not published

• Exceptions to eighteen-month publication
• Applications no longer pending (e.g., abandoned)
• File petition under 37 CFR 1.138(c) to expressly
  abandon application to avoid publication
• Applications under secrecy order or whose
  disclosure would be detrimental to national
  security
• Provisional applications
• Design applications

5
What applications are not published

• Exceptions to eighteen-month publication
  (contd)
• An applicant may request that an application not
  be published if
• the applicant certifies that invention has not
  been and will not be the subject of an
  application filed in another country (or under
  international agreement) that requires
  eighteen-month publication
• The request must be made upon filing (required by
  statute)
• The request must be conspicuous
• See PTO form PTO/SB/35
• Stats Roughly 10 of eligible applications opt
  out of publication by filing such requests
• Bottom-line USPTO database of published
  applications does not include all applications
  that may later become available as prior art
  patents

6
When are the applications published

• A projected publication date is assigned after an
  application is determined to be ready for
  publication
• Date is the Thursday following expiration of
  18-months after the earliest claimed filing date,
  or
• Date is the Thursday 15-16 weeks after the
  application is found to be ready for publication
• Applications that claim older filing dates or
  which are processed in pre-examination for
  extended periods will be published later than the
  18-month period
• Bottom-line Application publications that may
  have good prior art dates may be published after
  18-months following the critical prior art date

7
What is the content of the publication

• Publication process
• Application is generally published as originally
  filed
• Content based on the application at time of
  release to Technology Center (TC) for examination
  (basically as-filed),
• preliminary amendments are not to be included
• unless applicant submits an EFS copy of the
  application for publication
• corrected drawings submitted after filing may be
  included if submitted under special procedure
• Content of publication of a CPA is based on the
  application as filed prior to any CPA filing,
  unless a proper request for amended publication
  is filed
• Applicant may request redacted publication under
  certain circumstances
• Bottom-line Content may not be an up-to-date
  reflection of the application file wrapper

8
What is the content of the publication

• Patent application publication will be similar to
  a patent in format and content
• front page with title, bibliographic data,
  abstract, drawing figure, and IPC/US
  classifications
• specification (including claims) in a two column
  arrangement
• no Official Gazette for patent application
  publications
• Unlike patents, publications
• include correspondence address of record
• do not include the examiner of record, nor any
  list of prior art cited in the application
• include claims which may not have been examined,
  or determined to be patentable

9
Published applications look a lot like patents.
10
Eighteen-Month Publication - Volumes

• 2001 total publications 56,584
• 2002 Publication volumes
• Date Weekly Cumulative
• 1/04/02 2728 59,312
• 1/10/02 2207 61,519
• 1/17/02 2539 64,058
• 1/24/02 3436 67,494
• 1/31/02 2998 70.492
• 2/07/02 3018 73.510
• 2/14/02 3280 76,790
• 2/28/02 3373 80,163
• 3/07/02 2735 82,898
• 3/14/02 3516 86,414
• 3/21/02 2809 89,223
• Steady state volumes expected 6/02 at roughly
  3,500 per week.
• All publications are electronically available on
  USPTO website at
• http//www.uspto.gov/patft/index.html

11
What other application information is available
after publication

• Access to File History
• Applications are no longer maintained in
  confidence once they are published
• USPTO will not provide direct physical access to
  a pending published application (see 37 CFR
  1.14(c)(2))
• USPTO will provide (for a fee) a copy of the file
  wrapper and content of a published application
• The fee is 200 for the first 400 pages and 40
  for each additional 100 pages
• To obtain a copy of the file, Contact the Office
  of Public Records at https//www3.uspto.gov/oems25
  p/index.html, or [phone]
• To obtain the file in FIU, the application must
  be abandoned.
• To view computer records - See PAIR - next 2
  slides

12
Access to File History
Applications that have been published are only
available in the FIU if they are
abandoned. Otherwise, the public must obtain a
copy through Office of Public Records
13
Access to File History
Hint Before you request a copy of the whole file
wrapper, check the contents of the application
in PAIR to see if there are papers other than the
application as originally filed.
14
What other application information is available
after publication

• Third party submission after publication
• 35 U.S.C. 122(c) provides for procedures to
  ensure that there is no protest or pre-issuance
  opposition to a published application (without
  express consent of applicant)
• Third party submission after publication
• 37 CFR 1.99 permits submission of patents and
  printed publications by third parties
• 37 CFR 1.99 does not permit any activity that
  amounts to a protest or opposition by the third
  party

15
Where can I search for free
Patent application publications can be searched
in a number of ways Inventor, class,
class/subclass, assignee info etc.
See http//www.uspto.gov/patft/index.html
16
What are the prior art affects of the new
publications new affect of WIPO publications
(without S. 320, pending technical correction
bill)

• Categories of Prior art under 35 U.S.C. 102(e)
  and 374, after AIPA
• U.S. Publications of nonprovisional ( 111(a))
  applications (including voluntary publications)
  under 102(e)(1)
• U.S. Publications of the National Stage ( 371)
  of International Applications (including
  voluntary publications) under 102(e)(1)
• World Intellectual Property Organization (WIPO)
  Publications of International Applications (IAs)
  under 374 and 102(e)(1) and
• U.S. Patents granted under 102(e)(2).

17
What applications are subject to the new prior
art under post-AIPA 102(e)

• The following applications and reexaminations are
  subject to prior art under post-AIPA 102(e)
• utility, design and plant patent applications
  under 35 U.S.C. 111(a), filed on or
  after November 29, 2000 or voluntarily published
  pursuant to 35 U.S.C. 122(b), including
• first filed applications
• continuing applications under 37 CFR 1.53(b)
• continued prosecution applications (CPAs) under
  37 CFR 1.53(d)
• reissues
• National Stage of International Applications,
  complying with 35 U.S.C. 371(c), that have
  international filing dates on or after November
  29, 2000 or were voluntarily published pursuant
  to 35 U.S.C. 122(b)
• reexaminations of patents issued from the
  above-mentioned applications

18
What applications are subject to the prior art
under pre-AIPA 102(e)

• The following applications and reexaminations are
  subject to prior art under pre-AIPA 102(e)
• utility, design and plant patent applications
  under 35 U.S.C. 111(a), filed before November
  29, 2000 not voluntarily published pursuant to 35
  U.S.C. 122(b) including
• first filed applications
• continuing applications under 37 CFR 1.53(b)
• continued prosecution applications (CPAs) under
  37 CFR 1.53(d)
• reissues
• National Stage of International Applications,
  complying with 35 U.S.C. 371(c), that have
  international filing dates before November 29,
  2000 not voluntarily published pursuant to 35
  U.S.C. 122(b)
• All reexamination of patents mentioned above
• Note The filing of a Request for Continued
  Examination (RCE) under 37 CFR 1.114 on or after
  November 29, 2000 does not subject the
  application to post-AIPA 102(e) unless it has
  been voluntarily published.

19
Time period for copying published claims

• 35 U.S.C. 135(b)
• 35 U.S.C. 135(b)(2) bars a claim not made
  within one year of the date an application is
  published containing the same (substantially
  same) claim
• only if application filed after date of
  publication
• 35 U.S.C. 374 equates IB publication under the
  PCT with publication under 35 U.S.C. 122(b),
  with conditions for
• 35 U.S.C. 102(e) (English language)
• 35 U.S.C. 154(d) (English translation)
• 35 U.S.C. 374 contains no in English or
  national stage entry condition for 35 U.S.C.
  135(b)

20
Post AIPA Ex. A1 PUBLICATION DERIVED FROM AN
APPLICATION FILED UNDER 111(a) WITH NO 119(e)
or 120 PRIORITY/BENEFIT CLAIMS
05 July 2001
11/29/00
08 Oct 1997
111 (a) application filed with no claims for
benefit/priority before effective date
Publication P of 111(a) application under
122(b)
Note CPA filed after 29 Nov 2000 caused the
application to be published Note for the
following slides Text in italics is subject to
change if technical corrections bill (S. 320) is
enacted.

21
Post AIPA Ex. A1 - PUBLICATION DERIVED FROM AN
APPLICATION FILED UNDER 111(a) WITH NO 119(e)
or 120 PRIORITY/BENEFIT CLAIMS (cont)
Sample Application Publication

• This publication is available as prior art
  against
• any application filed after 29 Nov 2000 or
• any application voluntarily published that has an
  effective U.S filing date after 08 Oct 1997.

22
Post AIPA Ex. A2 - PUBLICATION DERIVED FROM AN
APPLICATION FILED UNDER 111(a) WITH 119(e)
PRIORITY CLAIM TO A PROVISIONAL APPLICATION
19 Apr 2000
28 Mar 2002
18 Apr 2001
11/29/00
111(a) application filed claiming the benefit
of the prior application under 119(e)
111(b) application filed before effective date
Publication P of the 111(a) application under
122(b)

23
Post AIPA Ex. A2 - PUBLICATION DERIVED FROM AN
APPLICATION FILED UNDER 111(a) WITH 119(e)
PRIORITY CLAIM TO A PROVISIONAL APPLICATION
(cont)
Sample Application Publication
1st 111(a) application filed claiming benefit
under 119(e)
1st 111(b) application filed
24
Post AIPA Ex. A3 - PUBLICATION DERIVED FROM AN
APPLICATION FILED UNDER 111(a) WITH 120
PRIORITY CLAIM TO A NONPROVISIONAL APPLICATION
27 Oct 1998
29 Nov 2000
11 Oct 2001
1st 111(a) application filed before effective
date
Publication P of the 2nd 111(a) application
under 122(b)
2nd 111(a) application filed claiming the
benefit of the prior application under 120

25
Post AIPA Ex. A3 - PUBLICATION DERIVED FROM AN
APPLICATION FILED UNDER 111(a) WITH 120
PRIORITY CLAIM TO A NONPROVISIONAL APPLICATION
(cont)
Sample Application Publication
2nd 111(a) application filed claiming benefit
under 120
1st 111(a) application filed
26
Post AIPA Ex. A4 PUBLICATION OF 111(a)
APPLICATION WITH 119(e) 120 PRIORITY CLAIMS
29 Oct 1999
25 Oct 2000
21 May 2001
14 Mar 2002
11/29/00
2nd 111(a) application filed under 37 CFR
1.53(b) or (d), claiming benefit to prior
application under 120 and 119(e)
Publication of the 2nd 111(a) application under
122(b)
1st 111(a) application filed claiming the
benefit of the prior application under 119(e)
111(b) application filed before effective date

27
Post AIPA Ex. A4 PUBLICATION OF 111(a)
APPLICATION WITH 119(e) 120 PRIORITY
CLAIMS (cont)
Sample Application Publication
Filing date of 1st 111(a) application claiming
priority 119(e)
Filing date of 2nd 111(a) application
Filing date of 111(b) application

• Publication earliest 102(e)(1) date 29 Oct
  1999
• This publication is available as prior art
  against
• any application filed on or after 29 Nov 2000 or
• any application voluntarily published that has an
  effective U.S filing date after 29 Oct 1999.

28
Post AIPA Ex. A5 PUBLICATION OF 111(a)
APPLICATION WITH 120 PRIORITY CLAIM and
119(a)-(d) BENEFIT CLAIM TO A FOREIGN APPLICATION.
21 Jun 1999
16 Aug 2001
14 Mar 2002
27 Feb 1997
11/29/00
2nd 111(a) application filed under 37 CFR
1.53(b) or (d) with 120 priority claim
1st 111(a) application filed claiming
119(a)-(d) benefit to Japanese application
A Japanese application filed before 11/29/00 in
Japan.
Publication P of the 2nd 111(a)
application under 122(b)
29
Post AIPA Ex. A5 PUBLICATION OF 111(a)
APPLICATION WITH 119(a)-(d) 120 PRIORITY
CLAIMS (cont)
Sample Application Publication
Filing date of 1st 111(a) application claiming
priority 119(a)-(d)
Filing date of 2nd 111(a) application
Filing date of 1st foreign application
30
Ex. A6 Reference is a PUBLICATION OF NATIONAL
STAGE APPLICATION AFTER PUBLICATION OF IA BY WIPO
IN ENGLISH
01 Jan 2001
01 July 2003
01 Aug 2003
01 July 2002
11/29/00
IA filed in Sweden, desig. the US
Publication P of NS under 122(b)
National Stage (NS) fulfilling 371(c)(1), (2),
and (4)
Publication of IA in English under 21(2)(a) by
WIPO
102(e)(1) date of publication P 01 Jan
2001 102(e)(1) date of IA publication 01 Jan
2001 These publications are available as
prior art against (a) any application has an
effective U.S filing date after 01 Jan 2001
31
Ex. A7 Reference is PUBLICATION OF NATIONAL
STAGE APPLICATION AFTER PUBLICATION OF IA BY WIPO
IN A LANGUAGE OTHER THAN ENGLISH
Best prior art date for the disclosure ( 102(a)
or (b))
01 Jan 2001
01 July 2003
01 Aug 2003
01 July 2002
11/29/00
IA filed in Germany, desig. the US
Publication P of NS under 122(b)
National Stage (NS) fulfilling 371(c)(1), (2),
and (4)
Publication of IA in German under PCT 21(2)(a) by
WIPO
102(e)(1) date of publication P none
102(e)(1) date of WIPO publication of PCT
none because the PCT was not published in
English. Note Both publications are available
as prior art under 102(a) or (b) as of their
publication dates.
32
Ex. A8 PUBLICATION OF 111(a) APPLICATION WHICH
IS A CONTINUATION OF AN IA AFTER PUBLICATION OF
IA BY WIPO IN ENGLISH AND CLAIMS PRIORITY TO U.S.
PROVISIONAL APPLICATION
24 May 1999
19 Oct 2001
07 Mar 2002
26 Oct 2000
14 Apr 2000
11/29/00
111(b) application filed before effective date
IA filed in the EPO, desig. the US, claiming
benefit to 111(b) application
Publication P of 111(a) application under
122(b)
111(a) application filed claiming benefit of
the IA application under 35 U.S.C. 365(c)
Publication of IA in English under 21(2)(a) by
WIPO
If S. 320 is enacted, 102(e)(1) date will be
19 Oct 2001
33
Post AIPA Ex. A8 - PUBLICATION OF 111(a)
APPLICATION WHICH IS A CONTINUATION OF AN IA
AFTER PUBLICATION OF IA BY WIPO IN ENGLISH AND
CLAIMS PRIORITY TO U.S. PROVISIONAL APPLICATION
(cont)
Sample Application Publication
111(a) application filed claiming benefit of IA
application under 35 USC 365(c)
IA filed in EPO designating US, claims benefit to
prior provisional application
Filing date of 111(b) application
Foreign application filed
34
Ex. A9 Reference is a PUBLICATION OF 111(a)
APPLICATION WHICH IS A CONTINUATION OF AN IA
AFTER PUBLICATION OF IA BY WIPO IN A LANGUAGE
OTHER THAN ENGLISH
Best prior art date for the disclosure ( 102(a)
or (b))
13 Sept 2001
09 Nov 2000
30 Apr 1999
28 Mar 2002
11/29/00
IA filed in Japan, desig. the US
Publication P of 111(a) application under
122(b)
111(a) application filed claiming benefit of
the IA application under 35 U.S.C.
365(c)
Publication of IA in Japanese under PCT 21(2)(a)
by WIPO
35
Ex. A9 PUBLICATION OF 111(a) APPLICATION WHICH
IS A CONTINUATION OF AN IA AFTER PUBLICATION OF
IA BY WIPO IN A LANGUAGE OTHER THAN ENGLISH
(cont)
Sample Application Publication
Filing date of 111(a) application
IA filed in JPO designating US
Note The best prior art date for the disclosure
is 09 Nov 2000 (the publication date of IA in
Japanese) under 102(a) or (b).
36
Determining Prior art Date of References subject
to Post-AIPA 102(e) of -- U.S Patents

• Prior art dates under and post-AIPA 102(e)(2)
  are the same as pre-AIPA 102(e), except
  when a patent is issued from the National Stage
  ( 371) of an International Application (IA) or
  there is a National Stage ( 371) of an
  International Application in its continuity
  chain.
• Post-AIPA 102(e)(2) no longer recognizes the
  fulfillment of the requirements of 35 U.S.C.
  371(c)(1),(2) and (4) for prior art purposes

37
Determining Prior art Date of Referencessubject
to Post-AIPA 102(e) of -- U.S Patents

• Post-AIPA 102(e)(2)
• 1. A U.S. patent issuing from a nonprovisional
  application, filed under 35 U.S.C. 111(a), is
  prior art under post-AIPA 102(e)(2) as of its
  effective filing date
• the same prior art effect as under pre-AIPA
  102(e) except when there is the National Stage of
  an International Application in its continuity
  chain
• 2. A U.S. patent issuing from the National Stage
  of an International Application ( 371) applied
  as prior art under post-AIPA 102(e)(2) is
  excluded has no post-AIPA 102(e)(2) prior art
  date at all

38
Ex. P(1) Reference is a PATENT DERIVED FROM THE
NATIONAL STAGE OF AN INTERNATIONAL APPLICATION
01 Jun 2000
01 Nov 2000
01 Jan 1998
01 July 1999

11/29/00
Patent granted on 371 application
371 (c)(1), (2) and (4) fulfillment
IA filed, US designated
IA publication by WIPO

• Post-AIPA 102(e)(2) date of the patent NONE
• This patent is not available as prior art under
  post-AIPA 102(e)(2) against
• any application filed on or after 29 Nov 2000 or
• any application which has been voluntarily
  published.
• The patent is usable under 102(a) or (b) with a
  prior art date of 01 Nov 2000 for the above
  mentioned applications.
• For applications filed prior to 29 Nov 2000 and
  not voluntarily published, the patent has an
  102(e) date of 01 Jun 2000, the date of
  compliance with 371(c)(1), (2) and
  (4).
• If S. 320 is enacted, the 102(e)(2) date will be
  01 Jun 2000 for all applications because the IA
  was filed prior to 29 Nov 2000.

39
35 U.S.C. 102(e) as proposed by S. 320
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 if and only if the international
application designated the United States and was
published under Article 21(2) of such treaty in
the English language or Note The
exception clause applies to the use of (1)
application publications, and (2) patents, as
prior art. See slides 42, and 47-49.
40
Categories of Prior Art under S. 320s version of
35 U.S.C. 102(e)

• U.S. Publications of nonprovisional applications
  per 102(e)(1)
• New documents that did not exist prior to
  11/29/00
• U.S. Publications of the National Stage ( 371)
  of International
• Applications (IAs) per 102(e)(1)
• New documents that did not exist prior to
  11/29/00
• World Intellectual Property Organization (WIPO)
  Publications of IAs per 374 and 102(e)(1)
• Existing documents prior to 11/29/00, but for IAs
  filed prior to 11/29/00 the publications were not
  covered by 102(e) and
• All U.S. Patents per 102(e)(2).
• Existing documents covered by 102(e) prior to
  11/29/00, but under current 102(e)(2) the prior
  art date accorded to the reference may be
  different. Patents matured from IAs, which were
  filed after 11/29/00, will have different prior
  art dates.
• includes voluntary publications

41
Changes to the Effective Date Provision ( 4508
of the AIPA) of 35 USC 102(e) ( 4505 of the
AIPA)
EFFECTIVE DATE. Except as otherwise provided
in this section, the amendments made by section
4505 shall be effective as of November 29, 2000
and shall apply to all patents and all
applications for patents pending on or filed
after November 29, 2000. Patents resulting from
an international application filed before
November 29, 2000 and applications published
pursuant to section 122(b) or Article 21(2) of
the treaty defined in section 351(a) resulting
from an international application filed before
November 29, 2000 shall not be effective as
prior art as of the filing date of the
international application however, such patents
shall be effective as prior art in accordance
with section 102(e) in effect on November 28,
2000. Notes First sentence provides for
uniform application of section 102(e)(1) and (2)
when examining applications or evaluating the
validity of patents regardless of filing date.
Second sentence provides that references may not
be applied as of an International filing date
that is prior to 11/29/00, nor may IAs with a
filing date prior to 11/29/00 be used as a bridge
to an earlier U.S. filing date for prior art
purposes.
42
Applying S. 320s version of 35 USC 102(e)

• The first sentence of 4508 provides that the
  following cases would be subject to the change
• All patents whenever granted, and all patent
  applications whenever filed, would be subject to
  rejections based on the revised prior art
  treatment under S. 320s version 102(e) and
  not the version of 102(e) prior to
  the AIPA.
• The prior art date of the reference publications
  and patents can be
• the actual filing date of the application
  (including certain international filing dates)
• an earlier U.S. filing date claimed by the
  applicant
• certain international filing dates claimed by the
  applicant or
• the 35 U.S.C. 371(c)(1), (2) and (4) date for
  patents derived from an IA filed before 11/29/00
  (per second sentence of 4508)
• Note WIPO publications of IAs filed before
  11/29/00 would have no prior art effect under
  102(e)
• the relied upon application must provide
  adequate support for the relied upon subject
  matter in order for the earlier date to be used

43
Applying S. 320s version of 35 USC 102(e)

• When may an international filing date be
  applied as a prior art date
• The second sentence of 4508 provides that an
  international filing date is considered a US
  filing date for purposes of offensive prior art
  use under S. 320s version 102(e) if the IA
• 1) has an international filing date on or
  after 11/29/00,
• 2) was published under PCT Article 21(2) in
  English, and
• 3) designated the United States
• Note The same IAs may serve as a bridge to use
  an earlier relied upon U.S. filing date as a
  prior art date under 102(e).

44
Applying S. 320s version of 35 USC 102(e)

• When may an international filing date be
  applied as a prior art date (contd)
• An international filing date prior to 11/29/00
  may not be applied as a prior art date, nor may
  it serve as an intermediate filing to provide for
  use of an earlier filed US applications filing
  date as a prior art date.
• For any IAs filed before 11/29/00, patents
  derived from national stage applications, or from
  applications that claim benefit to the IA, may be
  applied as prior art as of the 35 U.S.C.
  371(c)(1), (2), and (4) date, if any, or a US
  filing date after the international filing date.
• For any IAs filed before 11/29/00, publications
  by WIPO and by the US (voluntary published) may
  not be applied as of either the international
  filing date or the 35 U.S.C.
  371(c)(1)(2) and (4) date. These publications
  may only be applied as of their publication
  dates.
• Note An IA with a filing date prior to 11/29/00
  many not serve as a bridge to any earlier filed
  US application for purposes of 102(e).

45
PUBLICATION of 111(a) APPLICATION with NO
PRIORITY/BENEFIT CLAIMS
01 July 2002
11/29/00
01 Jan 2001
111 (a) application filed with no claims for
benefit/priority
Publication P of 111(a) application under
122(b)

• 1. 102(e)(1) date of Publication P 01 Jan
  2001
• 102(e)(2) date of a Patent issuing from the
  111(a) application 01 Jan 2001

46
PUBLICATION and PATENTS of 111(a) APPLICATION
with 119(e) and 120 PRIORITY CLAIMS
31 Dec 1999
01 Jan 1999
01 Jul 2003
01 Aug 2003
11/29/00
2nd 111(a) application filed under 37 CFR
1.53(b) or (d), claiming benefit to prior
applications under 120 and 119(e)
1st 111(a) application filed claiming the
benefit of the prior application under 119(e)
111(b) application filed before effective
date
Publication P of the 2nd 111(a)
application under 122(b)

• 102(e)(1) date of Publication P 01 Jan 1999
• 102(e)(2) date of any Patent issuing from
  either the first or second 111(a) application
  01 Jan 1999

47
PUBLICATIONS and PATENT derived from an IA WHICH
CLAIMS BENEFIT TO A U.S. APPLICATION
01 Nov 2003
01 Nov 1999
30 Oct 2000
01 May 2001
01 Apr 2002
01 June 2002
11/29/00
IA publication by the WIPO in English
Publication of national stage application in US
per 122(b)
111(b) application filed
Patent granted on 371 application
371(c)(1)(2) and (4) date of National Stage
IA filed, with priority claim to prior US appl.,
designated US

Critical factors The WIPO publication of the IA
was in English but the filing date of the IA was
prior to 11/29/00. Thus, The 102(e)(1) date of
the WIPO Publication is NONE The 102(e)(1)
date of the US 122(b) Publication of the
national stage application is NONE, The
102(e)(2) date for the Patent is 01 April 2002,
which is the 371(c)(1), (2), and (4) date.
48
PUBLICATIONS and PATENT derived from the NATIONAL
STAGE of an IA WHICH CLAIMS BENEFIT to a U.S.
APPLICATION
01 Nov 2003
01 Apr 2002
01 Dec 1999
30 Nov 2000
01 June 2001
11/29/00
IA Publication by the WIPO in English
Publication of national stage application in US
per 122(b)
111(b) application filed
Patent granted on 371 application
IA filed, with priority claim to prior US appl.,
designated US

Critical factors The WIPO Publication of the IA
was in English and the filing date of the IA was
after 11/29/00. Thus, The 102(e)(1) date of
the WIPO Publication is 01 Dec. 1999 The
102(e)(1) date of the US 122(b) Publication of
the national stage application is 01 Dec.
1999, The 102(e)(2) date of the Patent is 01
Dec. 1999.
49
PUBLICATIONS and PATENT derived from the NATIONAL
STAGE of an IA WHICH CLAIMS BENEFIT to a U.S.
APPLICATION
01 Nov 2003
01 Apr 2002
01 Dec 1999
30 Nov 2000
01 June 2001
11/29/00
IA Publication by the WIPO not in English
Publication of national stage application in US
per 122(b)
111(b) application filed, all inventors are
Japanese
Patent granted on 371 application
IA filed in RO/JP, with priority claim to prior
US appl., designated US

Critical factors The WIPO Publication of the IA
was NOT in English and the IA was filed on or
after 11/29/00. Thus, There would be no
102(e)(1) date for the WIPO Publication, There
would be no 102(e)(1) date for the US 122(b)
Publication of the national stage application,
and There would be no 102(e)(2) date for the
Patent. Note As the IA was filed after 11/29/00,
only 102(e)(2) applies.
50
Treatment of the Implementation Issues of AIPAs
Version of 102(e) as Proposed by S. 320

• The same prior art date would be given to a
  disclosure regardless of whether publication is
  in the form of a U.S. patent, U.S. patent
  application publication or WIPO publication
• exception IA filing date prior to 11/29/00
• The same prior art date would be used for a
  reference regardless of when the application
  under examination, or patent whose validity was
  questioned, was filed
• References may not have an IA filing date as a
  102(e) where the IA was filed before
  11/29/00
• In addition, IA filing dates prior to 11/29/00
  may not serve as a bridge to an earlier U.S.
  filing date under 102(e)

51
Treatment of the Implementation Issues of AIPAs
Version of 102(e) as Proposed by S. 320 (contd)

• WIPO publications may be used as prior art
  immediately because U.S. national stage entry is
  not required
• allows for earlier (less costly) application of
  the prior art,
• increases the certainty of patentability,
• may reduce pendency and
• applicants can choose between national stage
  entry and continuation filing in the US without
  regard to creating differential prior art
  treatment of the WIPO publication
• A request from applicant for early publication by
  WIPO (PCT Article 21(2)) would not negate
  102(e) prior art effect of the publication (if
  any)
• Note IA must have been filed on or after
  11/29/00 and the WIPO publication must be in
  English.

52
For Further Information -

• The American Inventors Protection Act of 1999 in
  general - www.uspto.gov click on patents, click
  on American Inventors Protection Act
• Electronic Filing System (EFS) and Patent
  Application Information Retrieval (PAIR) - PEBC
  helpdesk [phone] (open 24 hours a day / 7
  days a week) www.uspto.gov click on Patents
  Electronic Business Center
• Eighteen-Month Publication - Final Rule 65
  Fed. Reg. 57023
• (Sept. 20, 2000), 1239 Off. Gaz. Pat.
  Office 63 (Oct. 10, 2000)
• Questions on rule package
• Call OPLA [phone], or e-mail
  PatentPractice_at_uspto.gov

53
Thank You!
Glossary
111(a) application nonprovisional application
filed under 35 U.S.C. 111(a) 111(b)
application provisional application filed under
35 U.S.C. 111(b) 11/29/00 effective date of
AIPA amendments to 102(e) and 374 IA
International Application WIPO World
Intellectual Property Organization