35 U.S.C.

1
35 U.S.C. 102(e) The Legislative Fix (S.320)
and Serial Abandonment of Provisional
Applications
Stephen G. Kunin Deputy Commissioner for Patent
Examination Policy USPTO
January 27, 2002
2
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 6, and 10-12
3
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 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, this includes patents matured from
  International Applications and reexamination
  certificates.
• includes voluntary publications

4
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
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.
5
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

6
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).

7
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 prior to 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 prior to 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).

8
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
• Explanations for this slide and following slides
• 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
• Support for relied upon subject matter is
  present in first filing

9
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

10
PUBLICATIONS and PATENT derived from an IA WHICH
CLAIMS BENEFIT TO A U.S. APPLICATION
01 Nov 2003
01 March 2002
01 Nov 1999
30 Oct 2000
01 May 2001
01 Apr 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.
11
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.
12
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.
13
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 a 102(e) date based on
  any IA filing dates 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)

14
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.

15
Serial Abandonment of Provisional Applications

• 35 USC 119 (c) provides
• In like manner and subject to the same conditions
  and requirements, the right provided in this
  section may be based upon a subsequent regularly
  filed application in the same foreign country
  instead of the first filed foreign application,
  provided that any foreign application filed prior
  to such subsequent application has been
  withdrawn, abandoned, or otherwise disposed of,
  without having been laid open to public
  inspection and without leaving any rights
  outstanding, and has not served, nor thereafter
  shall serve, as a basis for claiming a right of
  priority.
• Note As claims made under 35 U.S.C. 119(e)
  are to domestic applications, 35 U.S.C. 119(c)
  does not apply

16
Serial Abandonment of Provisional Applications

• 35 U.S.C. 119 (e)(1) provides in part
• An application for patent filed under section
  111(a) or section 363 of this title for an
  invention disclosed in the manner provided by the
  first paragraph of section 112 of this title in a
  provisional application filed under section
  111(b) of this title, by an inventor or inventors
  named in the provisional application, shall have
  the same effect, as to such invention, as though
  filed on the date of the provisional application
  filed under section111(b) of this title, if the
  application for patent filed under section 111(a)
  or section 363 of this title is filed not later
  than12 months after the date on which the
  provisional application was filed and if it
  contains or is amended to contain a specific
  reference to the provisional application. . .
• Thus, a U.S. nonprovisional applications benefit
  claim under 35 U.S.C. 119(e) to a prior
  provisional is unaffected by 35 U.S.C. 119(c)
• In other countries, Paris Convention Article
  4(C)(4) may affect a claim to a subsequent U.S.
  provisional application

17
Serial Abandonment of Provisional Applications

• The Paris Convention provides in Article 4(C)(4)
• A subsequent application concerning the same
  subject as a previous first application within
  the meaning of paragraph (2), above, filed in the
  same country of the Union, shall be considered as
  the first application, of which the filing date
  shall be the starting point of the period of
  priority, if, at the time of filing the
  subsequent application, the said previous
  application has been withdrawn, abandoned, or
  refused, without having been laid open to public
  inspection and without leaving any rights
  outstanding, and if it has not yet served as a
  basis for claiming a right of priority. The
  previous application may not thereafter serve as
  a basis for claiming a right of priority.
  (emphasis added)

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• The Drafting Committee provided a report to the
  Commission in support of the Lisbon revision of
  the Paris Convention (which adopted the current
  language in Article 4(C)(4)) which provided, in
  part, the following
• The change (Article 4(C)(4)) appears acceptable
  only if subject to two conditions
• Its application must be limited to only those
  cases where an inventor, being mistaken initially
  in regard to the scope or definition of his
  invention, later revises and replaces his or her
  original application with another.
• Measures must be provided to eliminate any
  possibility of multiple priority rights.
• To implement these conditions, At the time the
  second application is filed, the first
  application
• Shall have been withdrawn, abandoned, or denied,
• Shall not have been published
• Shall allow no subsisting rights,
• See, Minutes of the Plenary Meeting (Second
  Meeting) for the 1958 Lisbon Revision of the
  Paris Convention.

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Serial Abandonment of Provisional Applications

• Example
• Provisional 1 filed on 1/1/01
• Provisional 2 filed on 7/1/01
• U.S. nonprovisional and foreign filings on 7/1/02
• 35 U.S.C. 119 (e) allows a U.S. nonprovisional
  application to be accorded priority rights from a
  subsequent U.S. provisional application even
  though a first U.S. provisional application was
  filed more than 12 months prior to the U.S.
  nonprovisional application,
• Consider how a foreign office may apply Paris
  Convention Art. 4(C)(4) if you file abroad more
  than 12 months after the first U.S. provisional
  application. Particularly be mindful of the
  without leaving any rights outstanding clause,
  and how it may be interpreted by a foreign
  office.

20
U.S. Patent Term and Serial Filing of Provisional
Applications

• Example 1
• A first U.S. provisional application is filed
  6/1/00 supporting embodiment A
• A second U.S. provisional application is filed
  5/1/01 supporting embodiments A and B
• A foreign counterpart application claiming
  embodiments A and B is filed 6/1/01
• The foreign counterpart application is published
  12/1/01
• A third U.S. provisional application is filed
  12/3/01 supporting embodiments A, B, and C.
• Client instructs practitioner to file a single
  U.S. nonprovisional including a genus claim
  covering A, B, and C and to maximize U.S. patent
  term
• When should the nonprovisional be filed?
• By 12/2/02 (a Monday) or 12/3/02
• By 12/2/03 (claiming benefit to a fourth
  provisional application which will be filed on
  12/2/02)
• Hint Read 102(b), 119(e) and Ex parte Olah
  Assume No intervening prior art of another

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Timeline for Example 1
02 Dec. 02, 03 Dec. 02, or 02 Dec. 03 ?
01 June 00
01 May 01
01 June 01
03 Dec 01
01 Dec.01
Foreign application filed claiming A and B
Publication of foreign application
1st 111(b) application filed, disclosing A
When should Non-provisional application claiming
A, B and C be filed?
2nd 111(b) application filed disclosing A and B
3rd 111(b) application filed disclosing A, B
and C

22
U.S. Patent Term and Serial Filing of Provisional
Applications

• Example 2
• A first U.S. provisional application is filed
  6/1/00 supporting embodiment A
• A second U.S. provisional application is filed
  5/1/01 supporting embodiments A and B
• A foreign counterpart application claiming
  embodiments A and B is filed 6/1/01
• Client provides practitioner with a disclosure
  supporting embodiments A, B, and C with
  instructions to file a single U.S. nonprovisional
  application including a genus claim covering A,
  B, and C as well as separate claims covering each
  embodiment. Client also provides instruction to
  maximize patent term. Client further instructs
  practitioner that there is a 100 assurance that
  the only patent defeating prior art is the
  upcoming foreign publication of the counterpart
  application on 12/1/01 and that efforts to
  maximize U.S. patent term should be based on this
  assuran.
• When should the U.S. provisional and
  nonprovisional applications disclosing A, B, and
  C be filed?
• The nonprovisional by 12/2/02 (a Monday) or
  12/1/03 (claiming benefit of the third
  provisional application filed on 12/2/02)
• Hint Read 102(b) and 119(e)

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Timeline for Example 2
01 June 00
01 May 01
01 June 01
01 Dec.01
02 Dec. 02, or 01 Dec. 03 ?
Foreign application filed claiming A and B
Publication of foreign application
1st 111(b) application filed, disclosing A
When should the non-provisional application
claiming A, B and C be filed?
2nd 111(b) application filed disclosing A and B

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• Thank You