35 USC § 102(e)

(Updated on 12/16/02; last reviewed on 7/18/02)

D1. Deleted on 11/6/02, renumbered D13.

D2. What is the full title of the act that recently revised 35 U.S.C. 102(e) and 374, and where can I locate a copy of it? (Posted 12/13/02)

The Intellectual Property and High Technology Technical Amendments Act of 2002 (Technical Amendments Act), which contains the revisions to 35 U.S.C. 102(e) and 374, is part of the Public Law 107-273 entitled "21st Century Department of Justice Appropriations Authorization Act." The revisions to 35 U.S.C. 102(e) and 374, and the effective date provisions, are in section 13205. The text of the Act can be located at the Library of Congress website at http://thomas.loc.gov/home/thomas.html or the Government Printing Office's website at http://www.access.gpo.gov/nara/publaw/107publ.html.

D3. I have a patent application that was filed prior to November 29, 2000 (or claims benefit or priority to an application filed prior to November 29, 2000). Does the revised 35 U.S.C. 102(e) apply to this patent application?(Posted 12/13/02)

Yes. 35 U.S.C. 102(e), as amended by the Technical Amendments Act, must be applied to all patent applications no matter when filed. In other words, the revised statute applies to patent applications filed prior to the effective date of November 29, 2000 as well as to patent applications filed on or after November 29, 2000. Additionally, the revised 35 U.S.C. 102(e) applies to all patents under reexamination or other proceedings challenging the patent. One of the reasons for the Technical Amendments Act was to provide for application of the revised statute to all patent applications, regardless of the filing date, and all patents.

D4. What is meant by the "National Stage" of an international application (IA)? (Posted 12/13/02)

An IA has two possible phases of processing: an international phase and a national stage phase. The international phase is when the search report and the preliminary examination report (if applicable) are prepared. A U.S. patent cannot be directly granted from the international phase of an IA, but can be issued directly from the national stage (35 U.S.C. 371) of an IA. The national stage is entered where certain requirements are met before the expiration of certain time limits (see 35 U.S.C. 371 and 37 CFR 1.491). The national stage of an IA is prepared by placing a copy of the IA, and other related papers, inside a regular US application file jacket, whereupon it is assigned a US application number, and processed under the US statutes and regulations applying to national stage applications. See the Manual of Patent Examining Procedure (MPEP) 8th Edition (August 2001), sections 1893 et seq.

D5. Does this change in the law mean that the 35 U.S.C. 371(c)(1), (2) and (4) date is "no longer a US filing date?" (Posted 12/13/02)

The date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled (e.g., the 371(c) date) is not, and never was, a US filing date even prior to the AIPA revision to 35 U.S.C. 102(e). Prior to the amendments to 35 U.S.C. 102(e) by the American Inventors Protections Act of 1999 (AIPA), 35 U.S.C. 102(e) (e.g., pre-AIPA 102(e)) simply equated the 371(c) fulfillment date to a US filing date for prior art purposes. Although the USPTO uses the 371(c) date like a US filing date for processing purposes (and even indicates the 371(c) date as the US filing date on the official filing receipt), legally the 371(c) date was never considered to be a US filing date. The national stage application continues to be considered filed on the international filing date for all purposes except as provided in 37 U.S.C. 102(e). See the Manual of Patent Examining Procedure (MPEP) 8th Edition (August 2001), section 1893.03(b).

D6. Can a reference available as prior art under the amended 35 U.S.C. 102(e) be disqualified under 35 U.S.C. 103(c) if such reference is used in a 103(a) rejection? (Posted 12/13/02)

Yes, the Technical Amendments Act (Pub. L. 107-273) did not amend 35 U.S.C. 103(c).

D7. If a reference became material to the patentability of the claims in view of the amended 35 U.S.C. 102(e), could the applicant make a statement under 37 CFR 1.97(e)(2) when submitting such reference in an IDS under 37 CFR 1.97(c) or (d) even though the reference was known to the applicant more than three months before the enactment of the Technical Amendments Act of 2002 that amended 35 U.S.C. 102(e)? (Posted 12/13/02)

No, 37 CFR 1.97(e)(2) requires no item of information contained in the IDS was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry, no item of information contained in the IDS was known to any individual designated in 37 CFR 1.56(c) more than 3 months prior to the filing of the statement.

D8. If an application has been allowed, but has not yet issued as a patent, and a rejection now can be made using a reference that becomes available as prior art under the amended 35 U.S.C. 102(e), can the examiner withdraw the application from issue? (Posted 12/13/02)

Yes, the examiner may withdraw the application from issue with the approval of the Technology Center Director and in accordance with the procedures set forth in section 1308 of the Manual of Patent Examining Procedure (MPEP) 8th Edition (August 2001).

D9. A 35 U.S.C. 102(e) rejection was made based on a US patent application publication in an application filed before 11/29/00. After the applicant had argued that such reference was not available as a prior art under 35 U.S.C. 102(e) as amended by AIPA (before the enactment of the Technical Amendments Act of 2002 (Pub. L. 107-273), the rejection was withdrawn and the case was allowed and issued as a patent. Could the application publication now be used as the sole basis for a reexamination to establish a substantial new question of patentability? (Posted 12/13/02)

Yes, a reexamination based on a patent or printed publication that was previously considered by the Office is no longer subject to the Portola bar pursuant to 35 U.S.C. 303(a) and 312(a) as amended by the Patent and Trademark Office Authorization Act of 2002 (Pub. L. 107-273).

D10. When did the 35 U.S.C. 102(e) dates stop being printed on patents? (Posted 12/13/02)

The Office stopped printing the 102(e) dates on patents with the issue of May 28, 2002.

D11. Are the 35 U.S.C. 102(e) dates printed on patents issued before May 28, 2002 accurate in view of the amended 35 U.S.C. 102(e)? (Posted 12/13/02)

In most situations, the 35 U.S.C. 102(e) dates printed on patents are accurate (e.g., a patent issued from the national stage of an international application filed before 11/29/00). In a few situations, the printed 35 U.S.C. 102(e) dates may not be accurate because the 35 U.S.C. 102(e) dates printed on patents are based on the entry date of the national stage and not the international filing date (e.g., a patent issued from the national stage of an international application filed on or after 11/29/00). A US patent issued from an international application filed on or after 11/29/00 may have a 35 U.S.C. 102(e) date as of the international filing date or none under the amended 35 U.S.C. 102(e). See Flowchart I [PDF].

D12. Will the 35 U.S.C. 102(e) dates be printed on patents in the future? (Posted 12/13/02)

Currently, theres no such plan.

D13. If an International Application (IA) was published by the World Intellectual Property Organization (WIPO) in a language other than English (i.e., German) and designates the United States, is there any action that can be done (i.e., filing an English translation) to make the published IA eligible to be prior art under amended 35 U.S.C. 102(e)? (Previously D1, amended and posted 12/13/02)

No. 35 U.S.C. 102(e) and 374, as amended by American Inventors Protection Act of 1999 (AIPA) (Pub. L. 106-113) and as further amended by Technical Amendments Act of 2002 (Pub. L. 107-273), is applicable to the WIPO publication of the IA. 35 U.S.C. 102(e), in combination with 35 U.S.C. 374, clearly state that the WIPO publication of an IA only receives a 35 U.S.C. 102(e) prior art date if the IA is published under PCT Article 21(2) in English and designated the United States. Therefore, the IA must have been: 1) filed on or after November 29, 2000, 2) published by the WIPO pursuant to PCT Article 21(2) in English, and 3) designated the United States in order for the WIPO publication to be available as prior art under 35 U.S.C. 102(e). Any filing of an English translation will not be effective in obtaining a 35 U.S.C. 102(e) prior art date for the publication of the IA published by the WIPO in a language other than English.

D14. Can an international application be published multiple times in different languages by the World Intellectual Property Organization (WIPO) under PCT Article 21(2)? (Posted 12/13/02)

No, WIPO only publishes an international application in a single publication language in accordance with PCT Article 21(2). WIPO may republish an international application in the same publication language when there is an error in the original publication from what should have published (e.g., publishes the wrong drawings or leaves out a page of claims, etc.). There currently is no vehicle for republication in a different language.

D15. Is the USPTO publishing the national stage (35 U.S.C. 371) of an international application under the eighteen month publication provisions (35 U.S.C. 122(b))? (Posted 12/13/02)

Yes.

D16. How are the revisions to 35 U.S.C. 102(e) and 374 in the Technical Amendments Act of 2002 (Pub. L. 107-273) different from the revisions to 35 U.S.C. 102(e) and 374 in the American Inventors Protection Act of 1999? (Posted 12/13/02)

The revisions to 35 U.S.C. 102(e) and 374 in Pub. L. 107-273 completely replaced the corresponding AIPA versions and are retroactively effective to the effective date of the AIPA amendments to 35 U.S.C. 102(e) and 374 (November 29, 2000). The following briefly summarizes the major differences:

1. Revised 35 U.S.C. 102(e) (Pub. L. 107-273) generally accords the same prior art date to references of the same application whether it was published as a US patent, a US patent application publication or a WIPO publication. There are limited situations where the US patent may have a different prior art date under 35 U.S.C. 102(e) than the corresponding US patent application publication or a WIPO publication. For example, when the application is based directly on the national stage (35 U.S.C. 371) of an International Application (IA) filed prior to November 29, 2000, however, the US patent has a different 35 U.S.C. 102(e) date for prior art purposes (the 35 U.S.C. 371 date) than the US application publication or the WIPO publication (no 102(e) date). Under the AIPA (prior to the Technical Amendments Act), a US patent application publication of an application could have a much earlier 35 U.S.C. 102(e) date than the corresponding US patent of that same application. This resulted from that fact that the prior art date under 35 U.S.C. 102(e) for US patent application publications could be the international filing dates (even prior to 11/29/00) if certain conditions were met, but US patents could never be prior art under 35 U.S.C. 102(e) as of the international filing date.
2. Revised 35 U.S.C. 102(e) and 374 in Pub. L. 107-273 are applicable to all applications under examination, no matter when filed and all US patents under reexamination or being contested. 35 U.S.C. 102(e) and 374 per the AIPA (prior to the Technical Amendments Act) were only applicable to certain applications, e.g., those filed on or after November 29, 2000 or voluntarily published under 35 U.S.C. 122(b).
3. Revised 35 U.S.C. 102(e) per Pub. L. 107-273 is applicable to all international applications filed on or after 11/29/00 (it does not require national stage entry in the United States). 35 U.S.C. 102(e) per AIPA (prior to Technical Amendments Act) required entry into the national stage in order to be applicable.

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E. 103(c)

E1. Does a Continued Prosecution Application qualify for the new provisions of 35 U.S.C. 103 (c) as specified in Section 4807 of the American Inventors Protection Act?

Yes, see Guidelines Concerning the Implementation of Changes to 35 USC 102(g) and 103(c) and the Interpretation of the Term "Original Application" in the American Inventors Protection Act of 1999, Notice, 1233 OG 54 (April 11, 2000).

E2. Under the amended 35 U.S.C. 103(c), what type of evidence will provide proof that the inventions were commonly owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made?

To disqualify a reference under 35 U.S.C. 103(c), applicant needs to supply evidence that the invention described in the application for patent and the invention described in the "prior art" reference applied against the application were commonly owed by, or subject to an obligation of assignment to, the same person, at the time the invention in the application for patent was made. The time requirement "at the time the invention was made" is required by statute. See 35 U.S.C. 103(c).

Applications and references will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, at the time the invention was made, if the applicant(s) or an attorney or agent of record makes a statement to the effect that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person. Thus, a statement, by itself, will be sufficient evidence. For a more detailed explanation, see the "Guidelines Setting Forth a Modified Policy Concerning the Evidence of Common Ownership, or an Obligation of Assignment to the Same Person, as Required by 35 U.S.C. 103(c)," 1241 OG 96 (Dec. 26, 2000).

E3. What applications qualify for the prior art exclusion of 35 U.S.C. 103(c), as amended by the AIPA, of commonly owned or assigned prior art? (Posted on 12/6/01; updated 8/01/02)

The amendment to 35 U.S.C. 103(c) made by the AIPA is effective for applications filed on or after November 29, 1999. For the National Stage (35 U.S.C. 371) of International Applications, the international filing date must be on or after November 29, 1999 in order for applicant to invoke the exclusion of prior art under 35 U.S.C. 103(c) as amended by the AIPA. The date the applicant fulfilled the requirements of 35 U.S.C. 371(c)(1), (2) and (4) is not relevant in determining whether the application is entitled to the prior art exclusion under 35 U.S.C. 103(c) as amended by the AIPA. If a continuing application is filed after November 29, 1999, and claims the benefit of the prior international application filed prior to November 29, 1999, such continuing application would be entitled to revised exclusion provided in 35 USC 103(c). See "Guidelines Concerning the Implementation of Changes to 35 USC 102(g) and 103(c) and the Interpretation of the Term "Original Application" in the American Inventors Protection Act of 1999," Notice, 1233 OG 54 (April 11, 2000) and "Guidelines Setting Forth a Modified Policy Concerning the Evidence of Common Ownership, or an Obligation of Assignment to the Same Person, as Required by 35 USC 103(c)," Notice, 1241 OG 96 (Dec. 26, 2000).

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