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2126 Availability of a Document as a "Patent" for Purposes of Rejection Under - 2100 Patentability
2126 Availability of a Document as a "Patent" for Purposes of Rejection Under 35 U.S.C. 102(a), (b), and (d) [R-5]
THE NAME "PATENT" ALONE DOES NOT MAKE A DOCUMENT AVAILABLE AS A PRIOR ART PATENT UNDER 35 U.S.C. 102(a) OR (b)
What a foreign country designates to be a patent may not be a patent for purposes of rejection under 35 U.S.C. 102(a) and (b); it is the substance of the rights conferred and the way information within the "patent" is controlled that is determinative. In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958). See the next paragraph for further explanation with respect to when a document can be applied in a rejection as a "patent." See MPEP § 2135.01 for a further discussion of the use of "patents" in 35 U.S.C. 102(d) rejections.
A SECRET PATENT IS NOT AVAILABLE AS A REFERENCE UNDER 35 U.S.C. 102(a) or (b) UNTIL IT IS AVAILABLE TO THE PUBLIC BUT IT MAY BE AVAILABLE UNDER 35 U.S.C. 102(d) AS OF GRANT DATE
Secret patents are defined as patents which are insufficiently accessible to the public to constitute "printed publications." Decisions on the issue of what is sufficiently accessible to be a "printed publication" are located in MPEP § 2128 - § 2128.01.
Even if a patent grants an exclusionary right (is enforceable), it is not available as prior art under 35 U.S.C. 102(a) or (b) if it is secret or private. In re Carlson, 983 F.2d 1032, 1037, 25 USPQ2d 1207, 1211 (Fed. Cir. 1992). The document must be at least minimally available to the public to constitute prior art. The patent is sufficiently available to the public for the purposes of 35 U.S.C. 102(a) or (b) if it is laid open for public inspection or disseminated in printed form. See, e.g., In re Carlson, *>983< F.2d at 1037, 25 USPQ2d at 1211 ("We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art."). The date that the patent is made available to the public is the date it is available as a 35 U.S.C. 102(a) or (b) reference. In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958). But a period of secrecy after granting the patent has been held to have no effect in connection with 35 U.S.C. 102(d). These patents are usable in rejections under 35 U.S.C. 102(d) as of the date patent rights are granted. In re Kathawala, 9 F.3d 942, 28 USPQ2d 1789 (Fed. Cir. 1993). See MPEP § 2135 - § 2135.01 for more information on 35 U.S.C. 102(d).
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