Richard A. Neifeld1 and Edward P. Heller III2 I. IntroductionThis article is in response to the letter from Mr. Heller to the editor of the JPTOS3 and the articles mentioned therein.4 Mr. Hellers thesis is that the 35 USC 102(e) date of a continuation application claiming priority to an international application is an open legal question. There is no judicial holding on the prior art status of a patent issuing from either an international application or a continuation of an international application. However, the Commissioners opinion expressed in the MPEP5 is that a patent issuing from a continuation application claiming priority to any international application is 35 USC 102(e) prior art as of the international applications filing date. Revision 2 of the sixth edition of the MPEP at § 2136.03 relied upon Ex parte Erlich6 for that policy, but Erlich does not support that proposition, and revision 3 of the sixth edition of the MPEP at § 2136.03 does not cite Erlich for that proposition.
We provide a statutory and case law interpretation to clarify whether a patent issuing from a continuation application of an international application has 35 USC 102(e) effect from the filing date of the international application. In order to discuss the 35 USC 102(e) effective date of a patent issuing from a continuation of an international application, it is necessary to clarify the 35 USC 102(e) effect of an international application. The statutes relevant to the 35 USC 102(e) effect of an international application are laid out below. 35 USC 363 states that: Consider 35 USC 363. 35 USC 363 provides an international application the same effect as a national application filed in the United States Patent and Trademark Office (USPTO) except for the effect provided by 35 USC 102(e). The second clause of 35 USC 102(e) relates specifically to international applications and provides those applications with a relatively late 35 USC 102(e) date. The Commissioners opinion that a patent issuing from an international application obtains a relatively late 35 USC 102(e) date appears to rely upon the conclusion that only the second clause of 35 USC 102(e) is effective for an international application. However, for the reasons presented below, the Commissioners conclusion is suspect. The first question to answer in construing the 35 USC 102(e) effect of an international application is: What is the effect of 35 USC 363 on 35 USC 102(e)? The exception in 35 USC 363 means that, for 35 USC 102(e), an international application is not deemed to have the effect of a national application regularly filed in the USPTO from its international filing date. However, 35 USC 363 does not state that the first clause of 35 USC 102(e) is inapplicable to an international application. That is, 35 USC 363 does not state that the first clause of 35 USC 102(e) is ineffective for an international application that satisfies the requirements specified in first clause of 35 USC 102(e). Now consider the two clauses of 35 USC 102(e). The first clause of 35 USC 102(e) antedates the United States accession to the PCT. The first clause of 35 USC 102(e) provides an application with 35 USC 102(e) effect from when the application is filed in the United States. The second clause of 35 USC 102(e) was added to 35 USC 102(e) in response to the United States accession to the PCT. The second clause of 35 USC 102(e) provides an international application with 35 USC 102(e) effect from when the 35 USC 371(c) national stage requirements for the international application are completed. Note that the first clause of 35 USC 102(e) requires an application to be filed in the United States and the second clause of 35 USC 102(e) does not require an application to be filed in the United States. At this point in the analysis, the difference between and probable effects of an international application that is actually filed in the United States (i.e., in the USPTO) and a foreign filed international application (i.e. an international application that is actually filed outside the United States) must be considered. First, consider the effect of 35 USC 102(e) on a foreign filed international application. A foreign filed international application does not satisfy the first clause of 35 USC 102(e) because it is not actually filed in the United States. However a foreign filed international application does satisfy the second clause of 35 USC 102(e) upon completion of its national stage requirements. Now, consider an international application actually filed in the United States. Note that an international application actually filed in the United States literally satisfies the requirements for obtaining a national application filing date.8 The filing date of a national application is the date from which 35 USC 102(e) has been construed by the courts to provide prior art effect. Therefore, an international application actually filed in the United States obtains a 35 USC 102(e) date as of its filing date, if the first clause of 35 USC 102(e) is applicable to it. The next question to answer is: Is the first clause of 35 USC 102(e) applicable to an international application actually filed in the United States? Judicial precedent provides that a patent issuing from an application that carries over9 subject matter disclosed in an earlier application actually filed in the United States meets all of the case law driven policy criteria for obtaining prior art effect from the earlier applications filing date.10 The policy enunciated in those decisions is that information disclosed in the specification of a patent application is prima facie proof that the information was known in the United States on the date that the specification is in the hands of the USPTO. Furthermore, the United States reservation under PCT article 64(4)(a) concerning the prior art effect of pending applications shows a clear intent to discriminate only against applications actually filed outside the United States,11 which means that the United States did not intend to discriminate against any application actually filed in the United States. The United Statess intent to preserve the 35 USC 102(e) effect of any application actually filed in the United States is consistent with the amendment to 35 USC 102(e) in response to the United States accession to the PCT. That is because an international application that is not actually filed in the United States does not satisfy the first clause of 35 USC 102(e) (and therefore must rely upon the date of completion of the national stage requirements specified in the second clause of 35 USC 102(e) to get a 35 USC 102(e) date). However, an international application actually filed in the United States satisfies the first clause of 35 USC 102(e) when it is filed in the USPTO. We speculate that the reason that the second clause of 35 USC 102(e) requires more than the mere filing of the specification in order to obtain a 35 USC 102(e) date12 is because it was drafted to provide the same requirements to obtain a filing date that existed in the version of 35 USC 111 in force when the United States acceded to the PCT.13 Notwithstanding the Commissioners opinions, we believe that it is likely that a court ruling on this issue will opine that a patent issuing from an international application that was actually filed in the United States (i.e., filed in the USPTO) is 35 USC 102(e) prior art from the date that it was actually filed in the USPTO.14 This is because an international application actually filed in the United States, just like a national application filed in the United States, satisfies the first clause of 35 USC 102(e). For the reasons presented above, there is no reason why the first clause of 35 USC 102(e) should not be effective for an international application actually filed in the United States.
Note that 35 USC 102(e), 35 USC 363, and 35 USC 371 contain no explicit provisions relating to a continuation application claiming priority from an international application. A continuation of an international application is not an international application. It is a 35 USC 111(a) application. How then, does a patent issued from a 35 USC 111(a) application which is a continuation of an international application become a 35 USC 102(e) reference? The answer to this question may depend upon whether the international application was actually filed in the United States. The preceding section showed that an international application actually filed in the United States is likely to provide 35 USC 102(e) effect from its filing date. It follows that the 35 USC 102(e) date of a patent issuing from a continuation of an international application actually filed in the United States is the filing date of that international application. Therefore, the analysis with respect to continuation applications in the rest of this section is limited to continuations of foreign filed international applications. There are two possible statutory routes to consider in construing the 35 USC 102(e) date of a patent issuing from a continuation of a foreign filed international application. The first route is based upon the effect of 35 USC 363 on the 35 USC 102(e) date of the foreign filed international application. That is, the first route is based upon the effect of any 35 USC 102(e) date that is available to a foreign filed international application. The second route is based upon the effect of the claim to the benefit of the foreign filed international application pursuant to 35 USC 120 via 35 USC 365(c) on the 35 USC 102(e) date of the continuation application. In the first route, pursuant to 35 USC 363, a foreign filed international application has the effect of a national application for patent regularly filed in the Patent and Trademark Office as of its foreign filing date for all purposes except as provided in 35 USC 102(e). The preceding section of this article explained the exception in 35 USC 363 and showed that a foreign filed international application does not provide 35 USC 102(e) effect from its foreign filing date because that application does not satisfy the first clause of 35 USC 102(e). Therefore, the first route does not provide the patent with 35 USC 102(e) effect from the foreign filed international applications filing date. The second route is more interesting. In the second route, pursuant to the second clause of the first sentence of 35 USC 365(c), a continuation application of an international application can claim the 35 USC 120 benefit of the earlier foreign filed international application. This is because the second clause of the first sentence of 35 USC 365(c) states that:
The national application referred to in 35 USC 365(c) means a 35 USC 111(a) United States national application.15 Note that 35 USC 365(c) is intended to be effective for foreign filed international applications. This is clear from the second sentence of 35 USC 365(c). The second sentence of 35 USC 365(c) refers to the international application recited in the first sentence in 35 USC 365(c), and the second sentence in 35 USC 365(c) indicates that the Commissioner may require a translation and a certified copy if that international application did not originate in the United States. The next question to answer is: Are the requirements to obtain the 35 USC 120 benefit in a continuation application of a foreign filed international application satisfied? 35 USC 365(c) states that the benefit of the filing date of an international application must be in accordance with the conditions and requirements of section 120. One of those requirements is that the prior application be an application previously filed in the United States. However, 35 USC 363 provides a foreign filed international application with a fictitious filing date in the United States for all purposes except as otherwise provided in 35 USC 102(e). Thus, a foreign filed international application is deemed filed in the United States on its foreign filing date for the purposes of 35 USC 120. Thus, it appears that the requirements to obtain the benefit of a foreign filed international application are satisfied. The next question to answer is: What is the effect of the 35 USC 120 benefit in the continuation application of the foreign filed international application? 35 USC 120 states that a continuation application shall have the same effect, as to such invention, as though filed on the date of the prior application....16 The same effect of 35 USC 120 provides a patent granted on a continuation of a parent national application the filing date of the parent national application for both priority and 35 USC 102(e) prior art effect. If the patent is granted on a continuation of an international application, then the continuation application may obtain the filing date of the foreign filed international application pursuant to 35 USC 120, and thereby provide 35 USC 102(e) effect from the filing date of the international application. It appears that, if a patent issuing from a continuation application claiming priority to a foreign filed international application obtains 35 USC 102(e) effect as of the filing date of the foreign filed international application, it does so because the 35 USC 365(c)/35 USC 120 route is interpreted to provide a continuation application with the same effect as if it were filed in the United States on the date that the international application was foreign filed. That is, the foreign filed international application would have to be accorded a fictitious filing date in the United States. 35 USC 363 may allow the 35 USC 120 benefit by providing a foreign filed international application with a fictitious filing date in the United States (i.e., 35 USC 363 recites that the international application designating the United States shall have the effect . . . of a national application ... filed in the Patent and Trademark Office). There are two arguments against concluding that the continuation application obtains the same effect for 35 USC 102(e) as if it was filed on the filing date of the foreign filed international application. The first argument is based upon the facts (1) that 35 USC 119(a) also states that an application claiming priority to an earlier foreign filed application shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was filed in the foreign country17 and (2) that the holding in In re Hilmer18 (Hilmer I) is that the same effect in 35 USC 119 means the right of priority and does not mean 35 USC 102(e) prior art effect. However, the first argument is easily dispelled because Hilmer I also goes out of its way to distinguish the meaning of the same effect language in 35 USC 119 from the meaning of the same effect language in 35 USC 120, stating that: Section 120
The second argument against concluding that the continuation application obtains 35 USC 102(e) effect from the filing date of the foreign filed international application is that that conclusion (1) is inconsistent with the United States reservation under article 64(4)(a) of the PCT and (2) is inconsistent with the long line of judicial decisions limiting secret prior art to acts in the United States.20 However, there is one argument for concluding that the continuation application obtains the same effect for 35 USC 102(e) as if it was filed in the United States on the filing date of the foreign filed international application. Put bluntly, the world has changed since Hilmer I, and the policies of the United States have change accordingly. Hilmer I was not written in contemplation of either the United States accession to the PCT or domestic implementation of the NAFTA and the Uruguay round of the GATT. The amendment to 35 USC 104 allowing establishment of acts of invention occurring abroad, in particular, shows a weakening in the United States policy of discriminating against acts of invention occurring abroad. In fact, if the act of filing a patent application abroad is deemed an act of invention within the meaning of 35 USC 104, then the act of filing the patent application in any NAFTA or GATT country may be used to establish a date of invention on the foreign filing date for the invention disclosed in the foreign filed application thereby substantially undermining the rationale of the holding in Hilmer I. Finally, we note that the statutory scheme relating to priority and prior art effect of secret information is preserved if the 35 USC 120 benefit to a foreign filed international application includes (1) the right of priority provided by either 35 USC 119(a) or 35 USC 120 to the foreign filing date and (2) 35 USC 102(e) prior art effect from the date that the specification of the foreign filed international application is received in the United States by the USPTO. However, this would require either revision of the second clause of 35 USC 102(e) to reflect the changes in 35 USC 111 that now allow a national application to obtain a filing date when only the specification is received by the USPTO or judicial interpretation to that effect. IV. ConclusionIn conclusion, it appears unlikely that filing a continuation of a foreign filed international application in fact bumps back the effective 35 USC 102(e) date to the international applications filing date. In addition, it also appears unlikely that filing a continuation of an international application that was actually filed in the United States has any effect on the 35 USC 102(e) date of the resulting patent. Of course, the examining corps usually follows the guidance of the Commissioner appearing in the MPEP. However, it appears likely that the courts will disagree with the Commissioner when they opine on the 35 USC 102 effect of international applications. If so, the Commissioners guidance will no doubt change. ....1Neifeld IP Law, PC; Arlington, VA. This paper does not represent an official position of the firm. I wish to thank Mr. Charles L. Gholz for his insights and suggestions. I can be reached by email at . Return ....2Patent Counsel, Seagate Technology, Inc. Return ....379 JPTOS 883 (December 1997). While Mr. Heller is listed as the second author of this article, the initial drafts of this article were in fact drafted by Mr. Neifeld in response to Mr. Hellers letter to the editor of the JPTOS. Mr. Heller reviewed and commented on the initial drafts, and those comments initiated a dialogue that lead naturally to this joint work. Return ....4G. Lloyd Knight, Its Time to Stop Discriminating Against PCT/USA National Phase Patents, 79 JPTOS 385 (June 1997) and Allen E. Hoover, Further Comments on PCT/USA National Phase Applications & 102(e), 79 JPTOS 643 (September 1997). Return ....5MPEP § 2136.03; sixth edition. Return ....63 USPQ2d 1009 (PTOBPAI 1987). Return ....7Emphasis supplied. Return ....835 USC 111(a)(4); 37 CFR 1.53(b); see Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 1563, 227 USPQ 977, 979 (Fed. Cir. 1985)(The Commissioner ruled that he was precluded from granting the requested filing date [on the date that the applicant filed the specification] under the statutory and regulatory provisions then in effect [because the applicant did not pay the filing fee on that date]. The district court agreed. We disagree.). Return ....9In re Lund, 376 F.2d 982, 988, 153 USPQ 625, 630-31 (CCPA 1967)(It is also well settled that where a patent purports on its face to be a continuation-in-part of a prior application, the continuation-in-part application is entitled to the filing date of the parent application as to all subject matter carried over into it from the parent application, whether for purposes of obtaining a patent or subsequently utilizing the patent disclosure as evidence to defeat anothers right to a patent. (emphasis in the original)). Return ....10In re Hilmer, 359 F.2d 859, 878, 149 USPQ 480, 496 (CCPA 1966) (Rich J.)(It seems clear to us that the prohibitions of 104, the limitations in sections 102(a) and 102(g) to in this country, and the specifying in 102(e) of an application filed in the United States clearly demonstrate a policy in our patent statutes to the effect that knowledge and acts in a foreign country are not to defeat the rights of applicants for patents, except as applicants may become involved in priority disputes.); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1437, 7 USPQ2d 1129, 1134-35 (Fed. Cir. 1988) (emphasis supplied and quoting with approval the language in the concurring opinion in In re Bass: [t]he term prior art as it is used in 35 U.S.C. §103 should include all inventions which were made in this country before an applicant or patentee made his invention, regardless of when those inventions are made public or patent applications on them are filed, so long as those inventions are found not to have been abandoned, suppressed, or concealed.); and In re Klesper, 397 F.2d 882, 885, 158 USPQ 256, 257 (CCPA 1968) (emphasis in the original)(Appellants construction of section 102(e) must be rejected as contrary to long-settled law. Appellant has cited no authority for the proposition that, where there are successive applications and entitlement to an earlier filing date in the United States as contemplated by 35 U.S.C. 120, the only filing date to be considered under section 102(e) is the last filing date, by virtue of the words granted on an application. This is reminiscent of the too literal reading of statutes urged on us in In re Hilmer, 53 CCPA 1288, 359 F.2d 859, 149 USPQ 480 (1966), a case on which appellant relies. The literal reading there rejected was with respect to the words of 35 U.S.C. 119, shall have the same effect, as applied to giving effect to a United States patent as a reference as of its foreign filing date. We held that would be contrary to clear Congressional intent. Appellant now argues that we should do the same with respect to earlier United States filing dates, available to an applicant under section 120, and limit the date of a U.S. patent as a reference to the filing date of the last application on which it directly issued.). Return ....11The United States instrument of ratification of the PCT states that Under Article 64(4)(a), the filing outside of the United States of an international application designating this country is not equated to an actual filing in the United States for prior art purposes; emphasis supplied. Return ....12A 35 USC 111(a) application requires only the filing of the specification to get a filing date. 35 USC 111(a)(3) and 37 CFR 1.53(b). Return ....13See, e.g., Boyden v. Commr of Patents, 441 F.2d 1041, 168 USPQ 680 (D.C. Cir.), cert. denied, 404 U.S. 868, 171 USPQ 321 (1971); In re Application Papers Filed March 27 1974, 186 USPQ 363 (Commr Pat. 1975); In re Application Papers Filed June 24 1966, 152 USPQ 29 (Commr 1966); and In re Bosies, 207 USPQ 1139 (Commr 1979). The first three of these opinions indicate that, as of their dates, a filing date would not be granted without submitting the filing fee. The forth case indicates that, as of its date, the filing date of an application was the date on which all parts of the application were received in the USPTO. Return ....14Mr. Neifeld represents a client who is litigating the issue of the 35 USC 102(e) date of an international application actually filed in the United States. Return ....15Compare 35 USC 365(b) and (c). Return ....16Emphasis supplied. Return ....17Emphasis supplied. Return ....18In re Hilmer, 359 F.2d 859, 875, 149 USPQ 480, 493 (CCPA 1966) (Rich, J.). Return ....19359 F.2d at 879, 149 USPQ at 496-97. Return ....20See footnotes 7 and 8, supra, and Kimberly Clark Corp. v. Johnson & Johnson and Personal Products Co., 745 F.2d 1437, 223 USPQ 603 (Fed. Cir. 1984). Return Back to top Back Advanced IP Articles |
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