2135 Pre-AIA 35 U.S.C. 102(d) [R-10.2019]

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byChhabra Law Firm

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]

Pre-AIA 35 U.S.C. 102   Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless –

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  • (d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.

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I. GENERAL REQUIREMENTS OF PRE-AIA 35 U.S.C. 102(d)

Pre-AIA 35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a statutory bar against the granting of a patent in this country:

  • (A) The foreign application must be filed more than 12 months before the effective filing date of the claimed invention in the United States (see MPEP § 2139.01 regarding determination of the effective U.S. filing date when an application is subject to pre-AIA 35 U.S.C. 102);
  • (B) The foreign and United States applications must have been filed by the same applicant or by the same applicant’s legal representatives or assigns.
  • (C) The foreign application must have actually issued as a patent or inventor’s certificate (e.g., granted by sealing of the papers in Great Britain) before the filing in the United States. It need not be published but the patent rights granted must be enforceable.
  • (D) The same invention must be involved.

If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory bar. See MPEP § 2135.01 for further clarification of each of the four requirements of pre-AIA 35 U.S.C. 102(d).

II. SEARCHING FOR PRE-AIA 35 U.S.C. 102(d) PRIOR ART

The examiner should undertake a search for an issued foreign patent for use as pre-AIA 35 U.S.C. 102(d) prior art only if there is a reasonable possibility that a foreign patent covering the same subject matter as the U.S. application has been granted to the same inventive entity before the U.S. effective filing date, i.e., the time period between foreign and U.S. filings is greater than the usual time it takes for a patent to issue in the foreign country. The document must be a patent or inventor’s certificate and not merely a published or laid open application. Normally, the probability of the inventor’s foreign patent issuing before the U.S. filing date is so slight as to make such a search unproductive. However, it should be kept in mind that the average pendency varies greatly between foreign countries.

The search for a granted patent can be accomplished on an electronic database either by the examiner or by the staff of the Scientific and Technical Information Center. See MPEP § 901.06(a), subsection IV.B., for more information on online searching. Alternatively, if the examiner has a reasonable basis for concluding that pre-AIA 35 U.S.C. 102(d) prior art might exist, the examiner may make a requirement for information under 37 CFR 1.105. See MPEP § 704.10et seq.