2136.03 Critical Reference Date [R-10.2019]

[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.]

I. FOREIGN PRIORITY DATE

Reference’s Foreign Priority Date Under 35 U.S.C. 119(a)-(d) and (f) Cannot Be Used as the Pre-AIA 35 U.S.C. 102(e) Reference Date

Pre-AIA 35 U.S.C. 102(e) is explicitly limited to certain references “filed in the United States before the invention thereof by the applicant” (emphasis added). Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a). Therefore, the foreign priority date of the reference under 35 U.S.C. 119(a)-(d), (f), and 35 U.S.C. 365(a) cannot be used to antedate the application filing date. In contrast, applicant may be able to overcome the pre-AIA 35 U.S.C. 102(e) rejection by proving the applicant is entitled to the 35 U.S.C. 119 priority date which is earlier than the reference’s U.S. filing date. In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966) (Hilmer I) (Applicant filed an application with a right of priority to a German application. The examiner rejected the claims over a U.S. patent to Habicht based on its Swiss priority date. The U.S. filing date of Habicht was later than the application’s German priority date. The court held that the reference’s Swiss priority date could not be relied on in a pre-AIA 35 U.S.C. 102(e) rejection. Because the U.S. filing date of Habicht was later than the German priority date of the application, the rejection was reversed.). See MPEP § 216 for information on procedures to be followed in considering applicant’s right of priority.

Note that certain international application (PCT) filings are considered to be “filings in the United States” for purposes of applying an application publication as prior art. See MPEP § 2120.01.

II. INTERNATIONAL (PCT) APPLICATIONS; INTERNATIONAL APPLICATION PUBLICATIONS

A.International Application Filed On or After November 29, 2000

If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined:

• (A) If the international application meets the following three conditions:
  • (1) an international filing date on or after November 29, 2000;
  • (2) designated the United States; and
  • (3) published under PCT Article 21(2) in English,

  the international filing date is a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e). If such an international application properly claims benefit to an earlier-filed U.S. or international application, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the earlier filing date, provided all the conditions of pre-AIA 35 U.S.C. 102(e) and 35 U.S.C. 120 or 365(c) are met. In addition, the subject matter relied upon in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112(a) /pre-AIA 35 U.S.C. 112, first paragraph, in order to give that subject matter the benefit of the earlier filing date under pre-AIA 35 U.S.C. 102(e).

  If such an international application properly claims benefit to an earlier-filed U.S. provisional application, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the earlier filing date, provided that the provisional application has proper support for the subject matter as required by 35 U.S.C. 119(e) and that at least one claim of the international application is supported by the written description of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a). See MPEP § 2136.03, subsection III.

  Note: where the earlier application is an international application, the earlier international application must satisfy the same three conditions (i.e., filed on or after November 29, 2000, designated the U.S., and published in English under PCT Article 21(2)) for the earlier international filing date to be the U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e).

• (B) If the international application was filed on or after November 29, 2000, but did not designate the United States or was not published in English under PCT Article 21(2), do not treat the international filing date as a U.S. filing date. In this situation, do not apply the reference as of its international filing date, its date of completion of the 35 U.S.C. 371(c)(1), (2) and (4) requirements, or any earlier filing date to which such an international application claims benefit or priority. The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date, or pre-AIA 35 U.S.C. 102(e) as of any later U.S. filing date of an application that properly claimed the benefit of the international application (if applicable).

B.International Application Filed Before November 29, 2000

References based on international applications that were filed prior to November 29, 2000 are subject to the pre-AIPA version of 35 U.S.C. 102(e) (i.e., the version in force on November 28, 2000) as set forth below.

If an international application has an international filing date prior to November 29, 2000, the reference should be applied under the provisions of 35 U.S.C. 102 and 374 as in force on November 28, 2000 (prior to the AIPA amendments):

• (1) For U.S. patents, apply the reference under 35 U.S.C. 102(e) as in force on November 28, 2000 as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later-filed U.S. application that claimed the benefit of the international application;
• (2) For U.S. application publications and WIPO publications directly resulting from international applications under PCT Article 21(2), never apply these references under 35 U.S.C. 102(e) as in force on November 28, 2000. These references may be applied as of their publication dates under pre-AIA 35 U.S.C. 102(a) or (b);
• (3) For U.S. application publications of applications that claim the benefit under 35 U.S.C. 120 or 365(c) of an international application filed prior to November 29, 2000, apply the reference under 35 U.S.C. 102(e) as in force on November 28, 2000 as of the actual filing date of the later-filed U.S. application that claimed the benefit of the international application.

Examiners should be aware that although a publication of, or a U.S. patent issued from, an international application may not be available as prior art under former 35 U.S.C. 102(e) as in force on November 28, 2000 or under pre-AIA 35 U.S.C. 102(e), the corresponding WIPO publication of an international application may have an earlier  pre-AIA 35 U.S.C. 102(a) or (b) date.

III. BENEFIT OF PROVISIONAL APPLICATION UNDER 35 U.S.C. 119(e)

The critical reference date under pre-AIA 35 U.S.C. 102(e) of a U.S. patent, a U.S. patent application publication, as well as an international application publication having prior art effect under pre-AIA 35 U.S.C. 102(e), may be the filing date of a relied upon provisional application only if at least one of the claims in the reference patent, patent application publication, or international application publication is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, or 35 U.S.C. 112(a). See Amgen Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017); Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015). The provisional application must also describe, in compliance with pre-AIA 35 U.S.C. 112, first paragraph, or 35 U.S.C. 112(a), the subject matter relied upon in the reference patent or publication to make the rejection. See MPEP § 2136, examples 2, 4, and 7.

Note that international applications which (1) were filed prior to November 29, 2000, or (2) did not designate the U.S., or (3) were not published in English under PCT Article 21(2) by WIPO, may not be used to reach back (bridge) to an earlier filing date through a priority or benefit claim for prior art purposes under pre-AIA 35 U.S.C. 102(e).

IV. BENEFIT OF NONPROVISIONAL APPLICATION UNDER 35 U.S.C. 120

Filing Date of U.S. Parent Application Can Only Be Used as the Pre-AIA 35 U.S.C. 102(e) Date If It Supports the Subject Matter Relied Upon in the Continuing Application

For prior art purposes, a U.S. patent or patent application publication that claims the benefit of an earlier filing date under 35 U.S.C. 120 of a prior nonprovisional application (i.e., a continuation, divisional, or continuation-in-part application) would be accorded the earlier filing date as its prior art date under pre-AIA  35 U.S.C. 102(e), provided the earlier-filed application properly supports the subject matter relied upon in any rejection in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.  112, first paragraph. In other words, the subject matter used in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, in order for that subject matter to be entitled to the earlier filing date under pre-AIA 35 U.S.C. 102(e).

See also MPEP § 2136, examples 2 and 5 to 9.

V. DATE OF CONCEPTION OR REDUCTION TO PRACTICE

Pre-AIA 35 U.S.C. 102(e) Reference Date Is the Filing Date, Not Date of Inventor’s Conception or Reduction to Practice

If a reference available under pre-AIA 35 U.S.C. 102(e) discloses, but does not claim the subject matter of the claims being examined or an obvious variant, the reference is not prior art under pre-AIA 35 U.S.C. 102(g). Furthermore, the reference does not qualify as “prior art” under 35 U.S.C. 102 as of a date earlier than its filing date based upon any prior inventive activity that is disclosed in the U.S. patent or U.S. patent application publication in the absence of evidence that the subject matter was actually reduced to practice in this country on an earlier date. See MPEP § 2138. When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing dates), as stated in pre-AIA 35 U.S.C. 102(e). See MPEP §§ 2120.01 and2136. The date that the prior art subject matter was conceived or reduced to practice is of no importance when pre-AIA 35 U.S.C. 102(g) is not at issue. Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 983, 10 USPQ2d 1338, 1342 (Fed. Cir. 1989) (The defendant sought to invalidate patents issued to Mason and Sohn assigned to Sun Studs. The earliest of these patents issued in June 1973. A U.S. patent to Mouat was found which issued in March 1976 and which disclosed the invention of Mason and Sohn. While the patent to Mouat issued after the Mason and Sohn patents, it was filed 7 months earlier than the earliest of the Mason and Sohn patents. Sun Studs submitted affidavits showing conception in 1969 and diligence to the constructive reduction to practice and therefore antedated the patent to Mouat. The defendant sought to show that Mouat conceived the invention in 1966. The court held that conception of the subject matter of the reference only becomes an issue when the claims of the conflicting patents cover inventions which are the same or obvious over one another. When pre-AIA 35 U.S.C. 102(e) applies but not pre-AIA 35 U.S.C. 102(g), the filing date of the prior art patent is the earliest date that can be used to reject or invalidate claims.).