2154.01(b) Determining When Subject Matter Was Effectively Filed Under AIA 35 U.S.C. 102(d) [R-10.2019]

[Editor Note: This MPEP section is only 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 § 2131–MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the filing date of a prior application to which there is a priority or benefit claim (AIA 35 U.S.C. 102(d)(2)). A U.S. patent document “is entitled to claim” priority to, or the benefit of, a prior-filed application if it fulfills the ministerial requirements of: (1) containing a priority or benefit claim to the prior-filed application; (2) being filed within the applicable filing period requirement (copending with or within twelve months of the earlier filing, as applicable); and (3) having a common inventor or being by the same applicant. See MPEP § 211et. seq.

The AIA draws a distinction between actually being entitled to priority to, or the benefit of, a prior-filed application according to the definition of “effective filing date” of a claimed invention in AIA 35 U.S.C. 100(i)(1)(B), and merely being entitled to claim priority to, or the benefit of, a prior-filed application according to the use of “effectively filed” in AIA 35 U.S.C. 102(d). As a result of this distinction, the question of whether a patent or published application is actually entitled to priority or benefit with respect to any of its claims is not at issue in determining the date the patent or published application was “effectively filed” for prior art purposes. Thus, there is no need to evaluate whether any claim of a U.S. patent document is actually entitled to priority or benefit under 35 U.S.C. 119, 120, 121, 365, or 386 when applying such a document as prior art. See MPEP § 2136.03 for the reference date under pre-AIA 35 U.S.C. 102(e) of U.S. patents, U.S. application publications, and international application publications entitled to the benefit of the filing date of prior application under 35 U.S.C. 119(e), 120, 121, or 365(c).

AIA 35 U.S.C. 102(d) requires that a prior-filed application to which a priority or benefit claim is made must describe the subject matter from the U.S. patent document relied upon in a rejection. However, AIA 35 U.S.C. 102(d) does not require that this description meet the enablement requirements of 35 U.S.C. 112(a). As discussed previously with respect to AIA 35 U.S.C. 102(a)(1), the Office does not view the AIA as changing the extent to which a claimed invention must be described for a prior art document to anticipate the claimed invention under AIA 35 U.S.C. 102.

The AIA also eliminates the so-called Hilmer doctrine. Under the Hilmer doctrine, pre-AIA 35 U.S.C. 102(e) limited the effective filing date for U.S. patents (and published applications) as prior art to their earliest U.S. filing date. In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966). In contrast, AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter. Therefore, if the subject matter relied upon is described in the application to which there is a priority or benefit claim, the U.S. patent document is effective as prior art as of the filing date of the earliest such application, regardless of where filed. When examining an application to which the AIA changes in 35 U.S.C. 102 and 103 do not apply, Office personnel will continue to apply the Hilmer doctrine, and foreign priority dates may not be used in determining pre-AIA 35 U.S.C. 102(e) prior art dates. Note that the international filing date of a published PCT application may be the pre-AIA 35 U.S.C. 102(e) prior art date under pre-AIA law under certain circumstances. See MPEP § 2136.