bob spar director office of patent legal administration (703) 308-5107 bob.spar@uspto

1

Info on Publications of Patent Applications

and

Impact of Revisions made by AIPA of 1999 to

35 U.S.C. §§ 102(e) and 135(b)

Bob SparDirectorOffice of Patent Legal Administration(703) [email protected]

Prepared 4/24/02

2

Topics What applications are, or are not, published? When are the applications published? What is the content of the publication? Publication Volumes ? What other application information is available

after publication?– Access to the file history

Where can I search for free? What are the prior art affects of US and WIPO

publication of patent applications?

3

What applications are published Publication of plant and utility applications are required

by 35 U.S.C. § 122(b) eighteen months from the earliest filing date claimed under title 35

eighteen-month date measured from the earliest filing date claimed under 35 U.S.C. §§ 119(a)-(d), (e), 120, 121, or 365

The change to 35 U.S.C. § 122(b) only applies to applications filed on or after November 29, 2000

Plant and utility applications filed before November 29, 2000 may be published pursuant to a proper request for voluntary publication

4

Exceptions to eighteen-month publication: Applications no longer pending (e.g.,

abandoned)– File petition under 37 CFR 1.138(c) to expressly

abandon application to avoid publication

Applications under secrecy order or whose disclosure would be detrimental to national security

Provisional applications Design applications

What applications are not published

5

What applications are not published Exceptions to eighteen-month publication (cont’d): An applicant may request that an application not be

published if – the applicant certifies that invention has not been

and will not be the subject of an application filed in another country (or under international agreement) that requires eighteen-month publication

The request must be made upon filing (required by statute) The request must be conspicuous See PTO form PTO/SB/35 Stats: Roughly 10% of eligible applications opt out of

publication by filing such requests Bottom-line: USPTO database of published applications

does not include all applications that may later become available as prior art patents

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When are the applications published A projected publication date is assigned after an

application is determined to be ready for publication– Date is the Thursday following expiration of 18-

months after the earliest claimed filing date, or– Date is the Thursday 15-16 weeks after the

application is found to be ready for publication Applications that claim older filing dates or which

are processed in pre-examination for extended periods will be published later than the 18-month period

Bottom-line: Application publications that may have good prior art dates may be published after 18-months following the critical prior art date

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What is the content of the publication Publication process:

– Application is generally published as originally filed Content based on the application at time of release to

Technology Center (TC) for examination (basically “as-filed”),– preliminary amendments are not to be included

unless applicant submits an EFS copy of the application for publication

corrected drawings submitted after filing may be included if submitted under special procedure

– Content of publication of a CPA is based on the application as filed prior to any CPA filing, unless a proper request for amended publication is filed

– Applicant may request redacted publication under certain circumstances

Bottom-line: Content may not be an up-to-date reflection of the application file wrapper

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What is the content of the publication Patent application publication will be similar to a patent

in format and content– front page with title, bibliographic data, abstract,

drawing figure, and IPC/US classifications – specification (including claims) in a two column

arrangement no Official Gazette for patent application publications Unlike patents, publications

– include correspondence address of record– do not include the examiner of record, nor any list of prior art

cited in the application

– include claims which may not have been examined, or determined to be patentable

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Published applications look a lot like patents.

10

Eighteen-Month Publication - Volumes2001 total publications: 56,584

2002 Publication volumes

Date Weekly Cumulative 1/04/02 2728 59,3121/10/02 2207 61,5191/17/02 2539 64,0581/24/02 3436 67,4941/31/02 2998 70.4922/07/02 3018 73.5102/14/02 3280 76,7902/28/02 3373 80,1633/07/02 2735 82,8983/14/02 3516 86,4143/21/02 2809 89,223Steady state volumes expected 6/02 at roughly 3,500 per week.

All publications are electronically available on USPTO website at:http://www.uspto.gov/patft/index.html

11

What other application information is available after publication

Access to File History – Applications are no longer maintained in confidence once

they are published– USPTO will not provide direct physical access to a

pending published application (see 37 CFR 1.14(c)(2))

– USPTO will provide (for a fee) a copy of the file wrapper and content of a published application

The fee is $200 for the first 400 pages and $40 for each additional 100 pages

– To obtain a copy of the file, Contact the Office of Public Records at https://www3.uspto.gov/oems25p/index.html, or (703) 305-8579

– To obtain the file in FIU, the application must be abandoned. – To view computer records - See PAIR - next 2 slides

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Access to File History

Applications that have been published are only available in the FIU if they are abandoned.

Otherwise, the public must obtain a copy through Office of

Public Records

13

Access to File History

Hint:Before you request a copy of the whole file wrapper, check the contents of the application in PAIR to see if there are papers other than the application as originally filed.

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What other application information is available after publication

Third party submission after publication: 35 U.S.C. § 122(c) provides for procedures to

ensure that there is no protest or pre-issuance opposition to a published application (without express consent of applicant)

Third party submission after publication:

– 37 CFR 1.99 permits submission of patents and printed publications by third parties

– 37 CFR 1.99 does not permit any activity that amounts to a protest or opposition by the third party

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Where can I search for free

See http://www.uspto.gov/patft/index.html

Patent application publications can be searched in a number of ways:Inventor, class, class/subclass, assignee info etc.

16

What are the prior art affects of the new publications & new affect of WIPO publications

(without S. 320, pending technical correction bill)

Categories of Prior art under 35 U.S.C. §§ 102(e) and 374, after AIPA

I. U.S. Publications of nonprovisional (§ 111(a)) applications (including voluntary publications) under § 102(e)(1);

II. U.S. Publications of the National Stage (§ 371) of International Applications (including voluntary publications) under § 102(e)(1);

III. World Intellectual Property Organization (WIPO) Publications of International Applications (IAs) under §§ 374 and 102(e)(1); and

IV. U.S. Patents granted under § 102(e)(2).

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What applications are subject to the new prior art under post-AIPA 102(e) The following applications and reexaminations are subject

to prior art under post-AIPA § 102(e): utility, design and plant patent applications under 35 U.S.C.

§ 111(a), filed on or after November 29, 2000 or voluntarily published pursuant to 35 U.S.C. § 122(b), including:

first filed applications continuing applications under 37 CFR 1.53(b) continued prosecution applications (CPAs) under 37 CFR

1.53(d) reissues

National Stage of International Applications, complying with 35 U.S.C. § 371(c), that have international filing dates on or after November 29, 2000 or were voluntarily published pursuant to 35 U.S.C. § 122(b)

reexaminations of patents issued from the above-mentioned applications

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What applications are subject to the prior art under pre-AIPA 102(e)

The following applications and reexaminations are subject to prior art under pre-AIPA § 102(e):

utility, design and plant patent applications under 35 U.S.C. § 111(a), filed before November 29, 2000 not voluntarily published pursuant to 35 U.S.C. § 122(b) including:

first filed applications continuing applications under 37 CFR 1.53(b) continued prosecution applications (CPAs) under 37 CFR 1.53(d) reissues

National Stage of International Applications, complying with 35 U.S.C. § 371(c), that have international filing dates before November 29, 2000 not voluntarily published pursuant to 35 U.S.C. § 122(b)

All reexamination of patents mentioned above Note: The filing of a Request for Continued Examination (RCE) under 37 CFR

1.114 on or after November 29, 2000 does not subject the application to post-AIPA 102(e) unless it has been voluntarily published.

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Time period for copying published claims

35 U.S.C. § 135(b) 35 U.S.C. § 135(b)(2) bars a claim not made within

one year of the date an application is published containing the same (substantially same) claim

– only if application filed after date of publication 35 U.S.C. § 374 equates IB publication under the PCT

with publication under 35 U.S.C. § 122(b), with conditions for:

– 35 U.S.C. § 102(e) (English language)– 35 U.S.C. § 154(d) (English translation)

35 U.S.C. § 374 contains no “in English” or national stage entry condition for 35 U.S.C. § 135(b)

20

Post AIPA Ex. A1 – PUBLICATION DERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH NO § 119(e) or § 120 PRIORITY/BENEFIT CLAIMS

§ 111 (a) application filed with no claims

for benefit/priority before effective date

Publication P of § 111(a) application under § 122(b)

08 Oct 1997 05 July 200111/29/00

Note: CPA filed after 29 Nov 2000 caused the application to be published

Note for the following slides:Text in italics is subject to change if technical corrections bill (S. 320) is enacted.

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§ 111(a) application filed

Post AIPA Ex. A1 - PUBLICATION DERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH NO § 119(e) or § 120 PRIORITY/BENEFIT CLAIMS (con’t)

Publication § 102(e) date: 08 Oct 1997

Sample Application Publication

This publication is available as prior art against:a) any application filed after 29 Nov 2000 or b) any application voluntarily published that has an effective U.S filing

date after 08 Oct 1997.

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Post AIPA Ex. A2 - PUBLICATION DERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH § 119(e) PRIORITY CLAIM TO A PROVISIONAL APPLICATION

19 Apr 2000

18 Apr 2001 28 Mar 2002

§ 111(a) application filed claiming the benefit of the prior application under § 119(e)

§ 111(b) application filed before effective date

Publication P of the § 111(a) application under § 122(b)

11/29/00

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Post AIPA Ex. A2 - PUBLICATION DERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH § 119(e) PRIORITY CLAIM TO A PROVISIONAL APPLICATION (con’t)

Publication earliest § 102(e) date: 19 Apr 2000This publication is available as prior art against:

a) any application filed after 29 Nov 2000 orb) any application voluntarily published that has an effective U.S filing date

after 19 Apr 2000.

1st § 111(a) application filed claiming benefit under § 119(e)

1st § 111(b) application filed


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27 Oct 1998 29 Nov 2000 11 Oct 2001

2nd § 111(a) application filed claiming the benefit of the prior application under § 120

1st § 111(a) application filed before effective date

Publication P of the 2nd § 111(a) application under § 122(b)

Post AIPA Ex. A3 - PUBLICATION DERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH § 120 PRIORITY CLAIM TO A NONPROVISIONAL APPLICATION

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Post AIPA Ex. A3 - PUBLICATION DERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH § 120 PRIORITY CLAIM TO A NONPROVISIONAL APPLICATION (con’t)

Publication earliest § 102(e) date: 27 Oct 1998This publication is available as prior art against:

a) any application filed after 29 Nov 2000 orb) any application voluntarily published that has an effective U.S filing date

after 27 Oct 1998.

2nd § 111(a) application filed claiming benefit under § 120

1st § 111(a) application filed


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Post AIPA Ex. A4: PUBLICATION OF § 111(a) APPLICATION WITH § § 119(e) & 120 PRIORITY CLAIMS

Publication of the 2nd § 111(a) application under § 122(b)

2nd § 111(a) application filed under 37 CFR 1.53(b) or (d), claiming benefit to prior application under §§ 120 and 119(e)

29 Oct 1999

25 Oct 2000 21 May 2001 14 Mar 2002

1st § 111(a) application filed claiming the benefit of the prior application under § 119(e)


11/29/00

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Post AIPA Ex. A4: PUBLICATION OF § 111(a) APPLICATION WITH § § 119(e) & 120 PRIORITY CLAIMS (con’t)

Filing date of 2nd 111(a) application

Filing date of 1st 111(a) application claiming priority 119(e)

Filing date of 111(b) application

Publication earliest § 102(e)(1) date: 29 Oct 1999

This publication is available as prior art against:a) any application filed on or after 29 Nov 2000; or

b) any application voluntarily published that has an effective U.S filing date after 29 Oct 1999.


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2nd § 111(a) application filedunder 37 CFR 1.53(b) or (d) with § 120 priority claim

16 Aug 2001 14 Mar 2002

1st § 111(a) application filed claiming § 119(a)-(d) benefit to Japanese application

A Japanese application filed before 11/29/00 in Japan.


11/29/00

21 Jun 199927 Feb 1997

Post AIPA Ex. A5: PUBLICATION OF § 111(a) APPLICATION WITH § 120 PRIORITY CLAIM and § 119(a)-(d) BENEFIT CLAIM TO A FOREIGN APPLICATION.

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Post AIPA Ex. A5: PUBLICATION OF § 111(a) APPLICATION WITH §§ 119(a)-(d) & 120 PRIORITY CLAIMS (con’t)

Filing date of 2nd 111(a) application

Filing date of 1st 111(a) application claiming priority 119(a)-(d)

Filing date of 1st foreign application

Publication earliest § 102(e)(1) date: 21 Jun 1999No benefit of the foreign application is given for § 102(e)(1) purpose.(In re Hilmer, 149 USPQ 480 (CCPA 1966)).

This publication is available as prior art against:a) any application filed on or after 29 Nov 2000; orb) any application voluntarily published that has an effective U.S filing

date after 21 Jun 1999.


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Ex. A6: Reference is a PUBLICATION OF NATIONAL STAGE APPLICATION AFTER PUBLICATION OF IA BY WIPO IN ENGLISH

§ 102(e)(1) date of publication P: 01 Jan 2001§ 102(e)(1) date of IA publication: 01 Jan 2001

These publications are available as prior art against:(a) any application has an effective U.S filing date after 01 Jan 2001

IA filed in Sweden, desig. the US

Publication P of NS under § 122(b)

National Stage (NS) fulfilling § 371(c)(1), (2), and (4)

Publication of IA in English under 21(2)(a) by WIPO

01 Jan 2001

01 July 2003 01 Aug 2003 01 July 200211/29/00

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Ex. A7: Reference is PUBLICATION OF NATIONAL STAGE APPLICATION AFTER PUBLICATION OF IA BY WIPO IN A LANGUAGE OTHER THAN ENGLISH

§ 102(e)(1) date of publication P: none § 102(e)(1) date of WIPO publication of PCT : none

because the PCT was not published in English.

Note: Both publications are available as prior art under§ 102(a) or (b) as of their publication dates.

IA filed in Germany, desig. the US

Publication P of NS under § 122(b)

National Stage (NS) fulfilling § 371(c)(1), (2), and (4)

Publication of IA in German under PCT 21(2)(a) by WIPO

01 Jan 2001 01 July 2003 01 Aug 2003 01 July 200211/29/00

Best prior art date for the disclosure (§ 102(a) or (b))

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Ex. A8: PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA AFTER PUBLICATION OF IA BY WIPO IN ENGLISH AND CLAIMS PRIORITY TO U.S. PROVISIONAL APPLICATION

IA filed in the EPO, desig. the US, claiming benefit to § 111(b) application


§ 111(a) application filed claiming benefit of the IA application under 35 U.S.C. § 365(c)

Publication of IA in English under 21(2)(a) by WIPO

14 Apr 2000 19 Oct 2001* 07 Mar 2002 26 Oct 200011/29/00


24 May 1999

* If S. 320 is enacted, § 102(e)(1) date will be 19 Oct 2001

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Post AIPA Ex. A8 - PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA AFTER PUBLICATION OF IA BY WIPO IN ENGLISH AND CLAIMS PRIORITY TO U.S. PROVISIONAL APPLICATION (con’t)

IA filed in EPO designating US, claims benefit to prior provisional application

Post-AIPA earliest publication § 102(e) date: 24 May 1999This publication is available as prior art against:(a) any application filed on or after 29 Nov 2000 or (b) voluntarily published that has an effective U.S filing date after 24 May 1999.

111(a) application filed claiming benefit of IA application under 35 USC 365(c)


Foreign application filed

Filing date of 111(b) application

34

Ex. A9: Reference is a PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA AFTER PUBLICATION OF IA BY WIPO IN A LANGUAGE OTHER THAN ENGLISH

IA filed in Japan, desig. the US


§ 111(a) application filed claiming benefit of the IA application under 35 U.S.C. § 365(c)

Publication of IA in Japanese under PCT 21(2)(a) by WIPO

30 Apr 1999 13 Sept 2001

28 Mar 2002 09 Nov 2000

11/29/00

Best prior art date for the disclosure (§ 102(a) or (b))

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Ex. A9: PUBLICATION OF 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA AFTER PUBLICATION OF IA BY WIPO IN A LANGUAGE OTHER THAN ENGLISH (con’t)

Filing date of 111(a) application

Note: The best prior art date for the disclosure is 09 Nov 2000 (the publication date of IA in Japanese) under §§ 102(a) or (b).


IA filed in JPO designating US

Post-AIPA earliest publication § 102(e) date: 13 Sept 2001This publication is not available as prior art under § 102(e) because the IA was

not published in English.

36

Determining Prior art Date of References subject to Post-AIPA 102(e) of -- U.S Patents

Prior art dates under and post-AIPA § 102(e)(2) are the same as pre-AIPA § 102(e), except when a patent is issued from the National Stage (§ 371) of an International Application (IA) or there is a National Stage (§ 371) of an International Application in its continuity chain.

Post-AIPA § 102(e)(2) no longer recognizes the fulfillment of the requirements of 35 U.S.C. § 371(c)(1),(2) and (4) for prior art purposes

37

Determining Prior art Date of Referencessubject to Post-AIPA 102(e) of -- U.S Patents

Post-AIPA § 102(e)(2):

1. A U.S. patent issuing from a nonprovisional application, filed under 35 U.S.C. § 111(a), is prior art under post-AIPA § 102(e)(2) as of its effective filing date– the same prior art effect as under pre-AIPA § 102(e) except when there

is the National Stage of an International Application in its continuity chain

2. A U.S. patent issuing from the National Stage of an International Application (§ 371) applied as prior art under post-AIPA § 102(e)(2) is excluded & has no post-AIPA § 102(e)(2) prior art date at all

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Post-AIPA § 102(e)(2) date of the patent: NONE This patent is not available as prior art under post-AIPA § 102(e)(2) against:

a) any application filed on or after 29 Nov 2000; orb) any application which has been voluntarily published.

The patent is usable under § 102(a) or (b) with a prior art date of 01 Nov 2000 for the above mentioned applications.

For applications filed prior to 29 Nov 2000 and not voluntarily published, the patent has an 102(e) date of 01 Jun 2000, the date of compliance with § 371(c)(1), (2) and (4).

If S. 320 is enacted, the 102(e)(2) date will be 01 Jun 2000 for all applications because the IA was filed prior to 29 Nov 2000.

Patent granted on § 371 application

§ 371 (c)(1), (2) and (4) fulfillment

IA filed, US designated

01 Jun 2000 01 Nov 2000 01 Jan 1998

11/29/00

Ex. P(1): Reference is a PATENT DERIVED FROM THE NATIONAL STAGE OF AN INTERNATIONAL APPLICATION

01 July 1999

IA publication by WIPO

39

“A person shall be entitled to a patent unless —

(e) the invention was described in

(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or

(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent,

except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States if and only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or”*

* Note: The exception clause applies to the use of: (1) application publications, and (2) patents, as prior art. See slides 42, and 47-49.

35 U.S.C. § 102(e) as proposed by S. 320

40

I. U.S. Publications of nonprovisional applications* per §102(e)(1); New documents that did not exist prior to 11/29/00

II. U.S. Publications of the National Stage (§ 371) of International Applications (IAs)* per § 102(e)(1);

New documents that did not exist prior to 11/29/00III. World Intellectual Property Organization (WIPO) Publications of IAs

per §§ 374 and 102(e)(1); Existing documents prior to 11/29/00, but for IAs filed prior to

11/29/00 the publications were not covered by § 102(e); and IV. All U.S. Patents per § 102(e)(2).

Existing documents covered by § 102(e) prior to 11/29/00, but under current § 102(e)(2) the prior art date accorded to the reference may be different. Patents matured from IAs, which were filed after 11/29/00, will have different prior art dates.

*includes voluntary publications

Categories of Prior Art under S. 320’s version of 35 U.S.C. § 102(e)

41

EFFECTIVE DATE.

`… Except as otherwise provided in this section, the amendments made by section 4505 shall be effective as of November 29, 2000 and shall apply to all patents and all applications for patents pending on or filed after November 29, 2000.

Patents resulting from an international application filed before November 29, 2000 and applications published pursuant to section 122(b) or Article 21(2) of the treaty defined in section 351(a) resulting from an international application filed before November 29, 2000

shall not be effective as prior art as of the filing date of the international application;

however, such patents shall be effective as prior art in accordance with section 102(e) in effect on November 28, 2000.’

Notes: First sentence provides for uniform application of section 102(e)(1) and (2) when examining applications or evaluating the validity of patents regardless of filing date. Second sentence provides that references may not be applied as of an International filing date that is prior to 11/29/00, nor may IAs with a filing date prior to 11/29/00 be used as a bridge to an earlier U.S. filing date for prior art purposes.

Changes to the Effective Date Provision (§ 4508 of the AIPA) of 35 USC 102(e) – (§ 4505 of the AIPA)

42

Applying S. 320’s version of 35 USC § 102(e):

I. The first sentence of § 4508 provides that the following cases would be subject to the change: All patents whenever granted, and all patent applications whenever

filed, would be subject to rejections based on the revised prior art treatment under S. 320’s version § 102(e) – and not the version of § 102(e) prior to the AIPA.

II. The prior art date of the reference publications and patents can be: the actual filing date of the application (including certain international

filing dates); an earlier U.S. filing date claimed by the applicant*; certain international filing dates claimed by the applicant* or the 35 U.S.C. § 371(c)(1), (2) and (4) date for patents derived from an IA

filed before 11/29/00 (per second sentence of §§ 4508)• Note: WIPO publications of IAs filed before 11/29/00 would have no

prior art effect under § 102(e) * the relied upon application must provide adequate support for the relied upon

subject matter in order for the earlier date to be used

43

Applying S. 320’s version of 35 USC § 102(e):

When may an international filing date be applied as a prior art dateI. The second sentence of § 4508 provides that an international

filing date is considered a US filing date for purposes of offensive prior art use under S. 320’s version § 102(e) if the IA:1) has an international filing date on or after 11/29/00,2) was published under PCT Article 21(2) in English, and3) designated the United States

Note: The same IAs may serve as a bridge to use an earlier relied upon U.S. filing date as a prior art date under §102(e).

44

Applying S. 320’s version of 35 USC § 102(e):When may an international filing date be applied as a prior art date (cont’d)

II. An international filing date prior to 11/29/00 may not be applied as a prior art date, nor may it serve as an intermediate filing to provide for use of an earlier filed US application’s filing date as a prior art date.

For any IAs filed before 11/29/00, patents derived from national stage applications, or from applications that claim benefit to the IA, may be applied as prior art as of the 35 U.S.C. § 371(c)(1), (2), and (4) date, if any, or a US filing date after the international filing date.

For any IAs filed before 11/29/00, publications by WIPO and by the US (voluntary published) may not be applied as of either the international filing date or the 35 U.S.C. § 371(c)(1)(2) and (4) date. These publications may only be applied as of their publication dates.

Note: An IA with a filing date prior to 11/29/00 many not serve as a bridge to any earlier filed US application for purposes of § 102(e).

45

§ 111 (a) application filed with no claims

for benefit/priority


1. § 102(e)(1) date of Publication P: 01 Jan 20012. § 102(e)(2) date of a Patent issuing from the § 111(a)

application: 01 Jan 2001

01 Jan 2001 01 July 200211/29/00

PUBLICATION of § 111(a) APPLICATIONwith NO PRIORITY/BENEFIT CLAIMS

46

01 Jan 1999 01 Jul 2003 01 Aug 2003

1st § 111(a) application filed claiming the benefit of the prior application under § 119(e)*

§ 111(b) application filed before effective date*


11/29/00

PUBLICATION and PATENTS of § 111(a) APPLICATION with § 119(e) and § 120 PRIORITY CLAIMS

1. § 102(e)(1) date of Publication P: 01 Jan 1999 2. § 102(e)(2) date of any Patent issuing from either the first

or second § 111(a) application: 01 Jan 1999

31 Dec 1999

2nd § 111(a) application filed under 37 CFR 1.53(b) or (d), claiming benefit to prior applications under §§ 120 and 119(e)

47

§ 111(b) applicationfiled*


371(c)(1)(2) and (4) date of National Stage

IA filed, with priority claim to prior US appl., designated US

01 Nov 1999 01 Nov 2003 30 Oct 2000

11/29/00

PUBLICATIONS and PATENT derived from an IA WHICH CLAIMS BENEFIT TO A U.S. APPLICATION

01 May 2001

IA publication by the WIPO in English

01 Apr 2002

Publication of national stage application in US per§ 122(b)

Critical factors: The WIPO publication of the IA was in English but the filing date of the IA was prior to 11/29/00. Thus,

The § 102(e)(1) date of the WIPO Publication is: NONEThe § 102(e)(1) date of the US § 122(b) Publication of the national stage application is: NONE, The § 102(e)(2) date for the Patent is: 01 April 2002, which is the § 371(c)(1), (2), and (4) date.

01 June 2002

48

§ 111(b) applicationfiled *


IA filed, with priority claim to prior US appl., designated US

01 Dec 1999 01 Nov 2003 30 Nov 2000

11/29/00

PUBLICATIONS and PATENT derived from the NATIONAL STAGE of an IA WHICH CLAIMS BENEFIT to a U.S.

APPLICATION 01 June 2001

IA Publication by the WIPO in English

01 Apr 2002


Critical factors: The WIPO Publication of the IA was in English and the filing date of the IA was after 11/29/00. Thus,

The § 102(e)(1) date of the WIPO Publication is: 01 Dec. 1999 The § 102(e)(1) date of the US § 122(b) Publication of the national stage application is: 01 Dec. 1999, The § 102(e)(2) date of the Patent is: 01 Dec. 1999.

49

§ 111(b) applicationfiled, all inventors are Japanese *


IA filed in RO/JP, with priority claim to prior US appl., designated US

01 Dec 1999 01 Nov 2003 30 Nov 2000

11/29/00

PUBLICATIONS and PATENT derived from the NATIONAL STAGE of an IA WHICH CLAIMS BENEFIT to a U.S.

APPLICATION 01 June 2001

IA Publication by the WIPO not in English

01 Apr 2002


Critical factors: The WIPO Publication of the IA was NOT in English and the IA was filed on or after 11/29/00. Thus,There would be no § 102(e)(1) date for the WIPO Publication, There would be no § 102(e)(1) date for the US § 122(b) Publication of the national stage application, andThere would be no § 102(e)(2) date for the Patent.Note: As the IA was filed after 11/29/00, only § 102(e)(2) applies.

50

Treatment of the Implementation Issues of AIPA’s Version of § 102(e) as Proposed by S. 320

– The same prior art date would be given to a disclosure regardless of whether publication is in the form of a U.S. patent, U.S. patent application publication or WIPO publication

exception: IA filing date prior to 11/29/00– The same prior art date would be used for a

reference regardless of when the application under examination, or patent whose validity was questioned, was filed

– References may not have an IA filing date as a § 102(e) where the IA was filed before 11/29/00

In addition, IA filing dates prior to 11/29/00 may not serve as a bridge to an earlier U.S. filing date under § 102(e)

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Treatment of the Implementation Issues of AIPA’s Version of § 102(e) as Proposed by S. 320 (cont’d)

– WIPO publications may be used as prior art immediately because U.S. national stage entry is not required

allows for earlier (less costly) application of the prior art, increases the certainty of patentability, may reduce pendency and applicants can choose between national stage entry and

continuation filing in the US without regard to creating differential prior art treatment of the WIPO publication

– A request from applicant for early publication by WIPO (PCT Article 21(2)) would not negate § 102(e) prior art effect of the publication (if any)

Note: IA must have been filed on or after 11/29/00 and the WIPO publication must be in English.

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For Further Information -The American Inventors Protection Act of 1999 in general -

www.uspto.gov click on patents, click on American Inventors Protection Act

Electronic Filing System (EFS) and Patent Application Information Retrieval (PAIR) - PEBC helpdesk (703) 305-3028 (open 24 hours a day / 7 days a week) www.uspto.gov click on Patents Electronic Business Center

Eighteen-Month Publication - Final Rule: 65 Fed. Reg. 57023 (Sept. 20, 2000), 1239 Off. Gaz. Pat. Office 63 (Oct. 10, 2000)

Questions on rule package: Call OPLA (703) 308-6906, or e-mail [email protected]

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§ 111(a) application = nonprovisional application filed under 35 U.S.C. § 111(a) § 111(b) application = provisional application filed under 35 U.S.C. § 111(b) 11/29/00 = effective date of AIPA amendments to §§ 102(e) and 374 IA = International Application WIPO = World Intellectual Property Organization

Glossary

Thank You!

bob spar director office of patent legal administration (703) 308-5107 bob.spar@uspto

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