Determining Priority under 35 U.S.C. § 102
In art-based rejections, each cited document must qualify as prior art under 35 U.S.C. §§ 102(a), (b) or (e). If this is not the case, the rejection is improper.
In making such a determination, a helpful first step is to ascertain the effective filing date of the present application with respect to the dates of the cited art.
The effective filing date is the priority date on which an application is legally deemed to have been filed for the purpose of U.S. patent law. The effective filing
date is the date on which the application was filed, unless priority is claimed under one of the following:
(A) If the application is a continuation or divisional of one or more earlier U.S. applications or international applications and if the requirements of 35 U.S.C.
120 and 365(c), respectively, have been satisfied, the effective filing date is the same as the earliest filing date in the line of continuation or divisional
applications.
(B) If the application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the
specification and claims of the parent application have an effective filing date equal to the filing date of the new application. Any claims which are fully supported
under 35 U.S.C. 112 by the earlier parent application have the effective filing date of that earlier parent application.
(C) If the application claims foreign priority under 35 U.S.C. 119(a)-(d) or 365(a) or (b), the effective filing date is the filing date of the U.S. application,
unless situation (A) or (B) as set forth above applies. The filing date of the foreign priority document is not the effective filing date, although the filing date
of the foreign priority document may be used to overcome certain references. See MPEP § 706.02(b) and 2136.05.
(D) If the application properly claims benefit under 35 U.S.C. 119(e) to a provisional application, the effective filing date is the filing date of the provisional
application for any claims which are fully supported under the first paragraph of 35 U.S.C. § 112 by the provisional application.
(MPEP § 706.02(VI)). In other words, the effective filing date of an application is the earliest of:
(1) The date on which the application was filed if there is no priority document or the only priority document is a non-PCT foreign patent document; or
(2) The earliest filing date in a line of continuation or divisional applications to which the present application claims priority; or
(3) If subject matter was not originally present in a parent application, the subject matter only receives the effective filing date of the application in which it
was first added (note that this may be a provisional application); or
(4) The date on which a provisional application for which claimed subject matter is supported was filed.
It is important to note that the effective filing date may differ from the actual filing date of the present application. For a visual representation of a flow for
determining the effective filing date, please see the effective filing
date flowchart.
Why is the effective filing date important? Cited art with a date after the effective filing date of the present application is not prior art with respect to the
present application. Also, for determining whether art qualifies under 35 U.S.C. § 102(b), only the effective filing date is used. This excludes, for example,
non-PCT foreign patent documents from providing an effective filing date to an application.
Now that the effective filing date of the present application has been determined, the date should be compared to the date of the cited art. Per the above, the
Examiner will rely on 35 U.S.C. § 102(a), (b) and/or (e) in making art-based rejections. The priority requirements for each of these sections is discussed below.
35 U.S.C. § 102(a) precludes patentability when:
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention
thereof by the applicant for patent;
In other words, if the present invention was known or used by someone else in the U.S. (i.e., knowledge or use that is accessible to the public per MPEP §
2132(I)), or the invention was patented or published in any country prior to the effective filing date of the present invention, the cited document qualifies as
prior art. The inventive entity only needs to differ by one inventor to qualify as by “another” under 35 U.S.C. § 102(a) (see MPEP § 2132(III)).
This means that if Anderson, Brooks and Charles were listed as inventors of the present invention, but Brooks, Charles and DuPont were listed as inventors of the
cited patent, the cited patent would still be invented “by another” for the purposes of 35 U.S.C. § 102(a), even if all of the inventors worked for the same
assignee. However, in the case of a cited publication, where an inventor is the author of any of the portions of the publication cited by the Examiner, these
portions of the publication may be disqualified as prior art. This may be done by filing an affidavit made out by the other authors establishing that the relevant
portions of the publication originated with, or were obtained from, the inventor from the present application (see MPEP § 2132.01).
Note: Watch for publication dates of PCT applications and foreign patent documents under this section. While it may be possible to defeat a cited art document
under 35 U.S.C. § 102(e), the documents themselves may be asserted under 35 U.S.C. § 102(a) in some cases where the publication date thereof precedes the priority date
of the present application. The publication must be in English or the Examiner must furnish an English translation of the publication in order for the rejection to be
proper.
35 U.S.C. § 102(b) presents a statutory bar to patentability when:
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year
prior to the date of the application for patent in the United States;
If the publication or issue date of the cited art is more than 1 year prior to the effective filing date of the application, the
cited art qualifies as prior art under 35 U.S.C. § 102(b). In the case of a patent, this is the date of issue of the patent, and in the case of a published patent
application or other document, this is the date of the publication thereof. In other words, if a cited art document was published (or in the case of a patent
document, a patent was issued) on May 1, 2008, and your application has an effective priority date of May 2, 2009, the cited art document qualifies as prior art
under 35 U.S.C. § 102(b). There is a minor caveat to this one year bar. If the so-called 1-year “grace period” expires on a Saturday, Sunday, or Federal holiday and
the application’s U.S. filing date is the next succeeding business day, the cited art document will not be prior art under this section.
35 U.S.C. § 102(e) precludes patentability when:
(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 only if the international application designated the United States and was published under Article 21(2) of such treaty in the English
language;
In other words, 102(e) bars patentability of an invention when an application for a patent by another in the U.S. was filed before the present application, or when
a patent was granted on an application filed by another before the present application. Thus, the 102(e) date of a cited art document is the date on which the patent
application corresponding with that document was filed, unless the issued patent or published patent application claims priority to a PCT
application. In that case, the analysis becomes more complex. If the PCT application was filed before November 29, 2000, if the cited art document is
a patent, the document receives the date that the PCT application entered the U.S. national stage by meeting the requirements of 35 U.S.C. § 371(c)(1), (2) and (4).
This date should be listed on the first page of the issued patent. If the PCT application was filed before November 29, 2000, and the cited art document is a
published U.S. application, there is no 102(e) date.
If the PCT application was filed on or after November 29, 2000, if the PCT application was published in English and designates the
U.S., the 102(e) date is the filing date of the PCT application. Otherwise, there is no 102(e) date. If the cited art document has a PCT application
in its continuity chain (for instance, if a parent application claims priority to the PCT application), priority should be analyzed for the PCT application in the
manner set forth above.
35 U.S.C. § 102(e) is the most complex 102 section. Fortunately, the USPTO has provided a
helpful flowchart that can assist in
simplifying the analysis. Further, Applicant can use the flowchart to assist in pointing out to an Examiner why certain cited art documents fail to qualify as prior art
under 35 U.S.C. § 102(e).
While 102(e) often applies when 102(a) and/or 102(b) apply, this section may apply to cited art that is too recent to qualify under 35 U.S.C. § 102(b). In order for
cited art to qualify under 35 U.S.C. § 102(e), the art must be “by another”. For anticipation rejections, the definition of "another" is similar to that for 102(a)
above. As stated in MPEP § 706.02(f), "[n]ote that, where there are joint inventors, only one inventor needs to be different for the inventive entities to be different
and a rejection under 35 U.S.C. 102(e) is applicable even if there are some inventors in common between the application and the reference."
Note: Cited art documents that only qualify under 35 U.S.C. § 102(e), (f) or (g) may be disqualified as prior art under 35 U.S.C. § 103(c) in the case of an
obviousness rejection if the cited art document and the present application were commonly owned, or subject to an obligation of common assignment, at the time the
present invention was made. Naturally, the ability to disqualify cited art under this section occurs most commonly with companies having large IP portfolios. For an
example argument for traversing a rejection using 35 U.S.C. § 103(c), click Here.
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Determining the effective filing date of the present application and determining whether the cited art qualifies under at least one of 35 U.S.C. §§ 102(a), (b) or (e)
is an important step in responding to art-based rejections. In some cases, Applicants may be able to disqualify an art-based rejection on the basis of faulty priority
alone. This can result in new non-final Office Actions and may further allow Applicants to overcome a rejection without creating prosecution history estoppel that may
result from art-based arguments.